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LAWS AMEiUCAN DIGEST:

BEING A DIGEST OF AMERICAN CASES RELATING TO
PATEi^TS FOR INVENTIONS AND COPYRIGHTS,
FROM 1789 TO 1862.
Incliulini; nuiucrous Maiiur^criiit Ciisfs, Decision:* on Appeals from Coiiimi-
sioiuTS of Patents, unci the Opinions of tie Attorne\B-(teneriil of lU«
UniU'd SUtos, under the Patent and Copyri^Ljht Laws ; and einbraiinx,
also, tlie American Cases in rc-speit to Trade-Marks. Arranged in
Chronological order, with the year in which, and the name of the
Judge b}' whom, decided.

By STEPHEN D. LAW, Esq.,

Author of " Law's L'nlti-d Slates Courtjt," Ac.
LarK'c royal octavo vol, V26 pages. Houiul In Law Sheep. I'rice 1^7.50.
ry Tins work has been before the public and the Courts since lSti2, and i
alrealv reco.;nized as a standard volume and authority. Tho number of caises
di 'ested is over Kii^lit H :ndred, of which over Seven' Hundred Itavc reference
to'*l'atents. The volumes from which tlie cases digested have been taken are
very numerous, and would cost many hundreds of dollars. The volume also
includes some Two Hundred Muimscript ca.ses which have uevor before been
published.

BAKER, YOORHIS & CO., Publishers, 66 Nassau Street,

New York.

COPYKIC; I IT

AM)

PATENT LAWS

OK THE '

UNITED STATES,
1790 TO 1866.

WITH

NOTES OF JUDICIAL DECLSMSTllEilEUiXDErt

ANU

rOEMS AND INDEXES.
By STEPHEN D. LAW,

roUNSKLLOR AT LAW,

AUTUOR '.F "law's UNITED 8TATK8 COURTS," "LAW's AMERICAN DIGEST OP PATENT.

NEW YORK :
I'UIJLISIIED BY THE AUTHOR,

BAKER, V O O R U I S & C 0 M P A X Y .

No. 66 Nabsau Street.
1866.

tntercil accorjin:; to Art of Congress, in the year 1866

By STEPHEN a LAW,

in the Clerk's OUlcc of the District Court of the United Btiitee for the Eastern District

of New York.

T
L4ll5'c

c?^

PREFACE,

In the United States, property in Copyright and
in Patents for Inventions is created by, and held
solely under laws passed by the General Government.
I'revious to the adoption of the Federal Constitution,
in 1789, the several States had granted exclusive
rights to authors and inventors ; but that instrument
gave to Congress " power to promote the progress of
science and useful arts, by securing for limited times
to autliors and inventors the exclusive right to their
respective writings and discoveries;" and the States
can now perform no act in respect thereto, or none
not in harmony with, and subordinate to, the superior
power of Congress.

In 1790, at the first session of Congress, and among
its earliest acts, laws were passed '' to promote the
progress of useful arts," and "for encouragement of
learning, by securing tlie copies of maps, diarts, and

S2:

4 PREFACE.

books to tliG authors and proprietors of such copies,
during the times therein mentioned."

The Copyright act of 1790 remained imchanged
until 1S02, when a supplementary act "was passed,
extending also its provisions, in which form it con-
tinued in force until 1831, when it was repealed, and
a new and more complete act substituted in place of
it. The act of 1831 is still in force, and is the basis
of the existing copyright system of the country ; but
has been amended and enlarged by acts passed in
1834, 18i6, 1856, 1859, 1861, and 1865.

The Patent act of 1790 was superseded by an act
passed in 1793, and this latter act, amended and en-
larged by acts passed in 1794, 1800, 1819, and 1832,
continued in force until 1836, when the entire legisla-
tion in respect to patents for inyentions was revised,
and a new and more carefully drawn law enacted.
The act of 1836 still remains in force, and is the basis
of the existing patent system of the country ; but has
been enlarged and amended by acts passed in 1837,
1839, 1842, 1848, 1849, 1851, 1852, 1853, 1855, 1856,
1859, 1860, 1861, 1862, 1863, 1864, and 1865.

The duration of the term of a copyright was fixed,
by the act of 1790, at fourteen years, with a right of
renewal for fourteen years longer. By the act of
1831, the first term of a copyright was enlarged to
twenty-eight years, with a riglit of renewal, as before,

PREFACE. 6

for fourteen years ; thus making the whole term forty-
two years.

The duration of the term of patents for inventions
was fixed, by the first act of 1790, at fourteen years.
The act of 1836 fixed the same duration, but made
provision for an extension, under certain circum-
stances, for seven years longer. By the act of 1861,
the term of a patent was fixed at seventeen years —
except as to patents for designs, which may be three
and a half, or seven, or fourteen years, as desired ; and
the extension of all patents granted subsequent to the
date of that act, March 2d, 1861, was prohibited — ex-
cept as to patents for designs, which may be extended
for seven years.

Congress, however, can grant such exclusive rights
for any period, or extend existing terms, as it may see
fit ; and it has frequently exercised such power, by
special acts, even after the expiration of tenns secured
under the general law.

The laws of this country, in respect to copyrights,
except as to the duration of the term, and the formal-
ities by which secured, are substantially like those
of England and other countries ; in respect, however,
to patents for inventions, the differences between our
laws and those of other countries are marked and
distinct.

The great distinguishing feature of the patent sys-

6 PREFACE.

tcin of this country is tliut wliieli requires all applica-
tions for patents to be subjected to a preliminary
examination, as to originality and novelty of inven-
tion, before a patent can issue, and wliich forbids the
issue of a patent to any one who is not the first aa
■well as an original inventor of the thing sought to be
])atented. Though the practical operation of such a
system is necessarily attended with ditHculties, and
tlie exercise of such power of rejection may some-
times work injustice to tlie deserving inventor, it can
scarcely be questioned that it is highly useful, aa
well to the inventor, in bringing to his notice what
is already known in the art to which his inven-
tion appertains, as to the public in interposing a
salutary check to the issue of trilling or worthless
patents.

In England, and in most other countries, pat-
ents, originally, were grants proceeding directly from
the sovereign, and were considered by the courts as
monopolies, odious in the eye of the law, and to be
construed strictly. In this country, however, it has
been uniformly held that the design of our patent
laws was to encourage genius in advancing the arts,
by protecting its productions, and that such laws were
to be construed favorably and beneficially for paten-
tees ; and that patents granted thereunder were to be
considered not as monopolies, but liberally, and as

PREFACE. 7

highly beneficial to the community, as well as rewards
to ingenious men for the advantages derived by the
public from their exertions.

The copyright and patent systems of this country,
as established by the legislature, and interpreted by
the courts, may justly be considered as liberal and
highly favorable to such interests ; and in no country,
probably, are the rights of authors and inventors more
generally recognized, or their rewards and remunera-
tion more ample and munificent.

In this compilation, the several laws, as to copy-
right and patents for inventions, which are obsolete,
are inserted in full, as well as those laws which are
now in force ; this has been done for convenience of
reference and comparison, and to help to a more
perfect understanding and interpretation of those in
force.

Notes of decisions, which have a more particular
reference to the obsolete acts, are inserted under such
acts; decisions of a general nature, though made
under such acts, are inserted under the acts now in
force. It has not been intended, however, to insert
under the several acts all the decisions explanatory of
them, but only those of a more general character ;
adding also suitable references to the appropriate
titles of the " Digest of Patent Cases," a work pub-
lished by the author of the present volume, and

8 PKEFACE.

being a Digested Abstract of all the Cases relating to
Copyright, Patents for Inventions, and Trade-marks,
decided in the American courts, from 17S9 to the
present time.

The Author.

New York, June, 1866.

PROVISION

CONSTITUTION OF THE UNITED STATES

AUTHOmZING THE GKANT OP

EXCLUSIVE RIGHTS TO AUTHORS AXD INVENTORS.

CONSTITUTION OF THE UNITED STATES.

ARTICLE 1, SECTION 8.

The Congress shall have power :

To promote the progress of science and useful arts,
by securing for limited times, to authors and inventors,
the exclusive right to their respective writings and dis-
coveries :

Also, to make all laws which shall be necessary and
proper for carrying into execution the foregoing powers.

Power of Congress, and of the States under.

1. The power of Cougress, under this article and section, is limited
to authors and inventors onl_y, and does nut embrace introducers, wlio
are not authors and inventors. Livingston v. Van Ingen, 9 Jolms., 560,
566, 582.— Yates, Thoxipson, and Kent, JJ.; (Ct. Errors ;) N. Y., 1812.

2. But such clause does not prevent the several States from exercis-
ing the power of securing to introducers of useful inventions (without
being the autliors or inventors) tlie exclusive benefit of sucli inventions
for a limiied period. Ihid., 560, 566, 582.

10 CONSTITUTIONAL PROVISION.

POWBB or 00N0RK88, AKD OF TUB 8TATBS UNDEB.

3. Xor liocs it tnko nw.iy from the Stales tlic power to etilarpe,
within tlieir jurisdiilion, tlio privilojje, by extending the term of the
patent or monopoly, b« yond the term allowetl hy tlie acts of Conjn'es.H;
uor oiH-rale as an exdusion of all Stat© le^nsLtion to aii) and protect
tlie rifrlits ol)tiiin<-d \mder the ptneral government, if the power is
exer<'i(<od in liarniony witii, and in siibordinatiou to, the sujierior power
of Ci>n^'rc>-«. J hid., 5t;7, o>l.

•1. llioii(;h a State cannot take away from an individual hie patent,
yet if an author or inventor, instead of resorlinff to tlic act of Congrcee,
hliouid aj)ply to tlie le;:islatnre of a State for an excluMive ripht to iiis
prtKluction. tlicre is noiliiiifr to himlcr a Stale granting' it, though the
oiH-ration of the grant woui<l bo conlincd to tiio limits of tlio ijtatc.
Jtid.. r.sl.

J. The jiowcr of Congios.s is only to ascertain and define the righta
of property in tiic invention: it flxs not extend to regidating tlio use
of it. This is excinsively of local cognizance; such pro|>orty, like every
other species, must be used and enjoyed within eacli State, accordipg
to the laws of such State. Ihd., .Osl.

0. The laws of any Slate, granting exclusive riglits and privileges in
resj)ect to patents and inventions, arc ino|>orative as agziinst the laws
of the I'niied States, witli whicii tiiey mar come in collision. GtlAxna
V. Ogdm, 9 Wheat, iHtJ.— Maicshalu Ch.'j. ; Sup. Ct., 1824.

7. If the aullior's bcmk or jirint contains niatlor injurious to the
public morals or jieace. or if the inventor's machine or other produc-
tion will iiave a pernicious elVcct upon tiie ptiblic health or .safety, R
c<jm|X!tenl aulliority remains witii tlic Slates to restrain their u.se.
Livingston v. Van Imjen. 9 .Johns., 58'J. — Kkxt, .T. ; N. Y , 1812.

8. Such spo<ies of pro|>erty is likewise sulject to Ui.xation, and to the
payment of debt.s, as other pereuual pro|>orty. Ibid, 582.

t>. The fact that a parly lias a patent giving him the exclusive right
to make, use, and sell a particular medicine, does not confer upon him
the right to praeti.xe as a pliysician, and use such medicine, jn any par-
ticular State, except in conformity w ith the laws of t-\iv\x State. Jordan
V. Oierst^ers of Poor, ■{ Ohio. :<lu. — Lank, J.; Ohio, 1831. Thonqison \.
IStaata, 1.. Wend., 30.').— Xei.sox, .1.; N. Y., 18:trt,

lt». A p.irty lias not ne<x's.«arily a right to jiso an invention in any
State, merely because he has u patent for it. Vannani v. T'aine, 1
llarringt"n, f.8. — Koiiissox, .1.; Pel., I.s33.

11. Wli" re V. h;id invented a pl.in for constructing and drawing lot-
teries, and had obtained a patent therefor, but there was a Slate law
jirohibiting lotteries, except untler cvrtain eonditions, which V. and his
as.sociates had nc(t cc>m|thed wilh, Il>ld, that V. was not entitled to any
relief, by way of injunction or <»tlierwiKe, for any alleged use of hia
invention within such Stale. Ibid,, CO.

\'l. The |Kjwer of Congress, ox to patents, is general, and it rests In
its sound discreion to say, when and for what length of time, and
under \\hat circumAti.ucuii, a patent lor an iuvvntiou shall be granted.

C!).\STlTrTI()NAF, riidVISIoX.

POWER OF CONQKESS, AND OF THE STATES UNDEB.

Thore is r.o reatriflion which limits its power to ennct, to cases whore
the invention has nut hocn known or used l>y the pulilic. All tlint is
reciiiind i>', that I Ik- p;it(Mili'o slioiilil V)e the inventor. JJlanchard v.
S]>ra'jtt<\ [i Suinn.. :>il. — SruuY, .1.; Mass., 1830.

1.!. Tiio power of Conpre.ss to lejrislato upon tlio suhjcet of patcnt.s
is plenary; and as there is no restraint upon its exercise, there can bo
no lindtaiion to ti:e right to modify at pleasure tho laws resj.ccting
patents, so that ihey do not lake away tho rights of projKjrty in exist-
ing patenLS. M:Cl'i7-g v. Ktivjakiiid, 1 How., 20G. — I3aldwi.v, J.; Sup.
Ct., i.h;:.

1 1, li ii= no obj ction to the validity of the laws respecting patents,
that such laws arj rctrospcdivc in their oi)oration. Jbid., liUtJ.

1;'). ('(I) gress may j'nss an act whidi shidl act retrosi'cctively. Such
an act is not necessarily uncoustilntional. Tliough no State can impair
the oliligations of a contract, tiiis inhibition does not apply to the gen-
eral government. Bloomer v. SioUey, 5 McLean, 165. — McLean. J.;
Ohio, 18r,0.

K). A rcscrva;i(in in favor of assignees, in an act extending a patent,
will nnt make tlie act niicoMstiliitional on the ground that Congress can
only eoi.fer privileges on inventors. The power to reserve rights and
jirivilegis to a.ssgnccs is incidental to the genet al power conferred to
promcte the pro,.;r(SS of the useful arts. Blanchard Gun-Stock Turnimj
/a>: v Warrier, 1 Blatchf., 271, 27(;. — Nei.SON, J.; Ct., 184G.

17. Congress hi.s the constitutional right to confer a new and further
term on llie pat ntee, and that even after the exjiiration of the first.
Danchitrd v. Huyucs, G West. Law Jour., 81!. — "WoouBURY, J.; N. II.,
1848.

18. Alleged fraud and misrepresentation, in the passage of aif act of
Congress extending a i)aieiit, will not he presumed; but such an act
will be regarded by the courts as the law of the land, tmtil it is re-
pealed. Gibson V. afford. I Ulatchf.. .■):!!. — Nei.son, .1.; N. Y., 1850.

10. Under the lifih ame- dnient of the Constitution, declaring that
no pir.-ou .«haJl be deprived of life, hljcrty, or property, without due
process of law. Congress would h;ive no right to pass an act depriving
purchasers of a paiented ariicle of the right to use such article. Such
an act would not be rcgarde I as due process of law. Bloomer v.
McQuctcan, 11 How., 55.!. — Taney, Cli. J.; Sup. Ct., 1852.

20. Under tlie authority coidcrred by section 8th, article 1st, of the
Constitution, it does not foliow that Congress may authorize an inventor
to recall rights which he has granted to others, or reinvest him with
rights of pruperty. which he has before conveyed for a valuable consid-
eration. Ibid., 553.

21. Congress may renew a patent or decline to do so. The grant of
an exclusive privilege to an inventor for a limited time, does not im-
ply a binding and irrevocable contract with the people, that at the expi-
ration of the period the invention shall become their proj)erty. £vans
V. Eatoti, Pet. C. C, 337. — AV ashing lO.v, J.: Penn., IhlG.

13 CONSTITUTIONAL PROVISION.

POWKH or OOKORESS, AKD Or TUX STATU UNDXB.

22. Congress has tho constitutional power to fn"ant on cxtonsion of
n patent oven after it has been onr« extended undt-r section 18 of tho act
rf 1S3G. Bloomer v. Sloli^j, 5 Mclx^an, lCO-1 02.— McLean, J. ; Ohio,
Iv-.O.

'.'.!. The jwwer of Conpross was not exhausted in this respect by the
nM of 1836. A legislative act does not bind a subsequent legislature.
Jhi.l, ir.l.

■J4. Coiig-ress m.iy exercise its constitutional power, as to granting
riclits to inventors, either by special acts, or br a general system.
J bid., IGl.

2i. A private act of Congress, authorizing tho issue of a patent to
an inventor, is to bo considered ns engrafted on the general acts for the
promotion of the useful arts, and such a patent is issued in pursuance
of both. Eiaju v. Eaton, 3 Wheat., 518.— Makshall, LTi. J. ; Sup.
Ct., 1818.

'2f>. They are all statutes in pari materia, and all relate to the same
subject, and are to bo construed together. Bloomer r. JIcQuewan, 14
How., 5-19, 551.- Taney, Ch. J.; Sup. Ct, 1852.

See also Digest Pat. Cases, titles Congress; SfAtuTE* B. 1, 4.

ACTS OF COXGRESS

a RMrECT TO

COPYRIGHTS

^■^•x^

ACTS IN FORCE.

Act of 1819, Chap. 19.

" 1831, " 16.

" 1834, " 157.

" 1856, " 169.

Act of 1859, Chap. 2f
" 1861, " 37

" 1865, " iro

OBSOLETE ACTS.

Actof 1790, Chap. 15.
" 1802, " 36.

Act of 1846, Chap. 178.

ropvnTCTrr laws.

ACT OF 17 00, Cir AFTER 15.
1 Statutes at Large, 124.

[Obsolete: Repealed hy Art o/ 1831, § 14.]

An Act for the eiicour;iLr«.'nu'iit of learnintr, by securing
the cojiies ^f in;i]»s, charts, ainl hooks, to the authors
and jtropriftors of sucli copies, during tl»e times there-
in mentioned :

Seition 1. 7?c it eiinrtiul hy the Senate coirl Hofise of
Jl'lrnseiitativi'K of till Vnibd Stiitui if Amer'wa in Con-
f/r<8s ai<.-it!nibli(l, That from and after tlie [jnssing of this
act, the author and auth<»rs of any map, eliart, book or
books already printed within tliese United States, beiuLj
a citizen or citizens thereof or resident within the same,
his or their executors, administrators ot assigns, who
hath or have not tran-ferred to any other jierson tlic
copyri<;ht of such map, cliart, l)ook or books, share or
shares thereof; and any other j)erst)n or persons, ])ein^ a
< iti/.eii or eitizeiiH of these United States, or residents
therein, liis or their e.\ec»tt<»rs, a<hninistrators or assi<;ns,
who hath or have purchased or legally acquired the copy-
iiuht('0 <'f J»"y «"ch map, chart, book or books, in order
t«< print, reprint, pul)li'h, or vend th>' same, shall have tlio
hole rii;ht and libeity of printintr, reprinting', pulilishin'.r,
and vending sueh luaj), t iiart, book or books, for the

C'Ol'YKirillT LAWS. 15

ACT OF 1790, cnAP. 15, §§ 1, 2. OBSOLETE.

term of fourteen years from the recording the title there-
of in the olerk's office, as is hereinafter directed: Anil
tliat the author and authors of any map, chart, book or
books already made and eomposeil, and not printed or
published, or that shall hereafter be made and composed,
beiiipf a citizen or citizens of these United States, or resi-
dent therein, and his or their executors, administrators or
assigns, sliall have tlic sole right and liberty of printing,
reprinting, publishing and vending such map, chart,
book or books, for the like term of fourteen years from
the time of recording tlie title tliereof in tlie clerk's office
as aforesaid. And if, at the expiration of the said term,
the author or authors, or any of them, be living, and a
citizen or citizens of these United States, or resident
tlierein, the same exclusive right shall be continued to
him or thrm, his or their executors, administrators or
assigns, for tin- further term of fourteen years: Provided,
lie or tliey shall cause the title thereof to be a second
time recorded and published in the same manner as is
hereinafter directed, and that within six months before
tlie expiration of the first term of fourteen years afore-
said.

(a) The "copvriglit" rcco;jnizcd by tliis act. and wliicli is intended
to be protected, is prosunicd to be the riglit of property wliich an
author lias at common lav, in his manufcript. Sucii protection is
(riven as well to booi<s juiblished. as to manuscript copies. Wheaton v.
Fcters, 8 PtL, 061.— McLean, J.; Sup. Ct., 183L

Section 2. Aftd be it fw-tltcr enacted. That if any
other person or persons, from and after the recording
the title of any map, chart, book or books, and publish-
ing the same as aforesaid, and within the times limited
and granted by this act, shall j>rint, n-print. pidjlish, or
import, or cause to be printed, repriiitod, published, or

COrYKIGIlT LAWS.

OBSOLETE. ACT OV 1700, OBAP. 15, §g 2, 3<

i:iipnrti'd from any foreign kingdom or state, any copy
or copies of such luaj), chart, book or books, without the
consent of the author or i)ro|»rietor thereof, first had and
obiained in writing, signed in the presence of two or
in ire crediljle witnesses; or, knowing the same to be so
j-rinted, reprinted, or imported, shall publish, sell, or ex-
Ii')se to sale, or cause to be published, sold, or exposed
to sale, any copy of such map, chart, book or books,
without such consent first liad and olitained in writing
a-; aforesaid, then such ofiender or oflen«lers shall forfeit
all and every copy and copies of such map, diart, book
()!• books, and all and every sheet and sheets, being part
of I he same, or either of them, to the atilhor or proprietor
of such map, chart, book or books, who shall forthwith
• lostroy the same: And every such offeniler and offenders
sliall also forfeit and pay the sum of fifty cents for every
sheet which shall be found in his or their possession,
either printed or printing, published, imported, or ex-
posed to sale, contrary to the true intent and meaning of
tills act, the one moiety thereof to the author or j)ropri-
etor of such map, chart, book or books, who shall sue ibr
the same, and the other moiety thereof' to and ior the use
c»f the I'niled States, to be recovered ])y action of debt
in any court of record in the United Slates, wherein the
same is cognizable. Provided alirni/s. That sudi action
be commenced within one year after the cause of action
hhall arise, and nut afterward.

Si:<TioN a, An</ f>c it furt!i<r oinctnl, That no person
.'■hull be fulitled to the benefit of this act, in casi'S where
any nuip, chart, Itook or ln>ok8, hath or have been already
printed and published, unless hi- sh dl first deposit, arnl in
all other cases, unless he shall before publication deposit

copy RIGHT LAWS. 17

ACT OF 1790, CHAP. 15, § 3. ' OBSOLETB.

a print I'd copy of ilic title of siidi iniiji, fliart, liook or
hoi'ks, in the t-'eik's (Wlice of llie district court where the
author or proprietor shall residi; (>f) : And the clerk of
such court is hereby directed and required to record the
same forthwith, in a Look to be kept by liim for that
])urpose, in the words following (giving a copy thereof to
the said author or proprietor, under the seal of the court,
if he shall require the same.) "District of to

wit: JJe it reinenibcrcd, Tliat on the day of

in tlie year of the independence

of the United States of America, A. B., of the said dis-
trict, hath deposited in this office the title of a map, chart,
book or books (as the case may be), the right whereof he
claims as author or proprietor (as the case maybe), in the
words following, to wit: [here insert the title] in con-
formity to the act of the Congress of the United States,
intituled, 'An act for the encouragement of learning, by
securing the copies of maps, charts, and books, to the
authors and proprietors of such copies, during the times
therein mentioned.' C. D., clerk of the district of

." For which the said clerk shall be entitled to
receive sixty cents from the said author or proprietor,
and sixty cents for every copy under seal actually given
to such author or proprietor as aforesaid. And such
author or proprietor shall, within two months from the
date thereof, cause a copy of the said record to be jnib-
lishcd in one or more of the newspapers printed in the
United States, for the space of four weeks, {h)

(a) If the title of an author depended upon the act of 1790, it would
be complete, provided he had deposited a printed copy of the title of
the book in the clerk's otTice, ag directed bv this section. Ewer v. Coxt,
4 Wash., 490 — Washington-, J. ; Pa., 1824.

(6) 1. The proviuiou of tliis >-ectiou requiring the author to publish

13 coPYniGiiT r.Awa

ODSOLRTB. ACT OF 1790, CUAP. 15, gg 3-6.

the titlo of liis book, in n nowspiipcr, is nuTcly dirpotorv, nnd consti-
tutes no pdrt (if tlie essential requisites for Hoc\iriiig tho cojiyriglit.
yirhoLt V. Rugijkf, 3 Diiy, 158. — ('fUiAM ; Ct., 1808.

2. Til'' piililii-ation in tlio nowspajx-r is intended ns lepal notice of
the rights secured to tiie author; but is not necessary wlicro actual
notice is b^ou^'ht homo to the party. Ihid, 158.

3. The c«)U'lili(jn upon wliicli the proprietor is to be entitled to the
benefit of the net cannot bo extended to tlie requisition contained in
the last sentence of that section, to publi.>»h a copy of tlie record of tho
ti.le. as jireserilied therein. Ewcr v. Cuxe, 4 Wash., 490. — Wasuinq-
lO.v. J.; Ta.. IS-'l.

4. Tne publication of a copy of such notice is only necessary to
enablo hini to sue for the fortliturcs created by that section. Ibid.,
4j0.

Section 4. Ami he it furtlor cnactal, Tliat the author
or proprietor ot" any such map, chart, book or books,
shall, wiili'm .si.\ moiitlis after the publiBliinjr thereof,
deliver, or cause to be delivered to the Secretary of State
a copy of the same, to be preserved in his otVice,

1. Tho requirement of this section, ns to deliverinp a copy of tho
book to tho Secretary of State, is merely directory, and constitutes no
part of the e.^sentiiil requisites for securing a copyri(^ht. The copy to
be delivered to the .'N.cretary of State appears to be desi^med for public
purposes, and has no connection with the copyright. Nichiila v. Hug-
glc«, 3 Pay, 15S.— (.cuiam ; Ct., IbOS.

'J. Under this section a copy of n book may be deposited w ith the
Department of SUito, after the expiration of six montiis fn)m tho time
o<" its publication if not done before, and will avail from the time of ita
being deposited. DaboWs Case, 1 Opiu , 5;!J. — Winr, Atty. (.ion.;
1«'J2.

3. Where a work consisted of n nimiber of volumes, the delivery to
the !*<'cretary of .''tnie of the first volume of tho work within six
months after its p\iblication and of tho rost of tho volume.", before the
ofiencc complained of in coutmillod, or tho action brought, is a suffl-
cieiit compliance witli tho law. Dwvjht v. ApyUloits, 1 X. Y. Leg.
Obs., 19L».— TiioMrso.v, J.; N. Y., Ia43.

Section 5. Awf f» it fitrtlicr cnactxl^ Tliat notliing in
this act shall be construed to extend to proliiliil the iin-
)>ortation or vending, reprint ini; or publishinj.', within the
United States, of any map, chart, book or books, writ-

COrVKlCllT LAWS. 19

ACT or 1802, CHAP. 36. OBSOLETE.

ten, printed, or jjiiblished by any person not a citizen of
the Ignited States, in fon-ign parts or jilaces witlmul tlic
jurisilietion of the United States.

SiiiTiox 0. And he it further enacted, Thnt .■my iicr>on
or jiersons who shall print or publish any m:inuscript,
without the eoiiseiit and approbation of the author or
proprietor thereof, first had and obtained as aforesaid (if
such atuhor or pr()])rietor be a citizen of, or resident of
these United Slates), shall be liable to suffer and pay to
the said author or proprietor all damages occasioned by
such injury, to be recovered by a special action on the
case founded upon this act, in any court having cogni-
zance thiTcof.

Section 7. And he it further enacted. That if any per-
son or persons shall be sued or prosecuted for any mat-
ter, act, or thing done under or by virtue of this act, he
or they may plead the general issue, and give the special
matter in evidence.

Approved May 31st, 1790.

ACT OF 1802, CHAPTER 36.
2 Stati-tes at Large, 171.

[Obsolete : Repealed by Act o/1831, § 14.]

An Act supplementary to an act, intituled " An act for
the encouragement of learning, by securing the copies
of maps, charts, and books, to the authors and pro-
prietors of such co])ies, during the time therein men-
tioned,'' and extending the benefits thereof to the arts
of designing, engraving, and etching historical and
other prints.

20 COI'YUICIIT LAWS.

OBSOLETE. ACT OF 1802, CRAP. 36, g 1.

Section 1. Be it euartcd bij the Senate ami Home of
Bepresmtatires of the United S(((tr.'i (f Anirn'ca in Con-
gress ajisrniMidy That every person who sh.nll, from and
after the first ilay of Januriry next, chiim to bt- the author
or pr(^prietor of any maps, cliarts, book or books, :ind
shall thereafter seek to obtain a copyright of the same
agreeable to the rules prcscribetl by l.nv, before he shall
be entitled to the benefit of the act, intituled "An act
for the encouragement of learning, by securing the copies
of maps, charts, and books, to the authors and proprie-
tors of sufh cojiies, during tlie time therein mentioned,"
he shall, in addition (</) to tlie recjuisites enjoined in the
third an-1 luurih sections of said act, if a book or books,
give information by causing the copy of the record,
which, by said act, he is requiretl to publish in one or
more of the newspapers, to be inserted at full length in-
the title ])age, or in the page immediately following the
title of every such book or biX)ks; and if a map or chart
Bhall cause the following words to be impressed on tho
face thereof, viz. : " /'J/itered according to act of Con-
gress, the dug (f 18 [here insert the date
when the same was deposited in the office] hg A. B. <f
the State of [here insert the author's or ]>roprietor's
name and the State in which he resides].

(n) 1. By tliis soclion no porson cnn bo entitlod to the bonoflt of Iho
act of 1790, iinlo!;.<) ho nhall, in atHition to tlio roquisitos cnjoino<i in
Roctionn 3 and 4 of that act, cnuso n ropy of tlio rowrcl, required by
that net to 1)0 pubhuhcd, to \xi in.sortcd at full lonjrth in tho title-page,
or on the page inunediaU'ly fullowinR tho tilU* of tlio l)ook. E'ler v.
Coxf, A Waflh, 400.— WAHlMSfiTOX, J.; I'a., IH'.»4.

2. Tho jKTMon, tliorcforc, claiming a copyright, b.r..ro he cnn be en-
titled to thu l)cncnt« of ilio act «>f 179<», must iMrfTin tlio roqiii.sites
required by tliia net, in aiiiiitinn to Ihoso proncribcd in M>ctions 3 and 4
of the act of 1700, and nunt iwrform tho whole. Ti>o act JviiniUs of no
otbor cooalructiuD. Ibid., 491.

ACT OP 1802, CUAP. 3G, §g 1, 2. OBSOLETJ5.

3. Tho mconin(7 of the net is ns if it read, " tlie proprietor, before ho
sli:ill bo ontitled lo t!ie benelit of tho act of 1700. sliall cause a copy of
the rewird of llie title to 1)0 publisiicd, and shall deliver a cojiy of tho
book to the Secretary of Slate, as directed by the third and fourlli sec-
tions of that act ; and sliall also cause a copy of tho xaid record to 'jo
inserted at full len^rih in tlrc litle-i)apo," &c. Hid., 491.

4. The act of l^ii'J re<iuirc8 the ro<iuisite.s enjoined in sections 3 and
4 of tho act of 1790, as to notice and the deposit of tho bouk in the
State Department, to bo performed " in addition " to the one required
by this act of lsO'2, before an author " shall be entitled to the benefit
of the (irst act." Whealon v. I'cters, 8 Pet., GG5. — McLeax, J. ; Sup. Ct.,
1834.

Section 2. And be it further enacted^ That from and
after the first day of Jan nary, next, every person, being
a citizen of the United States or resiJent witiiin the same,
who sliall invent and design, engrave, etch or work, or
from his own works and inventions, shall cause to be
designed and engraved, etched or worke<l, any historical
or other ])rint or prints, sliall have the sole right and
liberty of printing, rei)riiiting, )>ublisliiiig, and vending
but'Ii print or prints, for the term of fourteen years from
the recording the title tiieieof in the clerk's office, as
prescribed by law for maps, charts, book or books : Pro-
vided, he shall perform all tlie requisites, in relation to
such ])nut or prints, as are directed in relation to maps,
charts, book or books, in the third and fourth sections of
the act to which this is a supplement, and shall moreover
cause the same entry to be »luly engraved on stich plate,
with the name of the proprietor, and printed on every
such print or prints as is hereinbefore required to be
made on maps or charts.

1. The person who, under this section, is intended and described as
the proprietor of a copyright in a print, is one who shall not only in-
vent and desipu, but who shall also eujjrave. etch, or work the print
to which the right is claimed; or, who, from ^/w oicn works and inrm-
tions. shall cause the print to bo desiirncd and engraved, etched, or
worked. Binns v. Woodruff, 4. Wash., 51. — Wasiiino rox, J.; Ta., IS.'l.

22 COPYRIGHT LAWS.

ODSOLETi-:. Acr OF 1802, caxp. 30, §§ 2,3.

2. In tho fintt case, the inventor and dcniomer is identified with the
enirrnvcr, or. in other words, the entire work, or suhject of the copy-
right, is executed hy the s.-inic pt.'rson. In tiic lattfr, the invontiuu is
ilesigneil or embodicil by tiic person in wliom tho rij.rht is vested,
and tile form und completion of the work arc executed by anoilier.
IbidL, r.l.

3. Hut in neither case can a person claim a copyright for a niero in-
vention, tho work of his imagination locked up in his own mii.d. or
existing in a form not visible to otliers. Neither is lie so entitled, \m-
less he has not only invented, but also designed or represented tho
subject in some visiMc form. Ibid, 51.

4. Where nuilhor the disign nor tiie general arrangement of a prin',
nor the parts which coni|i<iScd it. was the invention of tho plaintiff,
but lie haii cniplnycd and ]);iid tlic artists wlio had composed and exe-
cuted it, /AW, that uihUt lliis section he was nut enlilk-.I to u copy-
right. Ibid.. 53.

Section 3. And he it j'taf/nr cnavfi'I, That if any
print.scllrr or otluT prr.soii wliatsoevi-r, t'roux ami alK-r
the said lirst day of January luxt, witliiii tliv time lim-
ited by this act, shall eugfave, etch or work, as aforesaitl,
or in any other manner eo|»y or sell, or eaiise to be on-
Uravi'd, itched, eojticd or sold, in tlie whole or in jart,
by var\ini,', atidiii<^ to, or diminishini; from the m.iin
debii;n, or sliall print, reprint, or import for sale, or cause
to be j>rinted, reprint (•(], nr imported for sale, any siieh
print or pinnts, i»r any parts thereof, without the consent
of the proj)ri(.*tor or proprietors there<»f, first had and
obtained, in writin;;, hij^netl by him or them respectively,
in the presence of two or more cretlible witnesses; or
knowing tlie same to be so printed <»r reprinted, withotit
the consent of the proprietor or jiroprietors, shall publish,
Hell, or exp<.>8e to sale or ollu-rwise, or in any other man-
ner dispose of any stieli print or j>rints, without htich
consent first had and obtained, as aforesaid, then such
oir-iider or ofll-ailcrs slcill forfeit tho plate or plates on
which such print or prints are or shall bo cojiiod, and all

ACT OF 1802, CHAP. 3G, g§ 3, 4.

and every sheet or sheets (heiiiLC part of or whereon such
print or prints are or shall he eopied or printed) In the
])ro|)rietor or ])roprictors of such orifj^inal print or prints,
who sliall fortliwith destroy the same; an<l further, that
every such oif.-nder or ofleiiders shall forfeit one dollar
for every print which shall be found in his, her, or their
custody ; either ])rintcd, puldished, or exposed to sale, or
otherwis'^ disposed of, contrary to the true intent and
meaning of this act, the one moiety thereof to any person
who shall sue for the same, and the other moiety thereof
t(j and for the use of the United States, to be recovered
in any court having competent jurisdiction thereof.

Sjcitiox 4. J /id be it fxrtlicr cnaotcd, That if any per-
son or persons, from and after the passing of this act, shall
))rint or publish any map, chart, book or books, print or
prints, who have nr)t legally acquired the copyright of
such map, chart, book or books, print or prints, and shall,
contrary to the true intent and meaning of this act, insert
therein or impress thereon that the same has bei-n en-
tci'ed according to act of Congress, or words purporting
the same, or purporting that the copyright thereof has
been acquired; every person so offending shall forfeit
and pay the sum of one hundred dollars, one moiety
thereof to the person who shall sue for the sarae, and the
other moiety thereof to and for the use of the United
States, to be recovered by action of debt in any court of
record in the United States, liaving cognizance thereof.
Provided altrai/s, that in every case for forfeitures here-
inbefore given, the action be commenced within two
years from the time tlie cause of action may have arisen.

Approved April 29th, 1802.

21 COPYRRiFIT LAWS.

IS tXJKOK. ACT OP 1819, CllAP. 10.

ACT OF 1810, C II APT Eli 19.
3 Statitks at Large, 481

[ Thiji Act Htill in Force.]

An act to extend the jurisdiction of the Circuit Courts
of the I'liiled States to cases arising under the hiw
relaliug to paleuts [and copyrights].

He it enarted^ hi/ the Senate and House of Jifpresent-
ativcs of the United States of America, in Congress
asscnihltd. That tlie Circuit Courts of the United States
sliall have oriiLcinal cognizance, as well in equity as at
law, of all actions, suits, controversies, and cases, arising
under any law of the United States, gianting or contirni-
ing to authors or inventors the exclusive right to their
respective writings, inventions, ami discoveries; and
upon any bill in e<piity, tiled hy any party aggrieved
in anv si:ch ca<es, shall li:i\e atitliority to grant iiijuuc-
tions, accorditig to the course and principles of courts of
equity, to prevent the vi"l:ition ol' the rights of any
authors or inventors, secured to them by any laws of the
United States, on such terms and con<litions as the said
courts may deem fit and reasonable (") ; I'rm'idedy hmr-
et'er. That from all jmlgnients and decrees of any Circuit
Courts, rendered in the premises, a writ of error or
appi'.il, as the e.ise may require, shall lie to the Suj)remo
Court of the United States, in tlie same manner, and
un<lfr the sanio circumstances, as is now jirovided by
law in other judgments and decrees of such Circuit
C jurts. (/>)

(a) 1. Tl»o act ci 1313, »o far as it gnvc cognizance lo ih; courts of

ACT OP 1819, CHAP. 19. IN FOECK,

the United States in caPOS of copyrights, Btill remains in foree, and is
the ouiy law conferring equitable jiirindiction on tlieso courts in Fuch
Ciipcs; tlie nintli section of the net of 18;!1 protects nianuscrii)t3 only.
Stephens V. Gladding, 17 How.. 455.— Ciiins, J.; Sup. Ct.. 1854.

2. The equity jurisdiction of such courts, as to copjTight.'', does not,
extend to the adjudication of forfeitures: a decree, tlierefore, canuo»
he entered for the jicnaltics incurred for a violation of a copyright.
Jbid., 455.

3. Under the acts of 1700 nnd 1819, as to patents and copyrights,
the owners of copyrights and patents do not have redress or relief ir-
nu3' cases where they could not before have had relief in some court,
either of equity or law. Pierpont v. Fotule, 2 Wood. & Min., 27. —
WooDBURT, J.; Mass, 1840.

4. Th.eso acta merely enable them to prosecute such claims in tho
Circuit Court of the United States, as they usually had done before,
but without going to the State tribunals; the jiublic interest required
a iiniff)rni construction to be placed by one tribunal on all important
questions connected with rights so held. Jbid., 27.

5. The jurisdiction of tlie Federal court.", under the acts of Congress
respecting copyriglits, has not taken away or diminislied the original
jurisdiction, which, before such acts, tho State court.s exercised — ex-
cept where the jurisdiction was made exclusive in express terms, or by
the necessary construction of the Federal Constitution. Woolsey v.
Judd, 4 Duer, :{.S2.— I'ueu, J.; N. Y., ISSS.

6. Under the act of Congress, giving to the Circuit Courts cognizance
of cases arising under the laws of the United State.s, granting to au-
thors the exclusive right to their writings, the citizenship of the parties
litigant is immaterial. Keew. v. WheaUey, 9 Amer. Law Reg., 44, 45. —
Cadwam-adeu, J.; Pa., 1860.

7. The act of 1819 concerns remedies, and not rights. Fbid., 4.5.

8. AVhi re a wrong lias been conmiittcd in respect to a literary work,
but tho bill does not ask for an injunction to protect the common law
rights of tlie author, or the violation of any copyright secured, but only
asks an account, redress cannot bo sought in a court of equity, but tho
party must proceed at law for damages. Monk v. Harper, 3 Edw. Ch.,
110, 111.— McCoCN-, V. Chan. ; N. Y., 1837.

See also Digest Pat. Cases, titles Acrio.vs. A ; Eqnn', .A.

(6) A writ of error, or appeal, as tho case may require, now lies to
the Supremo Court, from all judgments or decrees of any Circuit Court,
rendered in any action, at law or in equity, arising under any of tho
laws as to copyrights. Act of 1861, chap. 37.
2

26 COrYKIGHT LAWS.

L\ rORCK. ACT or 1831, CHAP. 16, g 1.

ACT OF 18;u, ClIAl'TEU 10.

4 SxATrTKS AT Large, 430.

[This Act still in Force.]

An Act to amend the several acts respecting copyrights.

Sectiox 1. Jie if enacted by the Senate a^d Jloxise of
Jtepresentativrs of the United Statt's of America in Con-
gress assemhled. That from and alter the passing of this
act, any person or persons, being a citizen or citizens of
the United States, or resident therein, who shall be the
author or authors of any book or books, map, chart, or
musical composition, ■which may be now made or com-
posed, and not printed and published, or shall hereafter
be made or composed, or who shall invent, de!*ign, etch,
engrave, work, or cause to be engraved, etched, or worked
from his own design, any print or engraving, and the
executors, administrators, or legal assigns of such person
or persons (<7), shall have the solo right an<l liberty of
printing, rej)rinting, publishing, and vending (A) such
book or books, map, chart, musical composition, print,
cut, or engraving, in whole or in j)art, for the term of
twenty-eight years from the time of recording the title
thereof, in the manner hereinafter directed, (c)

(a) Who MIT HAVE, axd What Siiukct or PorTRioirr.

1. Undor ihin not a porBon, to b« a " rcsidonl " no na to be entitled
to a oopyrii^ht, must Im- n [><<rtnanciit rcsiJcnt of tlio country. A j)or-
Bon tJ-mpornnly ruHidiii^ lierc, i-ron tliou;?h lio has <ieolnrod his inten-
tion of bcTominj? a citiwn, cntinol tnko or hold a opvright. Carey v.
CMicr, OC NiI.'k'h Iloj? , 2t'.'J.— Uetts, J. ; N. Y., 18.(9.

2. Tho legnl anMignco of tho author mny tnko out the copyright, and
it will make no difTcreooo wholltor ho bolda it as trustoo for iho boneflt

ACT OP 1831, CnAP. IG, § 1. m FORCE.

of another or not Little v. Gould, 2 Blatchf., 3C6.— Nelson, J. ; N. Y.,
1852.

3. Under this act no person rrn obtain a copyright except authors
who are citizens or resificnts of the United .'>tatpa, and proprietors un-
der derivations of title from such authors. Kccne v. WheatUij, 9 Amcr.
Law Keg., 45. — Oadwau.adkii, J.; Pa, 18G0.

4. The assignee of a work composed by a non-resident alien cannot
obtain a copyright for it. Ibid, 45.

5. To coiiPtitute one an autlior, ho mu.st, by liis own intellectual
labor applied to the materials of his composition, produce an arrange-
ment or compilation new in itself. Atwill v. Ferrett, 2 Blatchf, 46. —
Betts, J.; X. Y., 1846.

G. One who gets others to compile a work or engrave a print is not
entitled to a copyright. Fierponf v. Fmck, 2 Wood, .fc .Min., 4ti. — Wood-
bury, J. ; Mass.", 1S4G. Atwill V. Ferrett. 2 Blatchf., 40.— Betts, J.;
N. Y., 184G. BfWitt V. Brooks, MS.— Nei^on, J. ; N. Y., 1S61.

7. A book, witliin the statute, need not l)e a volume made up of
many sheets bound together; it may be a single sheet, as the word.-j
of a song, or tho music accompanying it. Clayton v. Stone, 2 Paine,
383, 391 — Tjiomi'SOX, .T. ; N. Y., 1S28.

8. A newspaper or price current cannot be considered a book within
the sense and moaning of tiie act of Congress. JbiJ., 385.

9. A label used in the sale of any article is not a book, within tho
provisions of the statute respecting copyrights. Cnffecn v. Brunton, 4
McLean, 517.— McLean, J.; Ind., 1849.

10. The natural objects from which maps and charts are made are
open to all, and therefore a copyright cannot subsist in a chart, as a
general subject, but may in an individual work, and others may be re-
strained from copying it. Blunt v. Fatten, 2 Paine, 400, 401. — Thomi'-
60N, J. ; N. Y , I's-Js.

11. A man has a right to a copyright of a map of a State or country
which he has surveyed, or caused to be compiled from existing mate-
rials, at his own e.^iiense, or skill, or labor, or money. Emerson v. Do-
xies, \ Story, "81.— Story, J.; Mass., 1S45.

12. Another may publish another map of the same State or country,
but cannot take it substantially and designedly from the map of the
other person, without any such exercise of skill, labor, or expense.
Ibid., 781.

1.3. Tiie author or compiler of a musical composition, made up of
different parts co;>ied from older compositions, without material change,
and put together into one tune with only slight alterations or additions,
is not entitled to a copyright for such therefor. Reed v. Carusi, 8 Law
Rep., 411.— T.KSEY, Cli. J.; Md.. 1845.

14. But the circumstances of its corresponding with older musical
compositions, and belonging to the same style of music, does not con-
stitute it a plagiarism, provided it is, in its main design and in its ma-
terial and important pans, the effort of his own mind. Ibid,, 41 1.

28 COPYRIGHT LAWS.

IS rOUCE. ACT or 1831, CUAP. 16, § 1.

15. A musiCRl composition, to be the subject of a copyrijrht, must be
Piibstaiilially n new and originnl work, and not a copy «l' a piecv nlrcndy
pPKiiicttl, with aililitions and variations, which a writer of music witli
exjwrioncc and skdl could readdy make. JvUit v. Jaques, 1 Blatehf,
6:'6.— Nkusox, J. ; N. Y., 1850.

IG The phrase deai'jn, wiien used as a term of art, menus the Riving
of a vi!?ible form to the conceptions of the mind; or, in other wordn,
to the invention. Binns v. Woodruff, 4 Wash., 62.— Wasuisgtox, J. ;
Ta., 18'Jl. . . *

n. A reporter cannot have any copyright in the written opinions or
the juilgea of a court; nor can th<' judges confer any sucli ri^lit on tho
rciH.rler. Whenton v. I'ekrs. 8 Pet.. t;68.— McLean, J. ; Sup. Ct.. 18^1.
Litle V. Gould, 2 Blatclif., 170.— Co.nkliso, .1.; N. Y.. 1851.

18. Suih deci.-ions are the property of the puhlic, and arc not tho
subject of copyright. LiUle v. UotUd, 2 Blatclif, 302.— Nei-SOX, J. ;
N. v., 1852.

19. But a reporter may have a copyright in hi.<« own marginal notes,
and in the argumeut.s of counsel, us arranged and prepared by him.
Gray v. JiUS-nU. 1 .Story, 21.— Sronv, J.; Mass., l?3'.i.

20. A work m;iy be the subject of a copyright, if the plan, arrango-
meut, and coniliiualion of its materials are uvw, though the materials
may be drawn from many iiOurc>e.s, but are for the lirst time brought
together in such jdan, arrangement, and combination. Gratj v. JCu-^seU,
1 ^^tory, 17. — .Stoky, J.; Mass., 1839. Einerson\. Daviea, 3 Story, 778.
SkjUY, J. ; Ma.xs., 1.S45.

21. But there can be no copyright, of a plan distinct from the work
itself, any more than there can be of an idea. The words in which au
idc.t is expres.scd, are a subject of projKjrty ; and so is the ela-ssilli-ation
of tho subject (li8ou.«scd. ^tury'a Ezra. v. Uolcombt; 4 McLean, 31G. —
McLkas, J.; Ohio, lHi7.

.s<o aUo lUcjKST i'AT. CA8K.S, titles AuTnon; CorvntoiiT, B., C. ;
AuriiD^iME.NT; Charts; Compilations; Dictionaries; Reviews;

TkANbLATIoN.

(h) COPTRlr.lIT, WUAT I.S.

I. The privilege of an author to an exclusive sale of his works, for a
limited numV>er of ycarH, nllliough a nu>nojx>ly, is not .ho in tlie o<iious
meaning of the term ; but is but a [imixT reward fi>r his lalxir, and to
which ho is as mucli entitled as to tlio exi-liisive enjoyment of any
other kin<l of property. Jllunt v. Patten, 2 Paino, 395. — TiioMi'SON, J. ;
N. y^ 1828.

a. Copyright Is an exclusive right to the muUiplioation of copies, for
the bcnelU of the nulhor or his assigns, di8C<inneete<l from the plate, or
any other physiad existence. Strphcna v. C'arfy, 14 How., 330. — Nel-
BON, J.; Sup. Ct., l»52.

3. Bcfi.r'.' publieation, an author has tho exrhiHivo jKisseHsion of tho
Ideas cyntAiue<l in his book, and the combination of words to repre8«nt

ACT OF 1831, CHAP. IG, §§ 1, 2. IX FORCE.

them. But when Jio ha.s publislicd his book, and given his thonghts,
Fcntiiiiont.M, knowledge, or infonnation to the world, he can have no
lonf:er an c.tclusive passessiou in them. Stowe v. Tlioinwi, 5 Amor.
L:uv Keg., •J-.i«. — CuiKK, J. ; I'a., lH.'"i3.

4. AVIieu an aiiilior ha.s sold liis work, the only property which ho
reserves to himself, or whicii the law gives to him, is the exclusive
right to multiiily the copies of that particular comhiuation of character
which e.thibita to the eyes of another ihe ideas intended to be con-
veyed. This is what the law terms copy, or copyright. Ibid., 'J23.

6. An autlior's cxcliLsive property in a literary composition, or copy-
right, consists only in a right to multiply copies of his book, and enjoy
the profits therefrom, and not in au exclusive right to his conceptions.
Ihiil., 228.

G. The case of MiUar v. Taylor, 4 Burr, 311, ha.s finally settled tho
question as to tho nature of the jjpoperty whioh an autiior has in his
works ; and it is, that, after publication, his proi)erty consists in tho
" right of copy," which signilies "the solo right of printing, publish-
ing, and selling his literary composition or book ;" not tliat he has
such a property in his original conceptions, that he alone can use them
in the composition of a new work, or clothe them in a diCfereut dress
by translation. Ibid., 230.

See also UioEsr Pat. Cases, title Copyright, A.

1. Congress, in passing tho copyright act, did not loi:islate in
reference to existing rights. Instead of sanctioning an existing right,
it created it. Whcaton v. Pciers, 8 Pet., GCl. — McLean, J. ; Sup. Ct.,
1834.

2. In the United States an author can have no exclusive property or
copyright in his published production except under the laws of Con-
gress. Ibid, 602.

3. Tlie author of a literary composition has, at common law, no ex-
clusive right to print and publish it. Dudleij v. Muyhew, 3 Coms., 12.
— Stkoxu, J. ; N. Y., 18-19.

4. Copyright, though formerly considered to bo founded on common
law, can now onlv be viewed as part of the statute law. ClayUm v.
Stori", 2 Paine, 383.— Tiioui-sox, J.; N. Y., 1828.

5. Tiie object of the acts of Congress, securing to authors the exclu-
sive right to their writings, was the promotion of science. Ibid., 392.

See also Dioest Pat. Case.s, title Copyright, A.

Sectiox 2. And he it further enacted. That if, .at tho
expiration of the af(»re>aid term of years, siuli author,
inventor, designer, engravi-r, or any of them, wliere tlio
worlc had been originally coinpob^ed and made by more

80 COPYRIGHT LAWS.

IN rORCB. ACT or 1831, CHAP. IG, §^2, 3.

than one person, ho still living, ami a citizen or citizens
of tlic I'nitcd States, or residenL therein, or, bcini; deatl,
shall have left a widow, or child, or children, either or
all then liviiifj, the same exclusive ritiht. shall be con-
tinued to sueh author, designer, or cntjraver, or, if dead,
then to such widow and child, or children, fur the i'ur-
ther term of fourtei-n years: ProiUihtf, That the title of
the Work so secured shall be a second time recorded, and
all such other regulations as are herein required, iu regard
to original coi>yrii,'hts, be complied with in respect to
BOch renewed copyright, ami tiiat within six moutha
before the expiration of the first term.

1. The extension under thi.s act looks entirely to the author and
bis family, nnd not to assij,'ncos. IHerj^nt v. J-'ouU, 2 Wood, i Min.,
42. — Wo iDiilRY, J. ; Mass., 1S4C.

2. An ii8si(fnnient of a "ci>pyri;;ht" should not, by construction, bo
exlenilcd beyund llie (irst term, uiilf.<8 il seems to bo actually meant
by the uuthor to bo Irausferred forever, and including any future con-
tin^rencv. Ibid., 44.

3. But where il is clear that the author intended to transfer all his
Intcresl in the c<)i)yri^,'lit, as well in tho extended as iu the original
tern>, and tlie aisigninciii is not, in its terms, broad ouoiiph to cover
Uio second term, a court of equity will direct tho contract to be re-
formed, BO as to cii;brace oil Uio interest, t'owen v. liutika, MS. — XtL-
80X. J.; X. Y., lst.2.

i. An usbi^nee alone cannot take out the second or extended tenn,
unless he has paiil lor it, clearly contracted f>)r it, and. in equity, rather
thou by nny technicid law, is to be protortcd in it. J'icrpiii v. Foule,
2 Wood. A Mill., H. — WotiUUCKY, J.; Mass., lt>4').

6. The taking out a m-ound term of a copyright is not like tho
Btrengtheuiiig of a defective title, but rather like a new interest ol>
tained aAcr the general interest htul expired. Jbil.. 46.

See also Diiinsr 1'at. La.sks; title C'U'VliKiiiT, K.

Seition 3. And bi: if ftirt/nr tuactii/, That in all cases
of renewal of copyright under this act, such author or
proprietor hliall, withiu two month.s from tho date of haid
renewal, cause a copy of the record thereof to be pub-

ACT OF 1831, CHAP. 16, § 4. IS KOIKE.

lished in one or more of the newspapers printed in the
United States, for the space of four weeks.

Section 4. And be it further enacted^ That no person
shall be entitled to tlie benefit of this act, unless he shall,
bi-ibre publication, deposit a printed cojiy of the title of
such book, or book.-^, map, chart, musical composition,
j)iint, cut, or engraving, in the clerk's office of the Dis-
tiict Court of the district whert-in the autlior or pro-
jirietor shall reside, and the clerk of such court is hereby
directed and required to record the same thereof forth-
with, in a book to be kept for that purpose, in the word.s
following (giving a copy of the title, under the seal of
the court, to the said author or proprietor, Avhenever he
shall require the same) : " District of to wit : Be

it remembered, that on the day of Anno

Domini, A. B., of the said district, hath deposited

in this office the title of a book (map, chart, or otherwise,
as the case may be), the title of which is in the words
following, to wit : (here insert the title) ; the right where-
of he claims as autlior, (or proprietor, as the case may be,)
in conformity with an act of Congress, entitled ' An act
to amend the several acts respecting co|)yrights.' C. D.,
Clerk of the district." For which record the clerk shall
be entitled to receive, from the person claiming such
right, as aforesaid, fifty cents, and the like sum for every
copy under seal, actually given to sucli person or his
assigns. And the author or proprietor of any such book,
map, diart^ musical cotnjiosition, print, cut, or engraving,
shall, within three months from the publication of said
book, map, chart, musical composition, print, cut, or en-
graving, deliver, or cause to be delivered, a copy of the
same to the cle:k of said district. And it shall be the

82 COPYRIGHT LAWS.

IS FORCE. ACT OP 1«31, CHAP. IG, g§ 4, 6.

duty of the clerk of each District Court, at least once in
every year, to transmit a certifie«i list of all such records

of eujtyri^lit, iric'Uurm;jj the titles so reeorded, and the
<l;ites of record, and also all the several copies of books
or other works deposited in his office according to this
:u't, to the Secretary of Slate, to be preservtil in his
ortice. ((/)

Section 5. And be it further enacted^ That no person
shall be entitled to the benefit of this act, mdcss he shall
j^ive inlonnation of copyright being secured, by causing
to be iiiserte<l in the several copies of each and every
edition published during the lenn secured on the title-
page, or the page iniiuediately following, if it he a boot,
or, if a map, chart, musical conjposition, print, cut, or
engraving, by causing to be impressed on the face there-
of, or if a voltmie of maps, charts, music, or engravings,
uj)on the title or frontispiece thereof, the following words,
viz. : ''Entered according to act of Congress, in the year
, by A. H., in the <lerk'8 office of the District
Court of ," (as the case may be.) (a)

{a) Notes to g§ 4 and 5.

1. Tho not of T'-.Tl enihodios tlio proviaions of the acts of 1790 aDd
18o2, and imix>sf« on the ixrsoiis ilaiminij tlio |irivili'({t' of copyright
the K.-iinc dtiiie'< and lLtl>ilitic!« wliicli nttcudid the ri^lit uiidur tho prior
utatulcH. Jkiktr y. TayhT. '1 Ulatohf., 8.1.— Hetts, J.; X. Y, 1S48.

2. Under Hwclioo.M 4 tind 5 of tliiK act, tho dopositiiig tho titlo-p.i((«
io tho pr<i|MT ilurk'H ofllco, piilplij-hinK a n<ilici» uoconhnif to thu net,
nnd dohviritig a »'<^)py "f tlio Ijook, aro conditiunM, Iho |K'rfunnnuoo of
which i» I'Oik nlial to tho lilh>. Ihi<l , 84.

.'!. And tl.o uuticv uiiiMl bv publirheil in the manner H)>ccifled iu l))0
Oct IIU., H4.

4. All »ho ttiinifii rtxpiirod by tlic«»o FOctionR niuxt Ik? <litno to ceoure
a copyri'.'lil. JiMif v. ././'/u^r 1 lllaulif, CJo.— Nklkon, J.; N*. Y.,
1Sj<». .Siruirv. Sihuedt.r, 4 Hl.it< hf.— Nkuson, J.; N. Y., 1H.-.7.

■>. I'ntd all tho thinjfH r«qiiir< .1 l.y ihcH'- HcctioiiH aro doix*. tlio copy-
right is not nccurod; but by lakia^ tho iucipiunt nlc-p, a right is so

COPYRIGIIT LAWS. 83

ACT OF 1831, OilAP. 16, §g 5, G.

qdired which chanrery will |>rntcct, until the other acts may be done.
iWV V. Di-rliij, 5 McLean, na'i — McI.kan, J., Ohio, 1«'.2.

G. ^Vho^c a work con>i.«tH of a niinihcr of volumes, the insertion of
the roeoril on tlio pa^rc next foliowini; the title-fiagc of theyfrs^ vnlnme
of the work is a sullicieni compliance witii tlie statute. Dwi'jht v.
AppUtoiv, 1 N. Y. Lor. Obs., 198.— TiioiirsoN, J.; N. Y., 1S-J3.

7. The author may insert the same record in anotlier edition, pnb-
lished in a dilVerent number of volumes, without impairing the copy-
right. Ibid., 109.

8. The number of volumes in wliich it waa stated the work would
bo piiblislicd, make no part of its title, and may be rejected as sur-
plusage. IhiJ., 199.

9. After such title-page has 1)ecn deposited, the author can maintain
nn action for an infringement or violation of his ri^'ht, even though the
work may not liavo been published, or tlu) printed copy deposited.
Bobcrts \'. Mryers, 13 Mo Law Rep., 398.— Si-uague. J.; Mas.s., 1860.
Contra, Kttne v. Whtatley, 1 Amer. Law Reg., 44. — Cadwalladeu, J.;
Pa., 1800.

10. The record from tlie clerk's office, made in the form prescribed
by sov-'tion 4, or of the depositing of a title-page, is prima facie evidence
that a printed title was deposited. Roberts v. Meyers, 13 Mo. Law Rep.,
398.— iJpuAGUE, J.; Mass., ISCO.

11. Where the title-page of a book was deposited in 1S46, and tho
notice of tiie entry, inserted in the book, stated it to have been dejtosit-
ed in 1847, IJcU. that the error created a fatal defect in the plaintiff's
title. Rik-r V. Tiylor, 2 Blatchf, 84.— Betts, J.; N. Y., 1S48.

12. Kvcn if tlie error arose from mistake, it will make no difference
as to the resiilt. Ibid., 84.

13. Under section 4 a person is not entitled to any beneflt, imder tho
act, unless he deposits the tiile-page be/ore the publication of his worl^.
Ibid, 85.

14. Where copies of a book were sold prior to the date of the deposit
of a copy of the title-page, and a printed copy of the book was deposited
in the clerk's ollice, at the same time the title-page was deposited. Held,
that these facts warranted an infirencc of an actual pubhcation of the
book prior to the date of such deposit. Ibid., 85

See also Digest Pat. ("a.ses, title Copykight, D.; and notes to sec-
tion 3 of the act of 17 HO, and to .section 1 of the act of 1802.

Skctiox 6. And be it fm-tJirr aiacted, Tlint if .tuv
otlier person or jiersons, I'roiu atid after the rceor<ling
the title of any book or books, according to tliis act,
shall, within the term or terms herein limite 1, print («),
publish, or import, or cause to be printed, published, or

84 COPYinr.IIT LAWS.

ACT or 1831, CUAP, 16, g 6.

imported, any copy of such book or books (ft), without the
consent of the p'rson Ictjully entitled to the copyright
tlicreof, first had and obtained in writinjx, signed in
presence of two or more credible witnesses, or shall,
knmving the same tn be so printed or iinportC'L, publish,
sell, or expose to sale, or cause to be i»ublished, sold, or
exposed to sale, any copy of such book without such
consent in writing; then such offender shall forfeit every
copy of such book to the person legally, at the time,
entitled to the copyright thereof; and shall also forfeit
and pay fifty cents for every such sheet which may bo
found in liis possession, eitlier jirinted, or printing, pub-
lished, imported, or exposed to sale, contrary to the
itjteiit of this act, the one moiety thereof to such legal
«>wn(T of the copyright as aforesaid, an«l the other to the
use of the United States, to be recovered by action of
tlel)t in anv court having competent jurisdiclion there-
o- (<•)

(ill. The intent with wliicli a work is roprintotl cannot be lAkcn
into consideration ; it is the net of reprinting that is prohibited by tlio
Maiute. Siehols v. liugjU.i, 3 Day, 158. — ClUIAM ; Ct., 1808. Story's
Kira V. U<.l.imtb<, A Mclx-an, 3U9' :ilO— McLkan, J.: Oliio, 1847.

2. It is of no con.scfiuonct! in what fomi the works of another ore
UHcd, whether it Ijo a xiniplo rojirint or by inC'ir|M>rating it in soino
other work. If liis co|)yri>(lil i.s viohitcil, he c.'in maintain an aclioa
therefor. Cnty v. liuMrU. 1 ."^tory, 19. — Stokv. J.; Mjih.s , 1S39.

3. To entitle a party to an action for tlio infrini^'enjent of n copyright,
it ia not DccfNNary tiiat the wiiolc or a greater part of liis work slioiild
bo taken. If so mucli is taken as to ini|»air the value of the original,
or so that the labors of the original author are siibxlnntially appropri-
ated, tliat i" Hiillloient in point of law to coii'-tilulo u piracy. J-'ultom v.
Harih, 2 Story, 115— SrotiT, J.; Ma-s., Is41

A. The entirely of the copyriglit is tiie pro|)crty of tlie author; nnd
it U DO defence that another ha!i nppro])rialed only a part of such prop-
•rtj and not the whole. JbuL, \W>.

6. Nor do<-a it necesHarily dop^-nd u{>on the quantity taken, whether
it \n nn infringcm'.'nt of a ct)pyright or not. Ibid, IIG Sloi-y't Ex'ri
T. UtAcvmU, i McLonn, 309, 310.— MclJSvN, J.; Ohio, 1847.

ACT OF 1831, CUAP. 16, §§ 6, 7. IN FOKCK.

fi. Intention cannot bo taken into account in roferonce to an infrlnpc-
mctit. If a opyriKlit li:i3 been invaded, wlictlier tiic party Ivncw tho
work was eopyrighted or not, lie is liable to tho penalty for vi< lation.
MilHt V. Smu'dei, 1 West. L. Jour., 240.— Betts, J.; N. Y., 1.S43.

{b) 1. A book may in one part of it infrinpo the copj-right of anotiicr
work, and in other parts bo no infringement ; in such a ca.se, tho
remedy will not bo extended beyond the injury. Story's Exrs. v. Hoi-
combe, 4 MrLean, .'Uu— .McLkan, .!., Ohio, 1847.

2. A book, wi'.hin tho meaning of the statute, docs not include a
translation of a work. Slowe v. T/toi>uis, 2 Amcr. Law Reg , 230. —
CJRiKit, J.; Pa.. 1S53.

3. A translation may be called a transcript or copj' of tlie autlior's
thought or conception, but in no correct sense can it bo called a coj>y
of his book. Ibid., 231.

See also Di(ii:sT Pat. C.vsks, title Ixkri.vokme.nt. A.

(c) 1. An action on the cuse is the projjcr form of action to recover
damages for a violation of a copj-right; trejipnss will not lie. AtwiU v.
Ferr,U, 2 Blatchf, 48.— Betts. .1.; N. V., 1840.

2. The penalty of fifty cents per sheet imposed by this section is
incurred for every sheet found to have been in the defendants' posses-
Bion, or which they had sold, or held for sale. Dnnghl v. Appletons, 1
N. Y. Leg. Obs., 198.— Tuomi-son, J.; N. Y., 1843.

3. The penalty declared by this section can be adjudged onh' for the
sheets found in the posses-ion of the defendant. Backus v. Gould, 7
How., Sll.— McLean, J.; Sup. Ct., 1.S48.

4. The penalty imposed by this section is not incurred by printing
and publishing so much of a book as to amount to an infringement of
the copyright. Rogers v. Jewett, 12 Mo. Law Hep, 340. — Ccrtis, J.;
Mass.. 1858.

5. Tho words ''a copy of a book." found in section G of tlic act of
1831, import a transcript or copy of the entire book. Ibul , 341.

6. Congress did not intend to inflict these penalties upon the unlaw-
ful printing or publication of less than an entire work. Ibid., 341.

Section T. And be it further enacted, That if any per-
son or persons, after the recording of the title of any-
print, cut, or engraving, map, chart (a), or musical com-
position, according to tlie provisions of this act, shall,
"within the term or terms limited by this act, engrave,
etch, or work, sell, or copy, or caused to be engr.ived,
etched, worked, or sold, or copied, either on the •wliole,
or by varying, adding to, or diminishing the main design,
■with intent to evade the law ; or shall print or import

38 COPYRIGHT LAWS.

IN roncM. ACT or 1831, cuxp. Itt, § 7.

for salt*, or cause t<> Ix- f»rintO(.l or inii>ortC(l for sale, any
Huch map, chart, musieal cnniposition, print, lut, or cn-
i^raving, or any parts thereof, without tlie eoiisent of the
proprietor or proprietors of the copyright thereof, first
obtained in writing, signed in the presence of two ered-
il>le witnesses ; or knowing the same to be printed or
imported without such consent, shall publish, sell, or
expose to sale, or in any manner tlispose of any such
map, chart, musical composition, engraving, cut, or print
without su<h consent, as aforesaid; then such olK-niler
or offenders shall forfeit the plate or plates on which such
map, chart, musical composition, engraving, cut, or print,
shall be copied, and al>o all and every sheet thereof so
copied or printed as aforesaid, to the proprietor or pro-
prietors of the copyright thereof; and shall further for-
I'c'it one dollar f>>r every slu-et of such ma|). chart, musical
composition, print, cut, or engraving, which may be fournl
in his or their possession, printed or published, or ex-
posed to sale, ctmtrary to the true intent and meaning
>>( this act; the one moiety thereof to the j)roprietor or
proprietors, and the other moiety to the use of the United
States, to be recovered in any court having competent
jurisdictitjn thereof. (//)

(a) 1. Thoii^rh n party caiinot huvo a crji)yripht in tlio oripriiml cle-
metiUi or inatoriulii of IiIh cliurt, ho linH u ri^^lit to tlio rcMult of his
lnt»orH and nurvoyn in mnkiii(f il. Anotlier jiarty m;iy rc.oort to the
oriK'iriiil tnuU-ri^lM of the chart, and Hiirvoy f«>r liimsolf, but lie cannot
ovail himm.ir, cithi-r in whulo or in jwirt, of the niirvovH of the formur.
lUiint X. I'aUrn, 2 Taino. 3'.»r>, 300 — Timyi-KoN, J.; X. V., 1S28.

2. The natural ohjiftM from which ••Juirt.-* nro niado, bfin^', however,
open to all, a (ojiyn^flit cannot Hul>m«t in ii chart, nn n j(iii«.ral Hutijfcl,
but It may in an individual work, und othom may l>u restrained from
copying itiich work. /'<(■/., 40(». 401,

3. Hut n ri^ht in nmU n nubji-ct is violatfid ouly when aoothcr copies
Irom tho chart of him who hoa jiernrod tiio oopyriicht, and tliorcby
availed hironelf of hi^ UI>or and akill. Ibid., 402.

coPYnronT laws. 87

ACT OP 1831, CIIA.P. 16, §§ 7-9. la FOKCB.

4. Ill all such cnse!<, it is a proper question for a jury, whoUier tho
one is a C()|)y of iho other or not : if tlicre was some small variance, it
woulil 1)0 a proper subject (if iuqiiiry wheilier the alteration was not
merely colorable. Jbid., Kr.'.

;'). IJiit a subsequent compiler has a ripht to avail himself of all prior
puliiications wliicli are not copyri^'htod. and if Ids chart is compiled
from such publirations. it is no iufringemeut, although it may agree
with another's ciiart. Ibid., 10.5.

t). One person may publish a map of the same State or country for
which another has a copyri^rlit, by using tlie like means or materials,
and tiio like skill, labor, and expense, in its preparation. But be lias
no right to publish a map, taken substnutially and designedly from tho
map of sucli other per.son. witliout any sucJi exercise of skill, labor, or
BApense. Kmenon v. Dariei, '.i Story. 781. — SroiiY, J.; liass., 1845.

Sec also l)i(:i:.ST Pat. Casks, title C'hakts.

(b) I. Tho penalty for an infringement is, under this section, fixed
b}' law. If the jury find there has been an infringement, they must
ascertain the number of sheets proved to have been sold, or offered for
sale (not tho number primed), ;ind return a verdict for one doihir for
each slieet so sold, or offered to be sold. MiUttt v. Snowden, 1 West.
Law Jour., 240.— DtTTd, J. ; N. Y., 184.'$.

2. A defendant is not liable to the penalty imposed by this section,
unless ho was guUty of the infraction of the copyright within two
vears before action was brought. Jited v. Carusi, 8 Law Rep., 412. —
Taney, Ch. J. ; Md., 1845.

3. The engraving or preparation of plates, where the work is printed
from plates, may have been more than two years, but every priming
for sale would be a new infraction of the right, and, if such printing
was within two years before suit brought, tho defeudaut is liable.
I hid.. 412.

4. The penalty is at the rate of one dollar for each sheet tlio defend-
ant may have caused to be printed for sale, within two years before
suit brought. Ibid.. 412.

See also Digest Pat. Cases, title Penalties. A.

Section 8. .1/*'^ be it fia-l/nr enacted., That notliing
ill this act shall be construed to extend to prohibit the
iraportiitioii, or vending, printing, or publishing of any
map, chart, book, niusicul composition, print, or engra-
ving, written, composed, or made by any person not
being a citizen of the United States, nor resident within
the jurisdiction thereof.

Skctiox 3. And be it further enacted, Th :t any pjr-

88 COPYRIGHT LAWS.

IN rOUCB. ACT Qf 1831, CHAP. 16, § 9.

son or persons who shrill print or publish any m.inuscript
whatever without the consent of the author or legal
pr.)i)riet<ir first obtained as aforcs:ii»l, (if such author or
jiroprictor be a citizen of the United States, or resilient
therein), shall be liable to suffer and pay to the author or
proprietor all dam.iges occasioned by such injury, to bo
recovered by a special action on the case founded upon
this act, in any court having cognizance thereof; and the
several courts of the United States empowered to grant
iniumtions to prevent the violation of the rights of
authors and inventors, are hereby empowered to grant
injunctions, in like manner, according to the principles
of eqiiitv, to restrain such j)ublicaiion of any manuscript
as aforesaid.

1. An aut}jor, at common law, has a property in his manuscript, and
mar obtain redress ugainst any one who deprives liim of it, or by im-
properlv oblainiug a co|)y endeavors to reahzo a protit by its piil)lica-
tion. 'Whratoit v. Pctcrf. 8 Pet, C57.— McLeax, J.; Sup. Ct., I8:t4.

2. NotwithsUndinp tiie copyright by Ktatiite, there remains in nn
author a common hiw title to l»i;< works l)efore puhhcation. Jones v.
Th'tne, 1 N. Y. Leg. < >b8 , 409.— Mcf'oVS, V. <Jh.; N. Y., IS 13.

3. At coninion hiw, indo|>enduntly of the statute, tlie autlior of a
manuHoript miglit «bt lin rcdrosM against one who had surreptitiously
gained pf>BsesMi<>n of it. liartlfUe v. L'rHUudeit, 4 McLean, 301. —
M< I.KAN, J.; t)liio, 1H17.

4. On general equiuiblo principloii, relief may also bo given, under
like circumstance'*, by n couit of eliancery. Hid., 3nl.

£>. The use, by an author, c)f hi* manuscript for the purpose of in-
Btniction, is not an Ql»ando»im<"nt of it to ttie pul>lia Nor is it an
•bnndonmet.t, to nl!i)W bis pupils to lake copies. Jbid.. 303.

C. ThoHe uUo wlio have I tvn pcrmitt<'<l to tiiko copies, have no right
to a UHO which wa^ not in coDU'mpblion when tho consent to tako
copies was given. Hiid., 3(13.

7. An author has a common law rij^ht in hU manuscript until ho
rclinquis!i<.-s it by i-onlract or momio equivocal act. liartklte v. CritUn-
den, J McLe.m, a-;. 38 — McLkas. J.; Ohio, 184y.

H. fuch right is nbo proucWd by aoclioD 9 of tho copyright act of
l«3i. Ibid, :«H.

j». A •urreptltlou* publication of an Iroportant part of a manuscript

ACT or 1831, CHAP. 16, §§ 9-11. IX KOIKE.

is equally within tho statute as if the manuscript was complete ; and
tlie whole of a nianiiacript need not be printed. Ibid., 39, 40.

10. Tills section prutoct.s nianuseripl.s xml}'. Stephens v. Gladding,
17 IIow., 4.'').'>.— Curtis, .1.; Sup. Cl., 1H.")4.

11. At common law an author has a ri^,'lit to his unpublislied manu-
scripts the same as to any other property ho may po.<5He3.s ; and thi.s
act of tlie ."^d of Kehniary, LS:'. I. gives him a romedy by injt-.nction to
protect this right. Little v. Hall, 18 How., 170.— McLean, J.; Sup.
Ct.. 1855.

12. Tho common law right of an autlior in his manuscript has not
been taken away or abridcred by the statutes which have been passed
for the protection of copyright. Its existence is prior to tlicse statutes,
and independent of their providious. Wvol'sey v. Judd, -4 Ducr, 3^5. —
Dlkr, J.; N. Y., 1835.

13. Tiio act of 1831, section 9, giving redress for the unauthorized
printing or publv<hing of manuscripts, operates in favor of a resident of
the United States wlio has acquired tlie proprietorship of an unpinted
literary composition from a noii-i-esideiit alien author. Kei--ne v. Wheat-
ley, 9 Amer. Law Rep., 45.— C.U)Wai,l.\per, J.; Pa., 1800.

14. But this section — and which is the only one — enabling a pro-
prietor, wlio derives his title from such an auilior, to assert any right
under tho act — gives no redress for an unauthorized theatrical repre-
sentation. Ibid., 45.

See also Digest Pat. Cases, titles Letters; Maxuscuipts.

Section 10. And he it further enacted, That, if any
person or persons shall be sued or prosecuteil, for any
matter, act, or thing done unJer or by virtue of this act,
he or they may plead the general issue, and give the
special matter in evidence.

Skctiox 11. And be it further cnactid, That, if any
person or persons, from and after the passing of this act,
shall print or publish any book, map, chart, musical com-
position, print, cut, or engraving, not having legally
acquired the copyright thereof, and shall insert or impress
that the same hath been entered according to act of Con-
gress, or woitls puiporting the same, every person so
offending shall forfeit and pay one hundred dollars : one
moiety thereof to the person who shall sue for the same,
and the other to the use of the United States, to be re-

40 COPYRIGHT l.AWS.

IS roncK. ACT op 1831, chap. 1G, g§ 11-15.

covered liy action of debt, in any court of record having

cognizance thereof.

1. Tlic ponalty impoacd by this section, and pven "to the person
w l:o shall sue for tlic same," cannot be recovercfi in tlic name ol' more
than one j>erson. Farttt v. AtaiU, 1 IMalchf., 154, 153.— Burrs, J.;
X. Y., 1S4«;.

2. -V (iocl:iration for such penalty in the name of two persons is bad,
oil general (lomurrer. Ibid., 154.

li. Tiicre is a niunifcst differeneo between pivinp a jwnalty to a com-
mon int'onncT, and imposing one for the )>cuelit of the person aggrieved:
in llio latter case, the term person maj' be regarded as comprehending
every one afloctod l>y the injury. Ibul , 15G.

See also Dioest Tat. Casks, title 1'kxalties, A.

Section 12. And be it furt/irr enact f J,, That, in all
recoveries under this act, either for damages, forfeitures,
or penalties, full costs shall be allowed thereon, any thing
in any fornier act to the contrary nolwithstaiidin;;.

SixTioN 13. And he it further endcted, That no action
or prosecution shall be maintained, in any case of for-
feiture or penalty under this act, unless the same shall
have been coinnienced within two years after the cause
of action shall have arisen.

Section 14. And Ite it furt/ier enacted, That tlie "act
for the eneoiiraLTenient of learnii)<_r, bv seenriii'.^ the copies
of maps, charts, arid books, to the authors and jiroprietors
of such copies during the times therein mentioned,"
passed May thirtytir>f, one thousand hcven hiuidreil and
ninety, an<l the act Huj)plenientary thereto, passed April
twenty-ninth, one thousand eii^ht hundre<l .ind two, shall
be, and the sanie are liereby, repealed: saviuLT, always,
huch ri;rhlH as niuy have been oht.iined in conlonnily to
their provisions.

Sk<tion 15. Atid hf it fiirflitr enactn/^ Th.it all and
several the provisions of this act, intended for the prolcc-

COPYRK.IIT LAWS. . 41

ACT OF 1831. CHAP. 16, § 16 IN FORCB.

tion and security of coj)yrights, and providing remedies,
penalties, and forieitures, in cases of violation thereof,
shall he hi'M :iiid construed to extend to the hencfit of
the legal projirietor or proj)rietors of each and every
copyright heretofore obtained, according to law, duri?ig
the term thereof, in the same manner as if such copyright
had been entered and secured according to the directions
of this act.

Section 16. A)id be it further (uacted. That when-
ever a copyright has been heretofore obtained by an
author or authors, inventor, designer, or engraver, of
any book, map, chart, print, cut, or engraving, or by a
proprietor of the same : if such author or authors, or
either of them, such inventor, designer, or engraver, be
living at the passage of this act, then such author or
authors, or the survivor of tliem, such inventor, engraver,
or designer, sh:ill continue to have the same exclusive
right to his boi>k, chart, map, print, cut, or engraving,
with the benefit of each and all the provisions of this act,
for the security thereof, for such additional period of
time as will, together with the tune which sliall have
elapsed from the first entry of such copyright, make up
the term of twenty-eight years, with the same right to
his widow, child, or children, to renew the copyright, at
the expiration thereof, as is above provided in relation to
copyrights originally secured under this act. And if
such author or authors, inventor, designer, or engraver,
shall not be living at the ])assage of this act, then his or
their heirs, executors and administrators, shall be cniiiled
to the like exclusive enjoyment of said eoj>yright, wiih
the benefit of each and all the provisions of this act for
the security thereof, for the period of twenty-eight years

42 COPYKIGHT LAWS.

ur roacK. aot or 1834, cuap. 157, § 1.

from the fir^t entry of said copyright, with the like privi-
lejje of reiu'wal to tlio witlow, chikl, or chihlren, of
author or authors, designer, inventor, or engraver, as is
proviiled in rehition to copyrights originally secured
under this act : Provided, That this act shall not extend
to any copyright heretofore secured, the tt^rm of which
has already expired.

Approved February 3d, 1831.

ACT OF 1834, CHAPTER 157.
4 Statutes at Large, 728.

[ Thit Act at ill in Force.]

An Act Bupplomcntary to the act to amend the several

acts respecting copyrights.

Section 1. Jic it enacted hij the Senate and House of
Jicpre^ent'itii'ts of' (he United Statts of Ann ri< a in Con-
gresii asseniUid, That all deeds or instruments in writing
for the transfer or assignment ul" copyrights, being proved
or acknowledgeil in sut-h ni.'innc-r as deeds for the convey-
ance of land are retjuin-d by law to bo proved or ac-
knowledged in the same State or district, shall -and may
be recorded in the ollice where the original copyright is
deposited and recorded ; an«i every such deed or instru-
mer)t that shall in any time hereafter be made and exe-
cuted, and wliich shall not be pntved or acknowledged
an<l recorded as aforesiiid, wiihin sixty days aAer its exe-
cution, shall be judged Irau'lulent and void against any
subsequent purchaser or mortgagee for valuable consider-
ation without notice.

ACT OF 1834, CHAP. 157, §§ 1, 2. IN FORCE.

1. An nssigrnmcnt of an interest in a copyrif^lit must be in writinp,
to be valkl and operative; but an ngrcnt'-nt to assign m.iy be by parol.
GouLl V. Bank-; .s Wend.. 5i;5.— N*i;i.s<ix, J. ; N. Y., 1«:!2.

2. An a.s.-<ij;nment of a " copyright" in general terms is to be referred
to what was then in e.xistcnee, and not to any liiturc contin,'ency.
It should not bo by construction extended lieyond the (irst term, \nile.«s
it seems to be so actually meant by the author, and to include a future
contingencv. PicrjtoiU v. Fowle, 2 Wood. &, Min., 43-45. — Woodbl'UY,
J.; Mass.. "l84G.

3. Oiherwisc, if the contract of sale or assig^nmcnt uses language
looking beyond the existing copyrijrht, such as referring to all the in-
terest in the matter, or to the manuscript or book itself, or using sorao
other expression more comprehensive than the word '"copyright."
Ibid , 45.

4. This statute prescribes only the instrument by which they may
be assigned, and the mode of recording, but does not define what in-
terest may be assigned. Roberts v. Myers, 13 Mo. Law Rep., 401. —
Si'UAGCK, J. ; Mass.. ISDO.

.'). There is no sulTieicnt reason for preventing an author conveying
a distinct portion of liis right. Jbid., 401.

6. Where an assignment was of the exclusive right of acting and
reprcseniing a certain drama, vithin the United States except as to
certain cities, for the term of one year, Utld, tliat it was valid under the
statute. Ibid., -100, 401.

7. COKTUA. — The statutes of the United States for the protection
of authors do not, like those for the benefit of inventors, sanction
transfers of limited local proprietorship.-? of exclusive privileges
Keene v. Wheatley, 9 Amer. Law Reg., 4G. — Cadwall.vder, J. ; Pa.,
1860.

8. A writing which is in form a transfer by an author of his exclu-
sive right for a designated ])ortion of tlio United Suites operates at Ino
only as a mere license, and is iueftectual as an assignment. Ibi I., 4t).

9. But in equity, a limited local or other partial assignment, if made
for a valuable consideration, is carried into effect, whether it would ba
effectual in law or not. Ibid., 47.

10. An assignment of a copyright, although not recorded, is still
valid as between the parties, and as to all persons not claiming under
the assignors. Webb v. Powers, 2 Wood, i, Min., 510. — Woodbury, J. ;
Mas-s., 1347.

11. A formal transfer of a copyright by this act is required to bo
proved and recorded as deeds for the conveyance of land, and such
record operates as notice. L.tlle v. Jlall, IS How., 171. — McLean. J.;
Sup. Ct., 18J5.

Section 2. And be it further etiactcd. That the clerk
of the district court shall be entitled to such fees, for per-

44 COrVIlKillT LAWS.

OBSOLETE. ACT Of 1846, CHAP. 118, § 10.

forminj; the services herein authorized and required, as
he i.s entitled to for performing like services under e.\istr
injj: laws of the United States.
Aj)proved June 30lh, 1834.

ACT OF 1840, CHAPTER 178.
9 Statutks at Lai{i;e, 100.

[ObtoUte: RfpeaUd by Act o/1859, § 6.]

Extract from an Act to establish the "Smithsonian Insti-
tution, for the Increase and Ditfusion of Kiiowledi^o
among Men.''

Section 10. Andl» it /'(rf/u r mticfcl, Th.\i the author
or proprietor of any book, map, chart, nuisiral coinpo;-i-
tion, print, cut, or engraving, ft)r which a copyright shall
be sccurc<l under the existing acts of Ct)ngress, or those
whieh shall hereafter be enacted respecting copyrights^
^hall, within three nwmths from the publication of said
book, maj), chart, musical conipositi<»n, print, cut, or en-
graving, deliver, or cause to be delivered, one copy of
the same to the librarian of the Smithsoniai: IiiHtilution,
and one copy to the lihrarian of Congress Library, for
the UJ»e of the said libraries.
Approved August 10, 1H46.

1 TliiH n<H <li<l iK.t tnako tho d livery or oopioH of n work to tho
lihrarian of tlio SmilhMHiiaii IiiHliliilion, nnd to tlio lihrari.tn of tho
C<>\mrvhH IJlirur,, n ijror<qiii-iU< U) a tillo to a eojiyriirlil for tlu- work.
Joliif V. Jiiinm, l HUt-df, O'JO -0J2.— Nelsos, J.; N. Y, ISiO.

2. The duty waH oiijoiiK-d only upon lho>«« who )i:iv<» alrrmly ac-
quired tlio riKht, Bod uo foffviluro wtui doclarud lu comc of a iioa-com-
plioooc. Ibid^ 021.

COPYRIGni LAWS. 45

ACT OP 1856, CIIAP. 169. IX FOnCE.

ACT OF 185G, CHAPTER 169.
11 Statutes at Large, 138.

[TJiis Act still in Force]

An Act supplemental to an act entitled "An act to
amend the several act3 respecting copyright," ap-
proved February third, eighteen hundred and thirty-
one.

JBe it enacted by the Senate and House of Representa-
tives of the United States of America in Congress as-
sembled: Any copyright hereafter granted under the
laws of the United Stales to the author or proprietor of
any dramatic composition, designed or suited fur public
representation, shall be deemed and taken to confer upon
the said author or proprietor, his heirs or assigns, along
with the sole right to print and jniblish the said composi-
tion, the sole right also to act, perform or represent the
same, or cause it to be acted, performed or represented,
on any stage or public place, during the whole period for
which the cop\ riglit is obtained ; and any manager, actor,
or other person acting, performing or representing the
said composition, without or against the consent of the
said author or proprietor, his heirs or assigns, shall be
liable for damages, to be sued for and recovered by action
on the case or other equivalent remedy, with costs of suit
in any court of the United States, such damages in all
cases to be rated and assessed at such sum not less than
one hundred dollars for the first, and fifty dollars for
every subsequent performance, as to the court having
cognizance thereof shall appear to be just :

4« COPYBICnT LAWS.

Uf rOBCB. ACT or 186G, CUAP. 1G9.

Provhhd ni'rerl/iflcss, Th:it nolhing luTciii enacted
BhriU impair any right to act, pcMlbrni or reprt-si'iit a dra-
matic compbsiiion as aforesaid, -which right may have
been acquired, or shall in future be acquired by any mana-
ger, actor or other person previous to the securing of the
coj)yright for the said composition, or to restrict in any
way the right of such author to process in equity in any
court of the United States for the better and further en-
forcement of his rights.

Approved August 18th, ISftG.

1. Tlic act of ISjG was passed to give to the nuthors of dramatic
compositions the oxchisivc rijjht of nctin*; and rcprct^cnlintj, which tlicj
did not enjoy under the previous sUitutes. Robtrts v. JJiyrra, 13 Mo.
Law Kep., 31)7. — SphaOLE, J.; Mass., ISiJO.

2. It assumes the doctrine that rcpreHctitation is not publication.
Tlio prior acta secured to authors the exclusive rijjlit of printiufj and
publieation ; and it was only lieoiuso publicalion did not embrace ail-
ing or representatiou that this act was passed, superadding tliat oiclu-
■ivo right to those prcvimisly enjoyed. Jbid., .T.i7.

3. Tlie previous acting or npresonting a play will not deprive tho
author of the right to afterward take out a copyright. Jbid, 3ti7.

4. .\n assignee of the exclusive right of acting and representing a
drama in ccrtitiu places, may maintain an action in his own name, even
■fUT a rcpnsi'ntation by him, for an injunction to j)revent it.s being
represented by another within surh places. Ibid, 400, -lol.

6. And MK-li uclioii mar bo maintaini-il although tho author or as-
■igne« hns only tilud his titlo-i>ag<>, and has not publi.shed liie work or
phiy. Jbul., ioi. (Co.sTlu, ;w><. H.)

0. A l<>gi!dnlivo eiiacimcnt securing gronernlly to literary proprietors
a copyright for n linutod |iori(Hl, but cunlaining no sp<>ci(d provision as
to Ihcatrical repr«<ieiitation, does not, in tlio case of u dramatic lit^'rary
C'mp'jsiliott, ui(-lu<lc the sole right of n-prrsenting it. Krene v. Wheat-
ley. 'J Amer Law lli-g.. Ai. — f) vkwai.I, \I)K.ii, .1.; I'a.. lK(;o.

7. Tho only ml which iifr.>rds reilress for unauthoriwd theatriral
rcpre«ent.iliun< ia tin- a/t of IHih August, iH.'ii;; but this only applies
U» cjucf in which copyright is effectually Hccured under tho act of 1831.
Jbid., 4'..

8. But under this a^'t, an assignee of a dramatic composition c.innot
maintain an anion for it^ unauthori/.cd r<pres -ntation by others, unless
ho has performed nU the acts rerpiircd by l.nw to secure a copyright,
iiicludin){ the dopo.sit of a ;>f in<c<i co|iy. Ibid.., \tt, 40.

ACT OF 1859, CHAP. 22, §§ 6, 8. n rOBCE.

ACT OF 1859, CHAPTER 22.
11 Statutes at Large, 380.

[This Act still in Force.]

Extract from an Act entitled, "An act for keeping and

distributing all public documents."

Section 6. [Repealing act of 1846, § 10.] And be it
further enacted, That the tenth section of an act entitled,
"An act to establish the Smithsonian Institution for the
increase and diffusion of knowledge among men," ap-
proved August 10th, 184G, is hereby repealed.

Section 8. And be it further enacted. That all books,
maps, charts, and other publications of every nature
whatever, heretofore dejiosited in the Department of
State, according to the laws regulating copyrights, to-
gether with all the records of the Department of State,
in regard to the same, shall be removed to, and be under
the control of the Di-partment of the Interior, which is
liereby charged with all the duties connected with the
same, and with all matters pertaining to copyright, in
the same manner and to the same extent that the Depart-
ment of State is now charged with the same ; and here-
after all such publications of every nature whatever shall,
under present laws and regulations, be left with and kept
by him.

Approved February 5th, 1859.

48 COPYRIGUT LAWS.

a roBCK. ACT or 1861, chap. 37.

ACT OF 1801, CHAPTER 37.

12 Statutes at Large, 130.

[This Act still in Force.]

An Act to cxten<l the right of appeal from the deri-^ions

of circuit courts to thu Supnine Court of the United

States.

Be it enacted b>/ the iiinate and House of Jirpresrnt-
atives of the United States of Anurica in Comjnss
assembled. That from all jiKlgments and decrees of any
circuit court rendered in any art ion, suit, controversy,
or case, at law or in equity, arising under any law of the
United States granting or confirming authors the ex-
clusive right to their respective writings, or to inventors
the exclusive right to their inventions or discoveries, a
writ of error or appeal, as the c:isc may require, shall lie,
at the instance of either party, to the Supreme Court of
the United Slates, in the same manner and under tho
same circumstances as is now provided by law in other
judgments an<l decrees of such circuit courts, without
regard to the sum or value in controversy in the action.
Approved February 18th, 18(31.

ACT OF 1805, CHAI'TKK 120.

13 Stati:tks at Laih;k, fi40.

[Thin Act it ill in Forc^.]

An Act sup[ilrmenl:il to jiti act entitle<l " An net to amend
the Hcvcral acts respecting copyright," approve«l Feb-
ruary 3d, 1«.'«1, nnd to the acts in addition thereto and
vnendmcnt thereof.

ACT OP 18G5, CHAP. 126, §§ 1-4. nf roECE.

Section 1. Be it cnnotcd by the Senate and House of
Representatives of t fie United States of America in Con-
gress assembled, That the provisions of said acts shall ex-
tend to and include photographs and negatives thereof
whioli shall hereafter be made, and shall inure to the
benefit of the authors of the same, in the same manner
and to the same extent, and upon the same conditions, as
to the authors of prints and engravings.

Section' 2. And be it further enacted, That a printed
copy of every book, pamphlet, map, chart, musical com-
position, print, engraving, or photograph, for which a
copyright shall be secured under said acts, shall be trans-
mitted free of postage or other expense, by the author or
proprietor thereof, within one month of the date of publi-
cation, to the Library of Congress, at Washington, for the
use of said library, and the Librarian of Congress is here-
by required to give a receipt in writing for the same.

Section 3. And be it further enacted, Tliat if any
proprietor of a book, pamphlet, map, chart, musical
composition, print, engraving, or photograph, for which
a coppight shall be secured as aforesaid, shall neglect
to deUver the same, pursuant to the requirements of this
act, it shall be the duty of the Librarian of Congress to
make demand thereof in writing at any time within
twelve months after the publication thereof ; and in
default of a delivery thereof within one month after the
demand shall have been made, the right of exclusive
publication secured to such proprietor under the acts of
Congress respecting copyright shall be forfeited.

Section 4. And be it further enacted, That in the
construction of this act the word " book " shall be con-
strued to mean every volume and part of a volume,
3

CO COPYRIGHT LAWS.

n< rOBCB. AOT OP 1865, CHAP. 126, § 4.

top:cthcr with all mapf, prints, or otKcr enpravings
beloii'^ing thereto ; and sliall inchide a copy of any
second or subseqrtent edition whicli shall be publi>hcd
with any additioi\,s, whether the first edition of such
book shall have been published before or after the pass-
ing of this act : J*rovi(l<:d^ hoicever, That it shall not be
requisite to deliver to the said library any copy of the
second or any subsequent edition of any book, unless
the same shall contain additions as aforesaid, nor of any
book which is not the subject of coj)yright.
Approved March 3d, 18C5.

FORMS

UNDER THE COPYRIGHT ACTS.

1. Agreemext to sell Mantscript axd Copyright of book.

2. Agrkeue.nt to enlarge a second edition or A book.

3. Assignment of Copyright for original term.

4. Assignment of Copyright for original and renewed terms.
6. License to print on'e edition of a book.

6. Assignment of right to perform Dramatic Composition for
spkcified tlue and places.

1. Agreement to sell the Manuscript and Copt-
rigut of a book.

Agreement, made and entered into this first day of .Tanuarv,
1860, by and between James Smith, of Pouf^hkeepsie, State of
New York, of tlie one i)art, and Charles Scribner, of New York
City. State aforesaid, of the otlier part:

Whereas, the said James Smitii lias composed or compiled a
■work called the "Flowers of Poesy,"

Now this af^reement witnesseth tliat the said party of the first
part, for and in consideration of thesnm of five hundred dollars,
to be paid as hereinafter mentioned, and otiier good and valu-
able considerations herein named, has agreed to sell, and does
hereby sell, to the said ])arty of the second part, his heirs, ex-
ecutors, administrators, and assigns, the manuscript copy of the
said book, including a full and complete Index thereto. And
the said party of the first part also agrees to e.xainine and cor-
rect the proof-sheets of said work as they shall be furnished by
said party of the second part.

The said party of the second part, for himself his lieirs, exec-
utors, adnuuistrators, and a.ssigns, agrees to pay to the said
party of the first Jfurt, his executors, administrators, or assigns,
the said sum of five hundred dollars in manner following: One
hundred dollars on the execution of this contract ; two hundred
dollars when the Index shall be ready for the printer ; and tho

56 FORMS UNDER THE COPYRIGHT ACTS.

AOREEUENT TO ENLARGE A SECOND EDITION OF A BOOK.

balance when the proof-sheets shall all have been examined and
corret-ted nnd fiirnij^hod to tlie printer. 8aiil party of the sec-
ond i)art also njirc-es to liirnisli tlio whole uf said proof-^ijiects to
said j)arty of the Hrst part within three inontlis after the deliv-
ery of tlii' manuscript; and further agrees to furnish and deliver
to" said party of the tirst part, free of cost, fifteen bound co\nea
of said wuric within three months after lie, said party of the tirst
part, shall have comi»leted his labors on said work.

Tlie said jiarty of the seeond part, his heirs and assigns, are
to have the exclusive rijrbt to take out and own the copyri^'ht
of such work, and any renewals of such copyright authorized
by. law.

It is further aprccd, that in caf»e said book shall not make
three hundred pa^'es of the size and style of the pages of a work
known as "Pearls of Poetry," then and in such case said party
of the first part i^ to receive, and the said party of the second
part is to ]iay, a sum bearint? sudi i)roportion to the sum of five
hundred dollars as the number of paj:es furnished bears to three
hundred ; but in ca.se the said work shall contain more than
three hundred pages, the sum to bo paid therefor sliall not be
increased.

In witness whereof, the said parties have hereunto set their

hands and seals, the day an«l year tirst above written.
Sealed and delivered > JAMICS SMITH. [l. 8.]

in presence of \ CUAKLES SCiilBNER. [l. 8.)

Jons Smith,

Jamej liuow.v. : «><:«" :

: l.liT. UUT.

2. AcnEEMEXT TO EXLAIIGE A SeCONU Ei>ITIOX OF ▲
UOUK, AND COUKECT mOOF OF TIIK bAME.

This npreemcnt, made the eighth day of .January, ISOrt, by
and between James yuiith. of Poughkeepsie, Now York, of the
firnt i>art, and ChBries Scribiier, of New York City, of the sec-
ond part, witneH-.<!th :

That tb«' H.'iiil Jame* Smith, for and in consideration of tliree
hundred dolbiri. and other consideration herein named, agrees
to examine, correct, and eidargo tlie work known as "Flowers
of Po««y." to furnith additional manuscript matter for the sec-
ond edition of the work, and to c.nlarije the Index and make it
full aud cuinplcto.

FORMS UNDER THE COPYRIGHT ACT3. 57

ASSIQXMENT OF COPYRIGHT FOU OEIGIXAL TERM.

It is understood and ajjreed that tlie new edition of the work
shall be of the same sized pape as the present work, and contain
an e<inal amount of matter t)n each pajie, and that the additional
matter furnished shall enlarge the work not less than one hun-
dred pages, and shall be furnished to the said Charles Scribner
at not less than twenty pages per day (one hundred and twenty
pages per week), commencinc on the twentieth instant.

And the said James Smith is to examine and to correct the
proof-sheets as fast as they shall be furnished, and to complete
the Index as soon as may be, after the whole signatures of the
text shall be ready for him for that purpose.

And the said Charles Scribner, on his part, agrees to print
the said work as the matter shall bo furnished, to furnish the
said James Smith a copy of the work, by signatures, as each
signature shall be worked otf, for the purpose of arranging the
Index ; to furnish the said James Smith fifty bound copies of the
work, as soon as they can be conveniently finished, and to pay
the said James Smith the sum of three hundred dollars on the
day the last proof-sheet is corrected for the press.

The said Charles Scribner is to take out and secure a copy-
right of said work ; and tiie said James Smith, on the comple-
tion of the work, i-; to execute and deliver to the said Charles
Scribner, his heirs and assigns, forever, an assignment of all his
right and title and interest in and to the said work.

iu witness whereof, the said parties liave hereunto set their
Lauds and seals, the day and year above written.

JAMES SMITH. [l. s.]

In presence of CHARLES SCRIBNER. [i,. a.]

Joiix Smith,
James Brown. : 5 ce5t

: INT. RKV. 1^
: STAMP.

3. ASSIGXMENT OF COPTBIGHT FOR ORIGIX.U. TERM.

Indenture, made this first day of January, 1860, between
James Smith, of Poughkeepsie, State of New York, of the one
part, and Charles Scribner, of the City of New York, State
aforesaid, of the other part.

W/iere(7s, the said James Smith has written and compiled a
t)ook, entitled " Flowers of Poesy," for which he took out copy-
right in the Southern District of New York, on the first day of
August, A. D. 1859 :
3*

5S FORMS UNDER THE COPYRIGHT ACTS.

ASSIOKUEKT OF COPTRIQUT FOB ORIQINAL TXRIC.

Now this iudenture witnessetli, that the said James Smith,
for and in consideration of tlie sum of one thousand dollars, to
him in liand paid by the said Ciiarlos Scribiior. the receipt
whereof is hereby acknowledyed. lias bar}:ained, sold, and as-
pi;.'nfd, and by these presents does barpiin, sell, and assign,
unto tlie said Ciiarles Scribiier, all the said book, and all liis
cupyrigiit, title, interest, pn>|terty, claim, and demand of, in,
aii<l to the same, to have and to hold tlie said book, copyright,
and all the profit, benelit, ami advantage that shall or niay arise,
by and from jirinting. reprinting, i)ui>Iishing. and vending the
same: Provided, nevertheless, and these presents are upon tiiis
express condition, that the number of copies to be printed ou
the first, and each and every other edition or imi)ression of the
said book, sliall not exceed one thousand ; and that the said
Charles Scribner sliall and will pay unto the said James Smith
the further sum and sums of one hundred dollars for, at, and
upon the reprinting or making a second, and each and every
other future and further edition or impression that shall or may
be made of the said book, f«>r and towards a further reward and
batisfa<-tion to the said James Sinilli, for his writing and com-
Itiling the same. The said itaynieiits sliall be made bet'ore the
publication of the said several impressions or editions (after the
lirst) and sale of the wime, or any part thereof, by the said
Charles Scribner, or by any otlicr person or jiersons, by, for, or
under him. And the said Charles Scribner doth covenant,
])romi>»e, and agree, to and witli the said James Smitli, that he,
tiio .said Cliarles Scribner, shall and will pay, or cause to be
paid, to the said James Smith, the said respective sum and sums
of one hundred dollars, at and u|>on tiie reprinting, and before
the i)nblication and sale of the said second and every other
future and further edition and iinpression that shall and may bo
made of the Haiti book, according to the [irovi.so aforesaitl, and
the true intent and tneaning of these presents. Ami to the ful-
filment of the covenants herein contained, the parties bind tiieir
rctpcrtive executors, administrators, and assign<», a.H well as
theimwlveM.

Ill witnetid %vhereof, the Haid parties have hereunto set tlieir

hands and heals, tiio day ami year first above written.
Sealed and delivered f J.VMES SMITH. [l. b.I

iu presence of ( CHARLES SCRIBNER. [l. 8.]

Joiis Smith,

J A MM Bitow.v.

FORMS UNDEPw THE COPYRIGHT ACTS. 69

▲ssigkmekt of copyright fou original and renewed terms.

State of New York, \

City and Colxty of New York. ) '*'

On tliis first day of January, 1860, personally appeared James

Siiiitli and Cliarles Scribner, to nie known to be tlie individnals

descrilyfd in and who executed the fore^j^oing instruin-enl, and

severally acknowledi;cd that they executed the same lor tlio

l)Uri)oses therein mentioned.

JAMES BROWN",

: 5 CKNT : Notary Public.

: INT. REV. :

BTAMI*.

4. AssiGNME>ri' OF Copyright fou original and

REXEWED TERMS.

Indenture, made this first day of May, 1864, between Jainen
Smith, of Poui5hkoep.sie, State of New York, of the one part,
and Cliarles S';ribner. of the City and State of New York.

Whereas, tiie said James Smith has written and composed a
book, entitled 'Tlovers of Poesy,''

Now this indenture witnesseth, that the said James Smith,
for and in consideration of tiie sum of five luindred dollars, to
him in hand paid by said Charles Scribner. the receipt of which
is hereby acknowledged, has bargained, sold, and as.signed, and
by these presents does bargain, .>iell, and assign unto the said
Charles Scribner, his heirs, executors, administrators, and as-
signs, all the said book, and the manuscript thereof, and all his
riglit, title, and interest, property, claim, and demand, of ev'.-ry
kind and nature whatsoever, of, in, and to the same, and in any
and all copyrights, and any and all renewals thereof, which may
or can be had. or seoureu, or taken, in respect to said book or
manuscript, under and by virtue of any acts of Congress, with
any and all profit, benefit, and advantage that shall or may
arise by or from printing, publishing, or vending the same,
during the original or renewed terms of any sucli copyright.
To have and to hold the same to the said Charles Scribner, his
heirs, executors, administrators, and assigns forever.

And the said James Smith agrees to examine and correct the
proof-sheets of said work, as fast as they sliall be furnished, and
to make and complete a full and correct Index theretor. as soon
as may be after all the signatures of the text shall be furnished
for that purpose.

60 FORMS UN'DER THE COPYRIGHT ACTS.

LICENSE TO PRINT ONE EDITION OP A BOOK.

And the said Charlcf Scribner, for himself, his heirs, execu-
tors, administrators, and assigns, covenants and atfroes to fiir-
nisli and dclivL-r, free of cost, to said James Smitli. twenty-fivo
hound copies of said work, within three iiiuDths after tlie said
Index sliall or may he completed.

In witness whereof, the said parties have hereunto set their
hands and seals, tlie day and year first above written.
Scaled and delivered ) JAMES SMITH. [us.]

in presence of \ CiiAKLES SCKIBNER. [l. 8.]

John Dok,
RiciiAUD Roe.

Acknowledgment, as in No. 3.

5. License to rRi.vT one edition of a book.

Indenture, made this first day of January, ISfiO, by and be-
tween James Smitli, of I'oup'ikeepsie. New York, of the first
p&n, and Charles Scribner, of the City of New York, Slate
ttforesiiid, of the second part.

Wftfreaa, tlie said James Smith has in preparation a work, to
be called the " Flowers of Poesy,"

Now this itidenture wittiesseth, that the said James Smith,
foi the consideration hereinafter expressed, does hereby author-
ize and allow the said Charles Scribner to j)rint, publish, and
»ell an edition of one thousaml copies of said work, the said
James .Smith hereby rescrvini^ to himself the general cojiyrij^ht
iu said work.

And the said James Smith, in consideration of the paytnents
licreina(\er nj^reed and covenanted to be made by said Charles
Scribner, doth hereby covenant and nRree, to and with the said
Charles .Seribmr, that ho will furnish to the f>rinter, to bo em-
ployed by him, fair copy of the said work, and will superintend
the printiiiir, and correct the i)roofs thereof, in the usual man-
ner; and that he will take out of tin- clerk's office of the Dis-
trict Court of the Fnited States for the Southern District of
New York the usual ovidonees of copyrijfht, for the protection
of said work, and will not authori/.e any person to print, pub-
lish, or Hell, and will not print, publish, or sell himself, any
other copies until the whole of »ai<l one thousand copies have
l)oen diHpos<><l of by Raid ("harics Scribner; l*rovi<l«(l, said one
thousand copies are sold within tlvu years from the date hereof.

FORMS LNDKli THE COrYRIGni ACTS. CI

ASSIGNMENT OP RIGHT TO PERFORM DRAMATIC COMPOSITION.

And the saiil Charles Scribnor, in consideration of the afore-
said autliority and a^^ri-eniont, does liereby covenant and agree,
to and with said Janits Sniitli, that he will pay him, the said
James Sniitii, the sum of twenty cents for eacli and every copy
of the said one thousand copies, i)ayahle semi-annually, as fast
as the said copies shall be sold or otherwise disposed oi] he
rendering to the said James Smith an account of sales of said
work, at the expiration of si.x months from the day of the first
publication, until the whole shall be sold, and that lie will
also pive to the said James Smith fifty copies of said work,
handsomely bound, free of charge, as soon as conveniently may
be done, after the manuscript copy has been furnished by the
said James Smith.

And the said Charles Scribner, in consideration, also, of tho
aforesaid authority and agreement, does further covenant and
agree, to and with said James Smith, that he will not print,
publish, or sell any more than tiie said one thousand coines, un-
til autliorized by said James Smitli, or his legal representatives,
in writing; it being understo(»d that the license herein contained
extends only to one edition of the number above specified.
In witness whereof, the said parties have hereunto set their

hands and seals, the day and year first above written.
Sealed and delivered / JAMES SMITH. [l. s.]

in presence of ( CUAKLES SCKIBNER. [l. s.j

John Smitu,

Ja.mes Buown.

Acknowledgment, as in No. 3.

6. Assignment of right to perform Dramatic Com-
position FOR specified TIME AND PLACES.

Know all men by these presents : That for and in considera-
tion of the sum of one thousand dollars, to be paid as herein-
after mentioned, I, Dion Hourcii'ault, of the City and County of
New York, have sold, assigned, transferred and set over, and by
these presents do hereby sell, assign, transt'er and set over, unto
George Roberts, of the State of Connecticut, for the term of
one year I'roin the date hereof, the right, privilege, and license
of acting, performing and reprasenting. ami of permitting to be
acted, performed and represented, my play in five acts entitled

62 FORMS UNDEU THE COPYRIGHT ACTS.

ASSIGNIIBNT OF RIOHT TO PERFOIUI DRAMATIC OOUPOSITION.

'The Octoroon, or Life in Lonisijina," in all cities in the United
States and Ciinridas. exccptinp, however, the cities of Boston,
New York, IMiiliitleli>hi:i, Charleston. Mobile, and New C)rlean3.
To have and to ln-ld the same to said tleor^jo Roberts, his exec-
utors and administrators, together witli all the rights and privi-
hges granted and secured to me under the acts of Congress for
the i>rotection of my cojiyright of said play for the j)eriod and
places aforesaid. Said sum of one thousand dollars to be paid
as follows, to wit : six huiulrod and tifty dollars at the date of
the-^*.- presents and delivery of the manuscript of said pluy to
said Roberts; the further sum of one hundred and tifty dollars
on the fifteenth day of February next, and the further sum of
two hundred dollars on the thirtieth day of March next. But
it is nevertheless expressly understood and agreed, inasmuch as
I am in negotiation with the managers of the Cincinnati Theatre
for the sale of the license to perform and represent sai<l play in
Buch City of Cincinnati, that 1 am at lil)erty to conclude said
Bale, and in such event I am to credit the amounts I shall re-
ceive tiierefor towards the two payments above mentioned to be
made on the fifteenth day of February and thirtieth day of
March next by said Roberts to me.

In witness whereof, I have hereunto set my liand and seal,
this thirtieth day of December, in the year one thousand eight
hundred an<l fiftv-nino.

In presence of DION BOURCICAULT. [l. b.]

L. RlTKIV,
Wm. DtXEY.

Acknowledgment, as in No. 3.

This ajisigntnoDt held valid in Roberta v. Meyers, 13 Ma Law Bop.,
396— SruAOCC, J.; Mass., 18C0.

INDEX

COPTKIGIIT LAWS.

Bcferences thus (*) ar« tu tections ; otherwise, to note*.

ACTIO>fS IM RESPECT TO COPYUIGIITS- '■^<^" *"•

U. S. C ir. Courts liavc original cognizance of 24

redress or relief not extended to new cases 25 3

injunctions allowed in equity suit? 24

equity jurisdiction conferred solely by act of 1819. . . 25 1

equity jurisdiction does not extend to forfeitures. ... 25 2

when injunction not asked for, redress is at law. ... 25 8

citizenship of parties immaterial 25 6

jurisdiction of State courts, when not taken away. . . 25 5

general issue pleadable in 39 *10

special matter may be given in evidence under 3D *10

full costs allowed in 40 *12

for forfeitures and penalties, when to be brought ... 40 *13

appeal;:, or writ of error in 48

for printing copy of book 33 *6

forfeiture and penalty in such case 34 *6

penalty, extent of, recoverable 35 2, 3

penalty, when not incurred 35 c 4

in what court such action brought 34 *6

INDEX TO OBSOLETE LAWS.

Actions in respect to Copyrights —

for printing map, ic, without consent 16 *2

recovery therein and for whose benefit 1 G *-

wliere and when to be brought 16 *2

for printing manuscript without consent 19 *G

damages thereof, and where recoverable 19 *6

for engraving print, Ic, without consent 22 *3

forfeiture in such case, and for whose benefit 23 *3

where may be recovered '23 *3

for marking books, Ac, as copyrighted when not so. 23 *4

penalty therefor, and who entitled to 23 *4

G4 IN'DEX TO COPYRIGnT LAWS.

BXrERE.VCBS THUS (*) ARE TO 8BCTI0KS ; OTUEBWISE, TO NOTES.

Actions in respect to CoPYRiouTS^-continiied. f*oi bw.

on the case, projxr form to recover damages 35 c \

for engraving map, 4c 36 *i

forfeiture and penalty in such cases 36 *7

penalty on each sheet sold or ofl'cred for sale 37 6 1

penalty on each sheet printed for sale 37 6 4

penally recoverable for infractions within two years. 37 2

in what court to be brought 36 *1

for printing manuscript without consent 38 ♦S

damages in such ctise 38 *0

recoverable in action on the ca.se 38 *9

in what court to bo brought 33 •O

redress in such case at common law 38 3

relief may also l^e had in etpiity .'{8 4

whole 6f manuscript need not be printed 38 9

for falsely marking book a.s copyrighted 3y •! 1

penally for so doing 39 •ll

in what c»»urt n-eoverablc 40 *11

for performing dramatic composilion 45

damages for so doing 45

in what court recoverable 15

assignee may m.iinUiin such action 46 4

maintainable when title-page dcjKjsitod 46 6

maintainaliio when title-page dejio.Mitcd 33 9

maintainable only after copyright complete 46 8

AlTEAIJi TO Sll'RKUK (.'OUllT—

he from all judgments and decrees, without regard to

amount in controversy 48

ASSIGNME.VT or ( OI'VIUOIITK —

must bo in writing 42 *!

agreement to assign need not be 43 1

must be proved and acknowledged 42 *!

to l>o recorded, where and when 43 'l

INDKX TO OBSOLKTK LAWS.

Actions in rkspkct to rorTRicnrra —

where may be recf)vored 23 *4

for forfeitnrei", when to be commeDctHl 23 *4

general Ihsuc plendable in 19 ^7

Bpi-aU or wnt of error in 24

ArPKALH T) StPKKMK CotRT —

from judgnienta and decrees of Circuit Courts 24

Book, CopTKioiiT or —

who may 8c<]iiir© 14 •!

how acquijcd 10 '3

INDEX TO COPYRIGHT LAWS. C5

RKFERENCaa THUS (*) ARE TO SECTIONS ; OTHERWISE, TO NOTES.

INDEX TO OBSOLETE LAWS.

Book, Copyright of —

how acquired 2*^

penalty lor violating copyright of ,

BEr.

AsssiONMENT OP CoPYRiOHTS — Continued. ^^°^

failure to record, elVect of 42 i

not recorded, valid between the parties 4:1 10

fees for reooniing 4.1 2

generally has relerence to first term 43 2

when will cover renewal term 43 3

a portion of the oopyriglu may be assigned 43 4. 5

query? whether this can bo'done 43 7, 8

Author —

who is • 27 5

citizen or resident, may have copyright 26 1

onlj' such can have copyright 27 3

a resident must be a permanent resident 26 1

can have copyright only under laws of Congress. ... 29 2, 4

has at common law no exclusive right 29 3

rights of, before and after publication 28 3

only right to multiply copies 29 4, 6

his riglit not an odious monopoly 28 1

when right of renewal secured to 29

conditions of renewal 29 2,3

Book —

who may have copyright of 26 1

what is, within the statute 27 7

what is, under the statute of 1SG5 49 *t

newspaper or price-current is not 27 8

a label is not 27 9

does not include a translation of 35 2

" copy of,' imports a copy of the entire book 35 c 5

•1
16 *2

Clerk of District Cocrt —

to record title of book 1 ' •*

form of such record 17 3

fee for record, and copies of same 1'

CoxGRESS Library —

copy of book to be sent to 44 10

Buch deposit not a prerequisite to copyright 44 1

C8 INDEX TO COPYRIGHT LAWS.

JtZFERENXES THUS (*) ARB TO SECTIOXS ; OTHEBTHSE, TO NOTES.

Charts, see .Maps.

CiRciir Courts, U. S., seo Courts,

Ci.EIlK OF DisTIMCT COURT 'AC"

title of book, Ac, to be deposited with 31

to record same 31

fee for same, and copies thereof 31

copy of book to be deposited with 31

to transmit records of copyright and books to Secre-
tary of Slate 32 *4

records from prima facie evidence of deposit 33 10

COXGRESS LlUKAKY —

copy of Ijook, Ac, to be transmitted to 49 *'l

penally for not so doinj; 49 *3

copy of second or subsequent edition, when not re-
quired 49 *4

Coptrioht of Books, Maps, Ac. —

right to, founded on statute law 29 2, 4

is uot n mouo|)oly in an odious sense 1!8 1

is a riiflit t<) iiiuliiply copies 28-9 2, 6

citizens and residents, and their rcprcscntatiTC, may

acquire 2G •!

temporary resident cannot take 26 1

legal assignee, through trustee, can take 26 2

assignee of non-rfsident alien cannot 27 l

printed copy of title to be do|>o3ited 31 *l

title to 1>0 recorded by clerk 31 *4

title must be dejKJsitcd before j)iiblication 33 13,1 1

numl)or of volumes no part of till© 33 8

copy of book to be delivered to clerk 31 *\

Copy of book U> be Bent to Congress library 49 *i

penally f<>r not so di>ing 49 *.\

notice of copyright to be published in book 32 *i

INDKX TO obsolp:te L.^WS.

COKORr.5(8 I.IDRART —

no lorfeiiuro for non-deposit 41 2

repeal of act requiring some 47 *0

CoPTRiGiiT or Hooks, Maps. Ac. —

who rauy m-i-un- 11 *1

title to bo recorded 17 *2

copy roe«>rd lo Ih> published 17 *3

copy nK»rd t-i l»o inserted in book 20 •!

c«'py of book to l>o depo»ited l'> *3

for what term bOtiurcd 14 *1

INDEX TO COPYRIGHT LAWS. 67

REFEBEXCES THUS (*) ABE TO SECTIONS ; OTHERWISE, TO NOTES.

CoPTRioHT OF Books, Maps, &c. — continued. •'■^o* «'•

insertion of notice in tirst volume suQioicnt 33 6

mistake in such notice fatal 33 11,12

original term of twenty-eight years 26 *1

term may be extended fourteen years 30 *2

how renewal elTocted, and when can be 30 *2

record of renewal to be publisiicd 30 *•?

renewal primarily for author and his family 30 1

when assignee entitled to 30 4

renewal is a new interest 30 6

in books, maps, charts, ic 26 ♦I

in dramatic compositions 45

in photographs and negatives of 49 •!

newspaper or label not subject of 27 8, 9

judicial decisions not subject of 28 17, 18

plan of a work, when subject of, when not 28 20, 2 1

Costs —

in actions as to copyrights 40 12

Courts — Supreme Court United States —

appeals or writ of error to, without regard to sum in

controversy 43

Courts — Circuit Court United States —

have original cognizance of actions as to copyrights. 24
jurisdiction of, does not depend on citizenship of

parties 25 6

jurisdiction of, when ousts that of State courts 25 6

no now redress or rcUef given by act of 1S19 25 3

may grant injimctions for violations of copyrights . . 24
may grant injunctions to restrain publication of manu-
script 38 *9

equitable jurisdiction of, does not extend to penalties

and forfeitures 25 2

if account only asked, remedy at law 25 8

INDEX TO OBSOLETE LAWS.

CoPTRiGHT OP Books, iL\.PS, &c. —

term may be extended 15 *l

renewal term, how secured, and for how long. . . ». . 15 *1

Fees —

for recording title of book 17 *3

for copy of record of samo 17

Forfeitures —

of books, *c., on sale in violation of copyright 16 *3

for every sheet in possession of oQondor 16 '2

68 INDEX TO OOPYRICnT LAWS.

RETERSKCBS THUS (*) ASK TO BKCTI0K8 ; OTUE&WISE, TO NOTES.

Department of Interior — i"**"! *«'•

books and publications to be under control of 47 *3

charged with duties of Departmcut of Slate, as to

copyriglits 47 *S

Dbamatio Oomi-ositioxs —

acting of, witliout consent, prohibited 45 •!

penalty for acting or rojjrescnting same 45 *1

right of acting, when not impaired 46 •!

prior to ISjC, author of, had no exclusive right to ict 46 1

representation w;is not publication 4C 2

acting, does not destroy right to take copyright 46 3

assignee of right to act. may restrain others 46 4

and though only title has been deposited 46 6

but contra as to this last position 46 8

act of 1856 alone gives redress for ropresoutiug. ... 46 7

Engravings, boo Phints.

Eqcitable jfnisiJicTioN as to Copvrights —

ctMiferred by act of 1819 24 1

where injunction not prayed, doe.s not attach 25 8

does not extend to ailjudication of forfeitures 2 J 2

wlien injunctions may issue as to copyriglits 24 '1

wlion injunctions may issue ns to manuscripts 38 *9

ExTE.ssiu.v or (.'opviuuuia soo Klnkwau.

PlEB—

for rooordiog titles of books, 4c. 31 ^4

INDEX TO OBSOLETK LAWS.
FoarinTuuEs —

of plal«s, of map\ prints, Aa 22 ^3

for every print, Ao, exposed for sale 22 *3

GEVER4I, IsflfK —

pl»»a<Ubl<' ill suits as to copyrights 19 *7

HjHxJal mutter mar be given iu evidence under 19 '7

Import ATiox or Boorh, 4c.—

when viol-'Ulon of copyright 16 •S

when permitted 1 1* 5

of prints, when forbidden 22 "3

INDEX TO COPYRIGni LAWS. 69

BEFBBEKCES THCS (*) ARE TO SKCTIOKS ; OTHERWISE, TO NOTES.

. m,

Fees — cmtimied. tage B.tr.

for copy of such record 31 * t

for rccx>rding assignments of copyrights 43 *2

FOREITUIIKS U.NUKR COPYRKiHT ACTS —

of books on sale in Tiolatioii of copyright 34 *6

for every sheet sold or held for sale 34 *G

of plates of maps, ic, sold in violation of copyright. 35 *7

for every map, &c., ofl'ered for sale 33 *7

Gkxeral Issl-e —

pleadable in all suits under copyrifrht acts 39 *10

special matter may be given iu evidence under 39 *10

IltPORTATION' OF BoOKS, &C. —

of books, when violation of copyright 34 *6

of maps, cliarls, &c , when violation of copyright. ... 35 *7

when not a violation 37 *8

Ikfringeme.vt of Copyiught —

pi intiug. &c., copy of book, when is 33 *G

penalty for '. 33 *G

intent with which work reprinted immaterial 34-5 1, G

extent of not important 34 3,5

form of infringement of, no ct^nsequence 34 2

engraving, ic, map, chart, ic , when is 35 *7

penalty lor 35 *7

importation of books, &c., when no infringement. ... 37 •S

acting dramatic compo.<ition, when is 45

when such acting no infringement 46

INDEX TO OBSOLETE LAWS.

Ihfrixgement of Copyright —

printing. Ac, copy of bcok 15 *2

penalty for 16 *2

importation or printing foreign books 13 *5

seUing or engraving any print, Ac 22 *3

penalty for. ... 22 *3

Manuscripts —

printing of, when forbidden 19 *6

damages for so doing 19

70 INDEX TO COPYRIGHT LAWS.

RXFEaKSCES TUCS (*) ARE TO 8KCT10NS ; OTHEBWISE, TO KOTES.

Injr.NxnoNS — '*<»■ **'•
Circuit Courts may grant, to restrain yiolation of

copyrights 24

on what terms and conditions 24

if not asked, equity jurisdiction docs not attach 25 8

to restrain publication of manuscripts 38 ♦S

to restrain acting dramatic compositions 46 4, 6

JCDICIAL OpIKIOVS —

not t)ie subject of copyright 28 17, 18

marginal notes to, may bo 28 19

Labels —

uot subject of copyright 27 9

BI.
iLAKUSntlPTS—

printing or publishing, without author's cotiscnt,

prohibited 38 •S

damages for so doing, and liow recovered 38 '9

injunction to restrain publication of 38 ^9

author of, has pr()|>oriy in, at common law 33 1,3

until ho rilin<|uisheH it 38 1

has redroHs indipcuiiciitiy of xtututo 38 S

author of, hns camo ri^'hts to, ns to other property. .39 11

common law ri^'lit to, not abriti>'ed by statute 39 12

UM of, by author no abandonment 38 6

pcrmiMiuu to take copies no ttbundonmenl 38 6

INDEX TO OBSOLETE LAWS.

IfAn A\D rilAllTS—

copyriglit in, who may havo 14 *!

co|)yright in, in>w arf|uired 17 ^3

copyriglil in, how acquired 18 *4

PVALTIE.^ rOB VIOLATION' OF CofYRIOnT —

for printing bofik. map, chart. Ac It *2

amount of. ond liow recovered 10 *2

for engraving prints 22 *3

amount of, and how recovered 22 *i

INDEX TO COPYRIGHT LAWS. 71

BEFERENCES THUS (*) ARE TO SECTIONS ; OTHERWISE, TO NOTES.

Manuscripts — continued. '*«« ««»■■

copies of, how may be used 38 6

publication of part of, as well as of all, prohibited. . . 33 9

&Iafs and Charts —

renewed term of, who may take 29 *2

copj-riglit in. how acquired 30-1 *3 *i

violation of cop\-riglit, and penalty for 35 *7

violation of copyright, what is 36 3

violation of copyright, how determined 37 4

publishing as copyrighted, when not so 39 *11

DO copyriglit in the original elements or materials of 27 10, 11

copyriglit only in result of labors and surveys 36 1

natural objects of, open to all 36 2

subsequent compiler of, what may use 37 6, 6

Mt;siCAL Composition, Copyrights in —

citizens or resident authors may have 26 *1

when subject of. when not 27 13, 14

original term of twenty-eight years 28 15

how secured 31-2 *4, 5

renewal term, who may have 29 *2

renewal term, how secured 30 *2, 3

violation of copyright of, penalty for 35 *7

penalty for marking copyrighted, when not so 39 'll

Newspaper —

not protected by copyright laws 21 8

is not a book 27 8

INDEX TO OBSOLETE LAWS.

PiXALTres for violation op Coptright —

for publishing book, Ac, as copyrighted, when not so. 23 ^4

amount of, and how recovered 23 *4

action for, when to be brought 23 *4

Prints and Engravings —

produced by others 22 4

INDEX TO COPYRIGHT LAWS.

REFERENCES THIS (*) ARE TO SECTIONS ; OXnERWISE, TO KOTKS.

PENALTIK^ VIOLATION OF COPTnir.nTS '*«» «>"••

for priniinp copy of book without consent 34 *6

omuuiil of, lor each slict-t 34 *6

liow recovered and appropriated 34 *6

action on caso. proper f.Tin to recover 35 c 1

incurred for every sheet sold or licld for Bale 35 c2, 3

not incurred for printing less than entire work 35 c4, 6

for printing map, chart, 4c 36 ^7

amount of, for every sheet 36 *1

}iow recovered and appropriated 36 *1

incurred on every sheet Bolil, or oflTcred for Balo .... 37 61

must be sued for within two years 37 6 2, 4

for acting dramatic composition without consent. ... 45

for printing book, Ac, as copyrighted, when not so.. 39 *ll

how recovered and ajipropriated 39 *11

cannot l>e recovered in name of more than one person. 40 1

Photo<;baphs —

and their nftrotives subject of copyright as prints and

engravings 49 *1

Prints aitd Engkavings, Copyright in —

citizen or resident authors may have 26 *1

liow secured 31 *4

renewed term, who may take 29 ♦a

ri-n'-wcd term, how secured 30 *2, 3

vifilation of, what is 35 •?

penalty for such violation 35 ^7

penalty for publishing as copyrighted, when not BO. . 39 *11

Rr^nrwAL or ComiionTS —

who cnlitli-d to receive or take 29 *2

for what term allowed 29 ^2

ISUEX TO ODSOLETK LAWS.

Rrtcwai, or OoTTiuonT —

who may have 16 •!

for what torm pxantcd IG *l

how necured 16 •!

SaCKKTAKT or Btatt—

copy of lK><)k to b« df ponited with 18 *i

copy of print to be deposited with 21 ^2

duties of, impoied oo Secretary of Interior 47

INDEX TO COPYRIGnT LAWS. 73

REFERENCES THUS (*) ARE TO SECTIONS ; OTHERWISE, TO NOTES.

Renewal of Copyrights — continued. page rkf.

conditions upon which secured 30 *2, 3

within what time, conditions to be performed 30 *2, 3

statute looks to author and his family, not assignees 30 1

not in favor of assignees, unless clearly so 30 4

renewed term is a new interest 30 5

record of, to be published, how 30 *3

Reports —

no copyright in opinions of the judges 28 17, 18

may be in reporter's marginal notes 28 19

Secretary of State —

records of copyrights and copies of books to be de-
posited with 32 *4

duties of, transferred to Secretary of Interior 47 *8

Secretary of Interior —

to have custody of records, books, Ac, relating to

copyrights 47 *8

charged with duties of Secretary of State as to 47 *8

Writ of Error ix Coptrioht sots —

from all judgments of Circuit Courts, without regpard

to sum or value in controversy 48

INDEX TO OBSOLETE LAWS.

Smthsonian Institution —

copies of books, Ac, to be sent to 44 •10

deposit of, not essential to copyright 44 1

no forfeiture for non-compliance 44 3

provisions as to, repealed 47 *S

Writ of Error —

when lies from judgments of Circuit Courts 8i

ACTS OF COXGRESS

m RXSPECT TO

PATENTS FOR INVENTIONS.

ACTS

1 N FORCE.

Act of 1336,

Chap.

357.

Act of 1855,

Chap.

175.

1837,

45.

1856,

129.

1339,

83.

1S59,

80.

1842,

263.

1861,

37.

lS-18,

47.

1861,

88.

1849,

108.

1802,

182.

1851,

32.

1863,

102.

1852,

107.

1861,

159.

1852,

108.

1865,

113.

1853,

97.

OBSOLETE ACTS.

Act of 1790, Chap. 7.

" 1793, " 11.

" nat, " 58.

" 1800, " 25.

Act of IS 19, Chap. 19.

" 1832, " 162.

" 1832, " 203.

" 1860, " 211.

PATENT LAWS.

ACT OF IV 90, CHAPTER 7.

1 Statutes at Lakoe, 109.

[Obsolete: Repealed by Act of 1703, § 12.]

An Act to promote the progress of useful arts.

Sectiox 1. Jie it enacted by the Senate and House of
R'presentatives of the United States of America in Con-
gress assembled, That upon the petition of any person or
persons to the Socrotai y of State, llie Secretary for the
department of war, and the Attorney-General of the
United States, settin^c forth that he, she, or tliey, liath
or have invented or discovered any useful art, manufac-
ture, engine, machine, or device, or any improvement
therein not before known or used, and praying that a
patent may be granted therefor, it shall and may be law-
ful to and for the said Secretary of State, the Secretary
for the department of war, and the Attorney-General, or
any two of them, if they shall deem the invention or dis-
covery sufficiently useful and important, to cause letters
patent to be made out in the name of the United States,
to bear teste by the President of the United States,
reciting the allegations and suggestions of tlie said peti-
tion, and describing the s:ud invention or discovery,
clearly, truly, and fully, and thereupon granting to such
petitioner or petitioners, his, her, or their heirs, admin-
istrators, or assigns for any term not exceeding fourteen
yeirs, tlu> sole and exclusive right and liberty of making.

80 patp:nt laws.

OBSOLETE. ACT OF 1790, CIIAP. 7, §§ 1, 2.

constructing, using, and vending to others to be used, the
Buiil invention or discovery ; wliicli letters patent shall be
delivered to the Attorney -General of tlie United States
to be examined, who shall, within fifteen days next after
the delivery to him, if he shall find the same conformable
to this act, certify it to be so at the foot tlicreof, and
present the letters patent so certified to the President,
who shall cause the seal of the United States to be there-
to aftlxed, anil the same shall be good and available to
the grantee or grantees by force of this act, to all and
every intent and purpose herein contained, and shall be
recorded in a book to be kept for that i)urpt)se in the
oJhce of the Secretary of St;ite, and <leli\ered to iho
patentee or his agent, and tlio delivery thereof shall be
entered on the record and indorsiil on the j)atent by the
said Secretary at the time of granting tiie same.

Under this section it wan hold, that the allegations and su^frosliona
of the po ition must bo KubHtuntiaii7 rocitod in tlio patoiil, or ilio pat-
ent waH void. Kcans v. Chambers', '1 Wash., 120.— Wasuinoton, J.;
IV, lii07.

Section 2/ And be it fm-tlicr cncrtfdy That the
grantee or grantees of each patent shall, at the time of
granting the same, deliver to the Serri'tary of State a
Bpecification in writing, containing a tlescription, accom-
panied with drafts or ntodels, an(i explanations and models
(if the nature of the inventiim or discovery will ndmit of
n mod.!) of the thing or things, by him f)r th«m invented
or discovered, and described as ;^bre8aitl, in the said pat-
ents; which specitication shall be so jiarticular, and said
models so exact, as not only to distinguish the invention
or discovery from other things before known and used,
but also to cn.nblo :i workman or other person skilled in

PATENT LAWS. 81

ACT OP 1790, CHAP. 7, §§ 3, 4. OBSOLETE.

the art or manufacture, whereof it is a branch, or where-
with it may be nearest connected, to make, construct, or
use the same, to the end that the public may have tlie
full benefit thereof, after the expiration of the patent
term ; which specification shall be filed in the office of
the said Secretary, and certified copies thereof shall be
competent evidence in all courts ami before all jurisdic-
tions, where any matter or thing, touching or concerning
such patent, right, or privilege shall come in question.

Section 3. A7id be it further enacted, That upon the
application of any person to the Secretary of State, for a
copy of any such specification, and for permission to have
similar model or models made, it shall be the duty of the
Secretary to give such copy, and to permit the person so
applying for a similar model or models, to take, or make,
or cause the same to be taken or made, at the expense of
such applicant.

Section 4. And he it further enacted. That if any per-
son or persons shall devise, make, construct, use, employ,
or vend, within these United States, any art, manufac-
ture, engine, machine, or device, or any invention or
improvement upon, or in any art, manufacture, engine,
machine, or device, the sole and exclusive right of which
shall be so as aforesaid granted by patent to any person
or persons, by virtue and in pursuance of this act, with-
out the consent of the patentee or patentees, their execu-
tors, administrators or assigns, first had and obtained in
writing, every person so offending shall forfeit and pay
to the said patentee or patentees, his, her, or tlieir execu-
tors, administrators or assigns, such damages as shall be
assessed by a jury, and moreover shall forfeit to the per-
son aggrieved the thing or things so devised, made, con-
4*

82 PATENT LAWS.

OBSOLBTE. ACT OP 1790, CHAP. 7, § 5.

structcd, used, employed, or vended, contrary to the true
intent of this act, which may be recovered in ;ui action
on the case founded on this act.

Sectiox 5. And be it further enacted^ That upon oath
or allirmalion made before tlie judge of the district court,
wliere tlie defendant resides, that any patent which shall
be issued ia pursuance of this act, was obtained surrep-
titiously by, or upon false suggestion, and motion mado
to the said court, within one year alter i-suing the said
patent, but not afterwards, it shall ami may be lawful to
anil for tlie judge of the said district court, if the matter
alleged shall aj)pear to him to be sullicient, to grant a rulo
that the patentee or patentees. Ids, her, or their executors,
administrators, or assigns, show cause why process should
not issue against liim, hi-r, or them, to repeal such pat-
ents ; and if sufllcient cause shall not be shown to the
contrary, the rule shall be made absolute, and thereupon
the said judge shall order j)roecss to be issued as afore-
said, against sucli patentee or patentees, his, her, or their
executors, a<lministrators, or assigns. Anti in case no
Buflicicnt cause shall be sliown to the contrary, or if it
shall appear that tin* pattiitee was not the hrst and true
inventor or discoverer, judgment shall be rendered by
such court fur the repeal of such patent or patents ; and
if tlie party at whose complaint the process issued shall
have judgment given against him, lie shall pay all such
costs as the defendant shall be put to in <lefending the
suit, to be taxed by the court, and recovered in such
manner as costs expended by defendants shall be recov-
ered in due course of law.

Soo noto^ to act of 1793, § 10; and alBo DiQEST PxT. Cases, title
Coi;aT9, B. 3.

PATENT LAWS. 83

ACT OP 1790, CUAP. 7, g§ 6, 7. OBSOLETE.

Sectiox 6. And be it furthrr cnnctcd^ That in nil ac-
tions to be brou<;ht by such paU-ntce or patentees, liis,
her, or their executors, .administrators, or assii^ns, for any
penalty incurred by virtue of this act, the said patents or
specifications shall he prima facie evidence (a), that the
said patentee or patentees was or were the first and true
inventor or inventors, discoverer or discoverers of the
thing so specified, and that tlie same is truly specified ;
but that nevertheless the defendant or defendants may
plead the general issue, and give this act, and any special
matter whereof notice in writing sh.all have been given to
the plaintiflT, or his attorney, thirty days before the trial,
in evidence {l>), tending to prove that the specification
filed by the plaintiff does not contain the whole of the
truth concei'ning his invention or discovery ; or that it
contains more than is necessary to produce the effect
described ; and if the concealment of part, or the addi-
tion of more than is necessary, shall appear to have been
intended to mislead, or shall actually mislead the public,
80 as the effect described cannot be produced by the
means specified, then, and in such cases, the verdict and
judgment shall be for the defendant.

(a) Of tho novelty and utility of an invention, the patent is prima
facie evidence of a very slight character. Loicell v. Lwis, 1 Mass., 184.
— Storv, J.; Mass., 1317.

See also Dicest Pat. Cases, title Patent, P. 2.

(6) As to General Issue, and notices with, see notes to act of 1793,
§ 6, and to act of 183i5, § 15.

Sectiox 7. And be it further enacted., That such pat-
entee as aforesaid, shall, before he receives his patent,
p.ay the following fees to the several officers employed in
making out and perfecting the same, to wit : For receiv-
ing and filing the petition, fifty cents ; for filing specifica-

84 PATENT LAWS.

OBSOLETB. ACT OF 1703, CUAP. 11, § 1.

tions, per copy-shoet containing one hundred word;*, ten
cents; for making out pat«nt, two dollars; for affixing
great seal, one dollar ; for indorsing the day of delivering
the same to the patentee, including all intermediate ser-
vices, twenty cents.

Approved April 10th, 1790.

ACT OF 1793, CHAPTER 11.

1 Statutes at Lakge, 318.

[Olaoletf : Repealed hij Act of 1836, § 21.]

An Act to promote the progress of u.seful arts, and to re-
peal the act heretofore made for that purpose.
Section 1. Be it auirttd />// the Scmitf and House of
Jirj>rcife/itatii'C9 of the United Stahs of America in Con-
gress assembk'd, That when any person or persons, being
a citizen or ritizens of the United States, hIiuU allege that
he or they liave invented any new and u.seful art, ma-
chine, marmfucturc, or composition of matter, or any new
and useful improvemrnt on ;iny art, machine, manufao*
ture, or compoHition of matter, not known or \is<'d before
the application (a), and shall present a petition to the
Secretary of State, signifying a desire of ohtaiuing an ex-
rlasivc property in the same, and praying that a patent
may l»e granted therefor, it hh.ill •.\ni\ may hv lawful for
the said Secretary «»f State to cause letters patent to bo
ma<l« out in the n.ime of tho United States, bearing teste
by the I'revident of the United .States, reciting the alle-
gations and su'^gestions of the said petition (A), and giv-
ing a short description of the said invention or discovery,

PATEKT LAWS. 85

ACT or 1793, CHAP. 11, § 1. OBSOLETE.

and thereupon granting to such petitioner or petitioners,
his, her, or their lieirs, ailininistrators, or assigns, for a
term not exceeding fourteen years, the full and exclusive
right and liberty of making, constructing, using, and
vending to others to be used, the said invention or dis-
covery, which letters patent shall be delivered to the
Attorney-General of the United States, to be examined ;
"who, within fifteen days after such delivery, if he finds
the same conformable to this act, shall certify according-
ly, at the foot thereof, and return the same to the Secre-
tary of State, who shall present the letters patent, thus
certified, to be signed, and shall cause the seal of the
United States to be thereto affixed : and the same shall
be good and available to the grantee or grantees, by
force of this act, and shall be recorded in a book, to be
kept for that purpose, in the office of the Secretary of
S:ute, and delivered to the patentee or his order.

(a) 1. This Rcction U to bo construed with the other parta of the act
tj ine.-in tliat tho di.scovery shouM be unknown, and not used as tlio
invention of anr other than the patentee, b^'tore llie application for a
p itout. Morris v. Huntington, 1 I'uine, 3 J3. — Thompson', J. ; N. Y.,
l^i.'l.

2. This section of the act is to be construed with section 6 of the
s I ne .'\ci, and moaus that the first inventor has a ri^ht to a patent,
tlioujrh there may have been a knowledf^c of tlio thing invented before
the apj)l cation for a patent, if siicli use or knowledge was not anterior
to tho iliscoi'ery. Melius v. Silsbee. 4 Mass., 111. — Stort. J. ; Mass.,
1825. Goodyejr v Mitth'ws. 1 Paine, 301. — I.ivisGSToy, J.; Ct.,
1814. TreadtuU v. Dladfn, 4 Wasii., 707, 708. — WasiusgtiiN, J.; Ta,
1827. CONTiiA. Whitney v. Emmdt, Bald , :i09.— Baldwin, J. ; Pa.,
1831. Thompson s . llaight, 1 LT. S. Law Jour., 573. — Van* Ness, J. ;
N. Y., \6T1.

3. Tho meaning of the words •• not known or used," ±c., in this sec-
tion, is that the invention must not have been known or used by tmk
PUBLIC hefon the application. Ptmuxk v. Dialojue, 2 Pet., 19. — Stout,
J. i Sup. Ct., 1S2U.

4. The patent act of 1790 used the words " not known or used lie-
fore," without adding tho words "the applicaliou :"' in connection

8fl TATEN'T LAWS.

ACT or 1793, cuAr. 11, §§ 1, 2.

with the structure of the scnlence in winch they stnnd, they might
have been rrfi'rrcil either to the time of tlio invention, or of tlic appli-
cation. The nfltiition of tlic latter words in the act of ITICI must liavo
been tj ind't-itria. and with the cautions intentinn to clear away a doubt,
and tix llic oripinal nnd dfliberate meaning of tiio legislature. IbiJ,
22. SJiaw V. C>oper, 7 Pet., 319.— McLew, J.; Sup. Ct.. 1833.

5. 'Within the spirit ol'this section, it was held that the Secretary of
State, though not expressly authorized, might receive the surrender of
letters patent, wliieli were defective by reason of mistakes committed
either by the department, or by the invent<^>r, innocently, and reissue
a new and corrected patent. Grant v. Rivjmond, G Pet., 24'2. — Mar-
BHALi^ Ch. J.; Sup. Ct., 1S32. Same view had been before taken in
Sullivin's Case, Opin., Gilpin's Ed., 158. — WtUT, Alty.-Gen., 1818.
Ifoiris V. Ilu'itington, 1 Paine, 353. — TilOMPSOX, J.; N. Y., 1824.
Grant v. Ma.'ion, 1 Law Int. and Rev.. 22.— Thompson, J. ; X. Y., 1828.
Anon., 2 Opin., 450.— Taxey, Atty.-Gen., 1S31.

(6t 1. Though this act, like that of 1790, required a petition to bo
proilnted, and the patent, when issued, to recite tlio "allegations and
■uggestions of the petition," it seems that, after this act of 1790, iho
petition ulone seldom contained any thing us to the patent beyond a
mere title. Hogg v. Emerson, G How., 4!S0, 481. — WoouucRY, J. ; Sup.
Ct., 1347.

2. Dut the Bpecification, being filed at the same time and often on
the same pajxir, seems to iiave been regarded, whether sjK-eiolly named
in the petition or not, as a i)art f>f it. To ;ivoid mistakes as to the ex-
tent of the inventors claim, and to comjily with the law, by inserting
in the patent at l<ast the substance of the jtetition, the ofllcers inserted,
by express reference, the whi»le descriptive |)ortion of it as contained
in the schedule. J bid., 4-1.

Section 2. Provided alirnf/s, nnd l>f if further enacted^
Tliat any person, who shall have iliscovennl an improve-
ment in the print'iplf of .nny machine, or in tlie process
of any composition of matter, which sliall have been patent-
ed, and sliall have ohtainc'l a patent for such improvement,
he shall not be at liberty to make, use, <»r vend the
original discovrry, nor nhall the first inventor be at
liberty to use the iinprtjvemeiit : ('/) And it is hereby
enacted and declared, that simply chani,'inj^ the form or
the proportions of any machine, or composition of matter,
in any degree, shall not be deemed a di.scovery. (i)

(a) Ah to doctrine that the patentoo of an improvomcnt has no right

PATENT LAWS. S7

ACT OF 1793, CHAP. 11, §§ 2, 3.

to use the original discovery, nor the first inventor the right to use tho
improvement, .see Gray v. James, Pet. C. C, 390. — W ashinoton, J. ;
P.I., 18 17. Washburn v. Gould, 3 Story, 150. — Story, .1. ; Mass., l.S-1-1.
Woodworth v. Ro'jrrs, 1 Wood, k Min., 141. — ■\Vooi)Hi:uY, J. ; Mas.«.,
1847 ; ami jjencrally DiGKST Pat. Cases, title lMPHOVEii£.\T, C.

(b) 1. It is not every change of form and proportion which is de-
clared by this act to be no discovery, but sucii as is simply a change
of form and proportion, and notliing more. If by changing the form
and proportion a new effect is produced, there is not simply a change
of form and proportion, but a ch.nnge of principle al.so. Davis v.
Palmer, 2 Brock., 310. — Maiisiiali., Ch. J.; Va.. 1827.

2. Though this declaratory act, that a change in form is not a dis-
covery, was not re-enacted in the law of 183G, it is a principle which
necessarily makes part of every system of law granting patents for
new inventions. Winam v. Denmead, 15 How., 341. — CcRTis, J.;
Sup. Ct., 1853.

See also Digest Pat. Cases, titles Form ; Impeovement, A.

Sectiox 3. And he it further enacted. That every in-
ventor, before he can receive a patent, shall swear or
aflSrm, that he does verily believe, that lie is the true
inventor or discoverer of the art, machine, or improve-
ment, fur which he solicits a patent, which oath or
affirmation may be made before any person authorized to
administer oaths, and shall deliver a written description
of his invention, and of the manner of using, or process
of compounding the same, in such full, clear, and exact
terms, as to distinguish the same from all other things
before known, and to enable any person skilled in the
art or science of which it is a branch, or with which it
is most nearly connected, to make, compound, and use
the same. And in the case of any machine, he shall
fidly explain the principle, and the several modes in
which he has contemplated the application of that prin-
ciple or character, by which it may be distinguished
from other inventions ; and he shall accompany the
whole with drawings and written references, where
the nature of the c.ise adniits of drawings, (a) or

.S.S PATENT LAWS.

ACT or 1793. CHAP. 11, §§ 3, A.

with specimens of the injfredients, and of the composition
of matter, Bufllcicnt in quantity for the jiurpose of experi-
ment, where the invention is of a composition of matter;
which description, signed by himself and attested by two
witnesses, shall be filed in the office of the Secretary of
State, and certified copies thereof sliall be competent
evidence in all courts, where any matter or thincr, touch-
ing such patent-right, shall come in question, {b) And
such inventor shall, moreover, deliver a model of his
machine, provided the Secretary shall deem sneh model
to be necessary.

(n) 1. Under the provisions of this section requiring drawinj^ wiih
written reforciiccs, if the si>cci(loation refers to the drawings, they
thereby bocomo pnrl of tlie written description of the invcution.
KarUv. Sauiier. 4 Mass., 10. 11. — StORY, J.; Mass., 1825. Jhooks y.
likkneU, 3 McU-an. I'd.— McLkav, J.; Oiiio, 1843. Wa!>hlium v,
Gould, 3 Story. i:i.{.— Story. J. ; Mass., IS 14.

2. It is Buflicient if drawings and written references are put on flio
with the sjKJcificatidn ; and if the references reijuircd are written ou
the drawing's the st.iluto is satisfied. Emerson v. Ilcxjg, 2 Dhitchf^ 9,
10.— Detts, J.; N. Y.. 1845.

.T. The patent act of 179.'l does not hmit tlio inventor to one RJngle
mo'lo or one single set of ingredients to carry into effect his invention.
Ho m.iy claim as many modes as he plo.ises, proviilcd always that tho
claim is liniitc<l tu such as he lia.s invented and us are substantially
new. And section .'t of the act re<iuires, in the case of a machine, that
the inventor shall explain the several nitxhs in which he has contcin-
)ibtcd tlie application of itii principle, liynn v. Goodwin, 3 Sumn., 521.—
.StouY, J. : .Mass., 1839.

4. I'mhr tho act of 1793, the sporiflcation was not rcqidrcfl to b«
ipadc a part of the loiters pntont, hut the inventor could have it so in*
• orjKiratcd with thorn if ho desire<l. Ilfjg v. F.mnion, 11 IIow., G04.^
\V(K)r>HfHT, J ; Slip ("t., 1ftr»0.

C'l An enmiflitlcalinn of n si>ecincnlion of • p.itent is mado evidcnoo
by this !M»ction of the (let of CongreKH. The exeniplilkaiion of tl)c pat-
ent ituclf stands upon tho common law, ns being an exeniplillcation of
a record of a public document, and is always to be received ai cvi»
denee. Tlip drawing or model need not bo exemiilified. l\ck v. Fat'
rinylon, 9 Wend., 45 — Savajje, Ch. J.; N. Y., \Hr:.

Section 4. And he if further cnartcd, That it shall bo

PATENT LAWS. 80

ACT OF 1793, CHAP. 11, §§ -1, 5. 0U30LETB.

lawful for any inventor, his executor or a<lniii)istr:»tor, to
assipi the title and interest in tlie p:iid invention, at any
time, and the assignee, having recorded the said assign-
ment in the office of tlic Secretary of State, sliall there-
after stand in the place of the original inventor, both as
to right and responsibility, and so the assignees of as-
signs, to any di'gree,

1. It is tlie business of tho assicrnee of a patent-rigbt to see thnt the
nssipninent is put on record. Murrill v. Worthington, 14 Mass., 392. —
Cluiam: Ma?s., 1817.

2. I'nder this section, an a.ssignmcnt is not valid unless it has been
recortled in tho office of the Secretary of State. Iligcjins v. Strong, 4
Blackf. 183.— Dewey, J.: Ind., 183ii.

3. Under this section, until an assignment is recorded, the as.'^i^ee
is not substituted to tlie rights and responsibilities of the patentee so
as to maintain a suit at law or in equity, founded thareon. Wijeth v.
Stone, 1 Story. 2'jr..— .Story, J. ; Mass., "l840.

4. Under this section, the recording of an assignment is indispensa-
ble to convey the right. Dohsoa v. Oimp'jell, 1 Sumn.. 32G. — Stouy, J.;
Me., 1833. Boyd v. McAlpine, 3 McLean, 428.— McLeax, J.; Ohio,
1844.

Section- 5. And be it ^fi/rt/icr enacted, That if any
person shall make, devise, and use, or sell the thing so
invented (a), the exclusive riglit of which shall, as afonv
said, have been secured to any person by patent, without
the consent {h) of the patentee, his executors, adminis-
trators, or assigns, first obtained in writing, every person
so offending shall forfeit and jiay to the patentee a sum,
that shall be at least equal to three times the price, for
which the patentee has usually sold or licensed, to other
persons, the use of the said invention, which may be re-
covered in an action on the case founded on this act, iu
the Circuit Court of the United States, or any other
court having competent jurisdiction, (c)

(o) 1 Under the act of 1790, a patent was made prima facie evl-
deace; that act was repealed by tho act of 1793, and that provision

90 PATENT LAWS.

OBSOLETE. ACT OF 1793, CHAP, 11, §§ 5, G.

w.is not rc-enactod in it. Hsnce a patent was not rcocivod in courts
of justice aB even prima facie evidence that the invention patented was
new or useful, but tlie pluintiCf was bound to prove these hicts in ordtT
to make O'lt his case. Corning v. Burden, 14 How., 270, 271. — CiUiEii,
J.; Sup. a., 1833.

2. Under thi.s section, subjectinq; to a penalty 'any person who
Fhall mako, devise, and use, or sell the tlrnsj so invented. " it mi^rlit
well be questioned whether any person would be subject to the penalty
for using a machine which he had not uNo made and devised. Such
doubt is removed by section :{ of the act of ISOO, wliich subjects to
riamaffcs "any person who shall make, d'viso, use. or sell" the inven-
tion of another. A'la/w v. Jordan, 1 Brock., 230, 231. — Maksiiall, Ch.
J.; Va., 1813.

3. The maker and seller of a patented article, within the meaninp of
this section, is the i>orson for whom, by whose direction, and for whoso
account the article is sold — .nn<i not the nii-ro workman employed to
sell. Delano v. Scott. Gilpin. 4:id. — IIopkixson, J.; I'n.. 1831.

(b) Where one erected, on his ow;i premises and at his own expense,
a machine which was chiimed to be tho invention of another; and
afterwards such inventor t(H)k a lease of the machine for a term of
years, eovenanlin}^ to reconvey the same ut tho end of the term of
years, J/elti, ihal such covenant amounted to litvtii-e or consent ia
writinfj. witiiin the nicaninjr of this section. Rentijen v. Kanours, 1
"Wash., 172.— Washixcjtox, J.; Pa.. IHOI.

(c) 1. Under this section, it was held tho assignee of a part of a pat-
ent co\dd not maintain an action for a violation. Tyler v. 7WI, 6 Cra.,
32-1.— Clkiau; Sup. Ct , ISIO.

2. But tho assignee of a moiety may join with tho patentee in aa
action for a viobtion. WliiUemure \. Cutler, 1 Uall., 430. — SroRr, J.;
Mass., 181.3.

TJiia HoctioQ repealed by act of 1800, § 1.

SUfTION 0. Proi'idnl (ilir,it/s, (111(1 h, it furtfur enacted^
That the <li'fcii<l:uit in Huch action h1i:iII bo permitted to
pli'.id the pcner.il issue, :ind pivc this act, and atiy spocinl
tnattpr {n), of which notice in writin;:^ may have been
pivcn to tl»o pl.iintiir or his attorney, thiity days before
trial, in evidence, tendin;:^ to i)rove, that tlie .sj)ecification,
filed by the plaintifT, docs not contain the whole truth
rela'ive to his discovery, or that it contains more th.'in is
ne'-e-Kary to produce tlio described effect, whicli conceal-
ment or addition shall fully appear to have been made,

PATENT LAWS. 01

ACT OF 1793, CHAP. 11, § 6. OBSOLETE.

for the purpose of deceiving the public (/»), or that the
thing, thus secured by piitont, was not originally discov.
eretl by ttie patentee, but had been in use, or had been
described in some public work anterior to the supposed
discovery of the patentee (<•), or that he had surrep-
titiously obtained a patent for the discovery of another
person ((/) ; in either of which cases, judgment shall be
rendered for the defendant, with costs, and the patent
shall be declared void (< ).

(a) I. The object of this section was to puard afrainst defeating pat-
ents by the setting up of a prior invention whicli liad never been
reduced to practice. Bedford v. Hunt, 1 Mass., 305. — Story, J. ; Mass.,
1SI7.

2. This section appears to liave been drawn with the idea that the
defendant would not Ite at liberty to contest the vaHdily of the patent
on the general issue, and iiuends to relieve the defendant from the
dilliculties of pleadinir, by allowing him to give in evidence matter
which affects the patent. J'Jvaii'i v. £a(on, 3 Wheat, 503, 504. —
Marshall, Ch. J.; yup. Ct., 1818.

3. Such notice is, however, for the security of tho plaintiflT. to protect
him aprainst surprise. Ibid.. 504.

(b) Under this section a defect or concealment in a specification, in
order to make the patent iuvalid, mu«t appear to have been made for
the purpose of deceiving tiie public. Wuitnei/ v. Carkr. Fes.-cnden on
Pat, -lei ed, 139.— Joiixsox, J.; Geo.. isi)9. Park v. Litllc. 3 Wash.,
108. — Wasiungto.v. J.; Ta., 1S13. Whitttrmorew Cutter, 1 Gall., 437.
— SroRY, J. ; Mass., 1813. Gray v. James, Pet. 0. C, 401.— Wash-
ington-. J.; Pa., 1817. Lowea v. Lewis, 1 Mass., 189.— Storv, J.;
Ma.ss, 1817.

(r) 1. Where a defence is made that tho patentee is not tho original
discoverer of the thing patented, the patent will be considered as rela-
ting back to the original discovery. Construing sections 1 and G to-
gether, the patentee's right docs not date from tho time of his applica-
tion for a ixuent, but from tho time of his discovery. I>ixnn v. JJoyer,
4 Wash.. 72.— Wasiukotox, J.; Pa., IS'Jl.

2. Under this section, if the thing had been in use or known ante-
rior to the patentee's supposed discovery, his patent is void. Though
the patentee had no knowledge of such previous diiscxjvery, still his
patent is void, as the law supposes he may have known it. Eiaiu v.
Eaton, 3 Wheat., 514.— MAr.siiALL, Ch. J.;" Sup. Ct.. 1S18.

3. The use of a machine, to tost its value, as a cracker machine to
tho extent of half a barrel of rtour. held to amount to a using of it with-

02 PATENT LAWS.

ACr or 1793, CHAP. 11, §§ 6-8.

in the meaning of this section. Watson v. B'adcn^ 4 Wasli., 683.*—
WASHiNdTON, J. ; Pa., 1826.

(d) 1. Tliis section does not pniimerate nil the defences of which the
defendant may leirally avail himself; as lie may give in eviilenco tliat
he never did the tiling attributed to him ; that tiie patentee is an alie:),
and not entitled unilor the act ; or that he has a license or authority
under the patentee. WhiUemnre v. Cutter, 1 Gall., 435 — Story, J.;
Mass., 1813. Kntas'! w Schuylkill Hank, 4 Wash., 1 1.— "Wasui.nuton,
J.; Pa., 1820. Pennock v. Dialogue, 2 Pet., 23.— SroitY, J.; Sup. Ct.,
1823.

2. This section only declares llio dcfetioos available against a pat-
entee ; but no process or means are given by it for the examination of
a patt-nt, however f.iLse and fraudulent it may be, if the patentee will
forbear to bring suit again.st those using it. Delaru) v. Scoti, Gilpin,
491).— IIoPKi.vsox, J. : Pa.. 1834.

{e) 1. If a det'endant seeks to annul a patent, ho must proceed in
precise conformity witii section 6 of the act of 1793, and ' fraudulent
intent "jfJUBt be found by the jury to justify a judgment of vacatur by
the court. This section does not control tlie 3*^ Grant v. Raymond,
C Pet.. 247.— Marsiialu Ch. J. : Sup. Ct., 18;i2.

2. The Circuit Coiirl. in a civil suit, cannot tleclaro a patent void ex»
cept for the causes speeilied in this section. If the pati nt is defective
for nnv other cause, ihe verdict must \>e general for the defendant.
Whitney v. EmmrU, Bald.. 321.— HaUiwix, J. ; Pa., ISJl.

3. Under this gection, the Circuit Courts of the United States have
exclusive jurisdiction in suits where the patent may bo declared void.
Parsons v. Barnaul, 7 Johns, 144.— Cvriam ; N. Y., IHIO. WiLon v.

Wo'niuorUi, H Paige, 134. — Walwortii, Chan.; N. Y.. 1H40.

.See also notes to act of 183C, § 15, and Digest Pat. Casbs, title
General Issie.

Section 7. And be it fifrf/wr <narted^ That where any
Stale, before its adoption of the present form of govern-
ment, Khrill have crrantod an excluxivo ritrht to any inven-
tion, th«.' I>.'irty, (l.-iiiniiig tliat ri^lit, shall not be cajiablc
of obtiiinint; an cxchisivo rij^ht tinder this act, but on
relinquisliin^ hin ri;:;ht unilcr such particular State, and
of Hiich ri'lin<|uisliment, liiH obtainini; an exclusi\e right
under this act sliall be Huflicicnt evidence.

SEcnux b. And be it further utactid. That the per-
■on», whose applications for patents, were, at the time
of passing this act, depending before the Secretary of

PATENT LAWS. 93

ACT OF 1793, CHAP. 11, §§ 9, 10. OBSOLETE.

State, Secretary at War, and Attorney-General, acrortling
to the ac-t passed the second session of the first Congress,
intituletl " An act to promote the jtrogress of useful aits,"
on comphing with the conditions of this act, and paying
the fees herein required, may pursue their respective chiims
to a patent under the same.

Sectiox 9. And be it further enacted^ That in case
of interfering applications, the same shall be submitted
to the arbitration of three person*, one of whom shall be
chosen by each of the applicants, and the third person
ehall be appointed by the Secretary of State {a) ; and the
decision or award of such arbitrators, delivered to the
Secretary of State in writing, and subscribed by them, or
any two of them, shall be final, as far as respects the
granting of the patent: And if either of the applicants
shall refuse or fail to choose an arbitrator, the patent shall
issue to the opposite party, {h) And where there shall
be more than two interfering applications, and the par-
ties applying shall not all unite in appointing three ar-
bitrators, it shall be in the power of tlie Secretary of
State to appoint three arbitrators for the purpose.

{a) An inventor filed a dejoription of hia alle^d invention in 1802,
as required by section :< of the act of '1793, and took no further 6tep
until 1814, whcu another person made application for a patent for tho
same invention ; Held, that there was no hmitation of time within
•vs'hich a patent must be taken out after specification tiled, and that tho
facts made a case of interference, to be arbitrated under this section.
Anon., 5 Opin., 701.— Rfsii, .\tty.-Gen. ; 18U.

(fe) The refusid of a defendant to submit his claim to arbitration un-
der this section, and his subsequently obtaining a patent therefor, is
not conclusive evidence, in a proceeding under section 10, that such,
patent wa.^ obtained surreptitiously. Stearnes v. Barrett, 1 Mass., 174.
— Story, J.; Mass., 1S16.

Section 10. And be it further enacted. That upoa
oath or aflii-matiou being made before the judge of the

94 PATEXT LAWS.

Acr^r 1793, coap. 11, § 10.

District Court, where the |)atentee, liis cxoc-utors, ndmin-
i.'^trators, or .-ij-siixiis rc-idc, that any patent, which shall
be issiu'd in puihuunce of this act, was obtained Mirrepti-
tiuusly, or upon false suggestion, and motion made to
the said court, witliin three years after issuing the said
patent, but not afterwards, it shall and may be luwful fur
the judge of the said District Court, if the matter alleged
shall aj>pear to him to be sufficient, to grant a rule, that
the patt-nlee, or his executor, adniiuistratur or assign show
cause why process shouhl not issue against him to repeal
such patent. And if sullicient cause shall not be shown
to the conlrar}', the rule shall be made absolute, and
thereupon the said judge shall order process to be issued
against such patentee, or his executors, administrators or
assigns, with costs of suit. And in c:ise no sufficient
cause shall be shown to the contrary, or if it shall appear
thai the patentee was not the true inventor or discoverer,
judgment shall be rendered by such court for the repeal
of such jiatent ; and if the party, at whose conij)laint the
j)rucehs issued, shall have judguient given against him, he
Bhall pay all such costs as the dcfeiulant shall be j)Ut to
in defending the suit, to be taxed by the court, and re-
covered in due course of law.

1. Tlic jurisdirtlon (Hvcn to tho Dintrict Court, under tliin noction,
tp|)UcH on J to ^a^e« in whii-li iho pali-nt hna boon obl<iiiir-d by frnud,
(iiirrcptitioiiiily, liy ialwj miffP'Sli'Ui, or by Moiiio wilful iiiisroprescnla-
tion and dcxvpliuii. DtUno v. ikotL, Uilpiu, 41)3. — lIoi'U.vsux, J. ;
Pa., 1H31.

'I. The nummary proco'-dlnj? under thui Boclion is jf'^cn to protect
tho public fiom m.itnfvHt fraud, in taking out patcDtn (tho feed uf ofllco
being no clieck), for known and commuu tliin^H. Ibid., 49 1.

3. It jfircfl tin.' jMiwor lo any person to call u|k>u a patontco for an
examination of bin ri^lit, and have it repealed, if it shall bo found that
be is not cntitl-d lo it. Ibui, '>(iO.

i. Prococdingii under this section, upon the rule ni«i, aro not conclu*

PATENT LAWS. 95

ACT OF 1793, CHAP. 11, § 11.

sive. The process awarded, upon makinp; the rule ab.solute, is in tlie
nature of a scire facias, and id not final. St arii'S v. Jiarrdt. 1 Mass.,
1<;5. — Story, J. ; Mass., 1810. Wood ii Brundaje, Ex parte. 9 Whoat.,
615.— SroKY. J. ; Sup. Ct., 1824. jAlano v. Sett, Giijiin, 49&.— IIoP-
KINSOX. J.; Pa., 1831. Contua, McGaw v. Bryan, 1 U. S. Law Jour.,
98.— Van Ntss. J. ; X. Y., 1822.

5. In pioccodinpr.s under this section, ihe United States will not l>o
substituted as plaintiCTs, in place of tiie patentee. Wood v. Williams,
Gilpin, 520. 521.— IIorKixsoN, J.; Ta., 1831.

See also Digest Pat. Cases, title Oouets, B. 3.

Section 11, And be it further enacted^ That every in-
ventor, before he presents his petition to the Secretary
of State, signifying his desire of obtaining a patent, shall
pay into the treasury thirty dollars, for which he shall
take duplicate receipts; one of which receipts he shall
deliver to the Secretary of State, when he presents his
petition ; and the money thus paid, shall be in full for
the sundry services to be performed in the office of the
Secretary of State, consequent on such petition, and shall
pass to tlie account of clerk-hire in that office. Provided
fievtrt/u'liss, That for every copy, which may be required
at the said office, of any paper respecting any patent that
has been granted, the person, obtaining such copy, shall
pay, at the rate of twenty cents, for every copy-sheet of
one hundred words, and for every copy of a drawing, the
party obtaining the same, shall pay two dollars, of which
payments, an account shall be rendered, annually, to the
treasury of the United States, and they shall also pass to
the account of clerk-hiie in the office of the Secretary of
State. ?

1. A defendant, being permitted under section G of the act of 1793,
to set up tlie defence that the plaintiff's specific;\tion does not contain
the whole truth, he has, under this section, a right to call for and liave
a copy of the plaintifl"3 specidcation, and no conditions can be imposed
upon the use of such copy. Anon., 1 Opin., 376. — Wlrt, Atty.-Gen.'
1820.

09 PATENT LAWS.

OBBOLXTB. ACT Or 1794, CHAP. 68.

2. The provino to this section cannot bo considprod ne Ojioninp: to all
persons, indiscriininatfly, the right to demand copies of pnpors respect-
ing patents granted to others. As to otiiers than a defendant, as pro-
Tided for in section C, it rests in the duscTCtion of tlic department
•whether copies shall be fiimishcd or refused. Anotu, 1 Opin , 718. —
WiKT, Atly.-Gcn.; 1825.

Section 12. An>/ be it further enacted^ That the act,
passed the tenth day of April, hi the year one thousand
seven hundred and ninety, intituled "An act to prumote
the progress of useful arts," be, and the same is hereby
repealed. ProvUlnI altraijs^ Tliat nothing contained in
this act, shall be construed to invalidate any patent that
may have been granted under the authority of the said
act ; and all patentees under the said act, their executors,
administrators, or assigns, shall be considered within the
purview of this act, in respect to the violation of their
rights ; provided such violations shall be committed al'ter
the passing of this act.

Approved February 21st, 1793.

ACT OF 1V94, CHAPTER 68.
(1 Statutes at Lakge, 393.)

[Obsolete: lifpenlfd by Act o/1838, § 21.]

An Act supplementary to the act intituled " An act to

promote the progress of useful arts."

Be it enacted Inj the Senate and House of Representa-
tives of the United States of America in Conynss assetn-
Ucdy That all suits, actions, process, and proceedings,
heretofore had in any District Court of the United States,
under an act ])asscd the tenth day of April, in the year
one thousand seven hundred and ninety, intituled " An

PATENT LAWS. 97

ACT or 1800, CHAP. 26, § L OBSOLKTX.

act to promote the progress of useful arts," which may
have been set aside, 8usp(n<k'<l, or abated, by ri-ason of
the repeal of the said act, may be restored, at the instance
of the pliiintilf or defendant, within one year from and
after the passinjj^ of this act, in the said courts, to the
same situation, in which they may have been, wlien tliey
were so set aside, suspended, or abated; and that the
parties to the said suits, actions, ])rocess, or proceedings,
be, and are hereby entitled to proceed in such cases »*
if no such repeal of tlic act aforesaid had taken jdace.
.Prov'uhd alirai/s, That before any order or proceeding,
other than that lor continuing the same suits, after the
reinstating tliereof, shall be entered or had, the defendant
or plaintiff, as the case may be, against whom the same
may have been reinstated, shall be brought into court by
summons, attachment, or such other proceeding, as is
used in other cases for compelling the appearance of a
party.

Approved Jime 7th, 1794.

ACT OF 1800, CHAPTER 25.

2 Statutes at Large, 37.

[Ohsoletc: Repealed by Act o/1836, § 21.]

An Act to extend the i)rivilcge of obtaining patents for
useful discoveries and inventions, to certain persons
tlierein mentioned, and to enlarge and define the pen
alties for violating the rights of patentees.
Sectiox 1. -Be it enacted by tJie St7iate and House of
Keprescntatives of the United States of America in Con-
gress assembled^ That all and singular the rights and
6

08 PATENT LAWS.

ODSOLKTK. ACT OF 1800, CHAP. 25, g 1.

privileges piven, inten«k'tl or jTuviiU'd to cilizenB of the
UnitiMl Stairs, rcsin'ctiiiL; ji.itfnts lV>r new inventions, dis-
covcrios and iniprovenienls, by the act intituled "An act
to promote the progress of useful arts, and to repeal the
act lierotoforc made for that purpose," shall be, and here-
by are extended and ijiven to all aliens who at the time
of petitioning in the manner prescribed by tlie said act,
sliall have resided for two years within the United State",
which privileges shall be obtained, used, and enjoyed, by
such persons, in as full and ample manner, and urxicr the
same conditions, liriiiiations and restrictions, as by the
said act is provided and directed in the case of citizens
of the United States. J^rovuhd ahr<n/s. That every per-
son petitioning for a patent f«)r any invention, art or
discovery, pursuant to this act, shall make oath or aflirma-
tion before some ])crson duly authorized to administer
oaths before sucli jiatent sh:i!l be granted, that such
invention, art or discovery hath not, to the best of his
or her knowledge or belief, been knovn or used cither
in this or any foreign country, and that every patent
■which shall be obtained pursuant to this act, for any
invention, art or discovery, which it shall afterward
appear had been known or usctl previous to such applica-
tion for a patent shall be utterly void.

1. Under tliis uct a forcipncr, though havinp resided within tlio
United Stales for moro tlinii two years, could not have a patent for an
invention operated by liim in another country before ho came here, as
hn could not take tiie ojith required by this statute. Dujdal'a Casf,
1 Opin , 332.— W HIT, Ally.-(].'n.; 18J0.

2. Uy the provixionK *..i this act, tiikeu in connection with thoso of
the act of M'Xi. citi/.ens and alien.s are placed substantially upon tlio
B.ntno ground nn to u rifflit to a patent when the invention ha.i not been
known or uned bct'oro it was patented. In both cases the right w to
bo tested by tlio Karno rule. S)uiw v. Cooper, 1 PeL, 31C. — McLean,
J.; Sup. Ct., 1833.

PATENT LAWS. 99

ACT OF 1800, onAP. 25, §§ 1-3. obsolete.

.1. Where a person made nn invention in Knplnnd. in 181.1 or 1814,
and before coniini^ to this countn- made i<iiown his invention to othcra,
and phortly nftcr coininjr hero diselost-d it, in I SI 7, to nn individual
here, and in 1M7 or IslH, the invention was sold in Kngland, and ."oon
ofler went into use tliere ami in France, and Biib.seqnently, in 1822,
the inventor to^k out a patent hero; Urld, that there had been such a
public use of the invention, without an assertion of ri(.'lit on tiio part
of the iuveutor, as rendered the patent void. IbtcL, 318-323.

Section 2. And be it farther enacted, That where any
person lialh made, or shall liavc made, any now invention,
discovery or improvement on account of which a patent
might, by virtue of this or the above-mentioned act, bo
granted to such person, and shall die before any patent
shall be granted therefor, the right of applying for and
obtaining such patent, shall devolve on the legal repre-
sentatives of such person in trust for the heirs-at-law of
the deceased, in case he shall have died intestate; but if
otherwise, then in trust for his devisees, in as full ami
ample manner, and under the same conditions, limitations
and restrictions, as the same was held, or might have
been claimed or enjoyed by such ])erson, in his or her
lifetime ; and when apj)lication for a patent shall be
made by such legal representatives, the oath or affirma-
tion, provided in the third section of the before-mentioned
act, shall be so varied as to be applicable to them.

Section 3. And be it further enacted. That where any
patent shall be, or shall have been granted pursuant to
this or the above-mentioned act, and any person witliout
the consent of the patentee, his or her executors, admin-
istrators, or assigns, first obtained in writing, shall make,
devise, use, or sell («■/) the thing whereof the exclusive
right is secured to the said patentee by sucli patent, such
person so offending shall forfeit and pay to the said pat-
entee, his executors, administrators, or assigns, a fum

100 PATENT LAWS.

OOaOLBTB. ACT OF 1800, CHAP. 25, §§ 3, 4.

equal to tliree times the ftotual tlamajje (/») sustained Ity
8uc!i jiati'titee, his executors, ailiiiinistrators, or ashigiis,
fro:ii or by reason of such oflence, which sum shall and
may be roco\ered by action ('•) on the case founded on
this and the above-mentioned act, in the circuit court of
the United States, having jurisdiction thereof.

(a) This section pivcs an action al;.'>itl^t nnv one who shall "make,
doviso, 113'^, or si'll." tbo tliinj? p.nteiitcd, .iiid lakes the place of aectioa
6 of the oct of 179.'l, which gavo an action a;,'ainst aiiv one who should
"make, devise, and iipe, or sell." Tliis diaii^re was made because of
some doubt whcllicr the language of .sfction 5 of the oct of 17y3 did
not couple the making and us.ug together to con><litute an olTcnco, so
that making without using, or using without making, was not an in*
fringement. Whittemore v. Cutter, 1 Gall, 432. — Stouy, J. ; Mass.,
1813. Evans v. Jordan. 1 Drook., '_>:)2.— MaksiiaU., Cli. J.; Va., 1813.

{b) 1. Under thi.s section the jury And single damages, and tlie court
treble Ihem in awaniiug judgment. IajW':U v. Ltnis, 1 Mass., 1S5.^
Story, J.; .Mass.. IsiT.

2. Tnder this section, if the jury find for the pl.Tintiff, they are to
find the actual damages sustained I'V him. The court will treble them.
Cray T. Ju/-(M, Pet. C. C, 403.— Wasui.nt.ton, J.; Pa., 1817. Emui
V. lidtik. 3 Wash.. 422.— WASnisc.Tox, J.; Pa.. 1818.

3. This Fcetion fixed the amount of recovery at three times the actual
damage sustained Trebling the damages, under the act of 1 33G. rests
with the di.scretion of tlie court. Guijon v. Serrell, 1 Blatchf., 245. —
XEI..SON, J.: N. Y., 1817.

(c) 1. This .section gave jurisdiction only in actions on the case;
Held, therefore, that a suit in equity, respecting a patent, in order to bo
cognizable by tJio circuit courts, must como within the piovisions of
tiie judiciary act of 1789, as to citizenship of parties, and lliat whcra
the parties were all residents of the same Stat<\ such courts had not
juris(Uction. Livinjston v. Van Jnijen, 1 Paine, 48, 64. — LlviXG8T0>f,
J.; N. Y., IHll.

2. This deft-ct was afterwards remedied by tlie act of 1819, chap. 19

Seciion 4. And be it further enacted, That the fifth
section of the above-mentioned act, intituled "An act to
promote the progress of useful arts, and to repeal the act
hert'tofoi e made for that purpose," sh;dl bo and hereby U
repealed.

Approved Aj.ril ITth, 1800.

PATENT LAWS. 101

ACT or 1819, CHAP. 19.

ACT OF 1819, CHAPTER 10.

(3 Statutes at Large, 481.)

[Obsolete : Repealed by Act of 1836, § 21.]

An Act to extend the jurisdiction of the Circuit Courts

of the United States to cases arising under the law

relating to patents :

Be it enacted by the Senate and House of Representor
fives of the United States of America in Com/ress assem-
bled^ That the Circuit Courts of the United States shall
have original cognizance, as well in equity as at law, of
all actions, suits, controversies, and cases, arising under
any law of the United States, granting or confirming to
authors or inventors the exclusive right to their respec-
tive writings, inventions, and discoveries : and upon any
bill in equity, filed by any party aggrieved in any such
cases, shall have authority to grant injunctions, accord-
ing to the course and principles of courts of equity, to
prevent the violation of the rights of any authors or in-
ventors, secured to them by any laws of the United
States, on such terms and conditions as the said courts
may deem fit and reasonable : Provided^ hoicever, That
from all judgments and decrees of any Circuit Courts, ren-
dered in the premises, a writ of error or appeal, as the
case may require, shall lie to the Supreme Court of the
United States, in the same mnnner, and under the same
circumstances, as is now provided l)y law in other judg-
ments and decrees of such Circuit Courts.

Approved February loth, 1819.

1. This act removed the defect that eiistod under the act of 1800,
by which the Circuit Courts did not have jurisdictioQ of suits in equity,

102 PATENT LAWS.

OBSOtETE. ACT OF 1832, CHAP. 162, §§ 1, 2.

except in actions on tho case. Livingston v. Van Ingen, 1 Paine, 54
(nolo).— Livingston. .T.; \. Y.. 1811.

2. Tliis act docs not enlarge or alter tho powers of the court OTor
the sill jcct-ni.nttor of tho c;iii!-o of action. It only extendi it.'< jurisdio
tion to parties not before failing within it. It remove<l the olijfftion,
thai prior to it, a cili/.en of one State could not obtain an injunction in
tho I'ircuit (,'oiirt for a violation of a patcnt-ri(jlit, against a citizen of
the same State, and pave the jurisdiction, although tlio parties were
citizens of the samo State. SuUivan v. Bed/ield, 1 Paine, 447, 448. —
TuoMPSON, J.; N. Y., 1S25.

3. This act extends the jurisdiction of the Circuit Courts to all cases
at law and in eiiuity, arising under ttic patent laws ; but there is
nothing in the act which, either in terms or by necessary implication,
rcndrrs that jurisdiction exclusive. BurraU v. Jewelt, 2 Paige, 145. —
Walworth, Chan.; N. Y., 18:{0.

4. Tho substance of this enactment, so far as it relates to the subject
of patent-rights, is incorporated into section 17 of the act of 1836.
Stevms V. Gladding, 17 llow., 455. — Clrtis, J.; Sup. Ct., 1854.

ACT OF 1832, CHAPTER 162.

4 Statutes at Large, 559.

[Obsolete: Repealed hy Act of 183G, § 21.]
An Act concerning patents for useful inventions.

Section 1. lie it enartcd by the Senate and Iloxise of
Jiijyrcstntdtivrs of thf Unital Staffs of Anurica in Con-
yre-'<!**i-f-'<i nihil d^ That it shall be tho duty of tho Secretary
of State, annually, in the month of .Taniiary, to report to
Congress, and to piililish in two of the newspajiors printed
in the city of Washington, a list of all the patents f«)r
discoveries, inventions, and improvements, which shall
have expired within the year immediately preceding, with
the names of the patentees, alphabetically arranged.

SEcrio.v 2. And be it further enacted. That application
to Congress lo jtrolong or renew the term of a patent,
shall be made before its expiration, and shall be notified

Latent laws. loa

ACT OP 1832, CHAP. 162, §§ 2, 3. OBSOLETE.

at least once a month, for thnn' months before its presen-
tation, in two nc'\vs]>ai)irs )irintttl in the city of Wash-
in2:ton, and in one of tlie newspapers in which the laws
of the United States shall be jmblishcd in the State or
Territory in which the patentee shall reside. The jjctition
shall set forth particularly the grounds of the api)lieation.
It shall be vcritied by oath ; the evidence in its support
may be taken before any judge or justice of the peace; it
shall be accompanied by a statement of the ascertained
value of the discovery, invention, or improvement, and
of the receipts and expenditures of the patentee, so as to
exhibit the profit or loss arising therefrom.

1. Under the patent laws, prior to 18;)6, if a patent was renewed, it
was 3 new grant, indcpcnrlcnt of the old, and tlie patentee was entitled
to the sole and exclusive Ijcnclit thereof, unlesg the licensees or as-
signees had, by their original grant, secured to themselves by express
covenant or grant, a rifjht to the benefit of the renewed patent. Wash-
burn V. Gould, 3 Story, 135. — Story, J. ; Mass., 1844.

2. Prior to this statute, the only mode of prolonging tho term of a
patent beyond the original grant, was by means of private acts of Con-
gress upon individual applications. Wilson v. Jiosscau, 4. How., 685.

Nelson, J. ; Sup. Ct., 1S45.

Section 3. A?id be it further enacted, That wherever
any patent which has been heretofore, or shall be here-
after, granted to any inventor in pursuance of the act of
Congress, entitled " An act to promote the progress of
useful arts, and to repeal the act heretofore made for that
purpose," passed on the twenty-first day of February, in
the year of our Lord, one thousand seven hundred and
ninety-three, or of any of the acts sujiplennntary thereto,
shall be invalid or inoperative, by reason that any of the
terms or conditions prescribed in the third section of the
said first-mentioned act, have not, by inadvertence, acci.
dent, or mistake, and without any fraudulent or deceptive

104 PATENT LAWS.

OBSOLETE. ACT OT 18:J2, CDAP. 1G2, § 3.

intention, boon complied with on the part of the said
inventor, it shall be lawful for the Secretary of State,
upon the surrender to him of such patent, to cause a new
patent to be granted to the said inventor for the same
invention for the residue of tlie period then unexpireil, for
which the original patent was granted, upon his compli-
ance with tlie terms and conditions prescribed in the said
third section of the said act. And, in case of his death,
or any assignment by him made of the same patent, the
like right shall vest in his executors and administrators,
or assignee or assignees: I^ovidnf, /loircrf r, That such
new patent, so granted, shall, in all respects, be liable to
the same matters of objection and defence as ^ny original
patent granted under the said first-mentioned act. But
no public use or privilege of the mvention so patented,
derived from or alter the grant of the original patentj
either under any special license of the inventor, or with-
out the consent of the patentee that there shall be a free
public use thereof, shall, in any manner, prejudice his
right of recovery for any use or violation of his invention
after the grant of such new patent as aforesaid.
Approved July yd, 1832.

1. Tho provision of this section is siisceptiblo of but one construe-
tion, and that is. tlint tho pntcnteo may sustain an action for anj use
or violation of \nn invoution, afu-r tijc prniU of the now patent. No
prior uso of a (IcfcM'tivo pait'iit can awthorizo tho use of t}io invention
after tho emanation of tho ronowod pntont. StimpM>n r. WcAtchester R.
li., I How., 402.— McLean, J.; Sup. Ct., ]8\r>.

2. To privo to tho palbnloo tJio fruit.-^ of liis invention was its ohjoct,
whicli would \k> dofciittd, if a right could Ik? fouudo<l on a uAe subso-
quont to the ori^'inal patent, iind prior to the renewe<l one. Ibid.. 't(>2.

3. Tlic provJHo of tlii.s Hectiou i.s in iininnanco of the prin«"ii)leH laid
down by tlie .Supn-me Court in Pentuxk v. IHakujur, J IVi., 1 (ls'29); in
Grant y. limjmontl, fJ Vvi., 2\\-2\b (\KV1)\ and in Shaw v. Cooper, 7
Pot, 311, 315 (18;!3j. ilcClurg v. Kimj-land, 1 How., 207.— Baldwix,
J.; tiup. Cl, I8i3.

PATENT LAWS. 105

ACT OF 1832, CHAP. 203. OBSOLETK.

4. As the exception in the proviso ia hmited to the use of the inven-
tion under a special hot-nse after tiie grant of the original patent, it
leaves till" use jirior to the :ipi)lication for such patent dearly obnoxious
to the princi|ilo establislietl in I'unnnrk v. Dialoijuc, 2 Pet., 1 ; whereby
the patent would become void. Ibid., 207.

ACT OF 1832, CHAPTER 208.
^ 4 Statltes at Lar(;e, 577.

[OUolete: Repealed hy Act o/1836, § 21.]

An Act concerning the issuing of patents to aliens, for
useful discoveries and inventions.

Be it €7iactedy bi/ the Senate and House of Represent-
atives of the United States of America in Congress
assembled. That the privileges granted to the aliens de-
scribed in the first section of the act, to extend the privi-
lege of obtaining patents for useful discoveries and in-
ventions to certain persons therein mentioned, and to
enlarge and define the penalties for violating the rights
of patentees, approved April seventeeiitii, eighteen hun-
di"ed, be extended, in like manner, to every alien, who,
at the time of petitioning for a patent, shall be resident
in the United States, and shall have declared his inten-
tion, according to law, to become a citizen thereof: Pro-
vided, That every patent granted by virtue of this act
and the privileges thereto appertaining, shall cease and
determine and become absolutely void without resort to
any legal process to annul or cancel the same in case of a
failure on the part of any patentee, for the space of one
year fiom the issuing thereof, to introduce into public
use in the United States the invention or improvement
for which the patent shall be issued ; or in case the same
5*

IM PATENT LAWS.

ACT or 1836, CUAP. 367, § 1.

for any period of six months after such introduction shall
not continue to be jiuldioly used and apjilicd in the
United States, or in ease of failure to become a citizen of
the I'nited States, aj^reeably to notice given at the earli-
est period within which he shall be entitled to become a
citizen of the United States.
Approved July 13th, 1832.

ACT OF 183C, CHAPTER 357.

5 Statutes at Large, 117.

[This Act sdll in Force.]

An Act to promote the progress of the useful arts, and
to repeal all acts and parts of acts heretofore made for
-that purpose, (a)

Section 1. J)e it enacted by the Senate and House of
Jirpresentatives of the United States of America in Con-
gress assci/th/e(f, That there shall be establislied and at-
tached to the Department of State (A) an othce to bo
denominated the Patent Office, the chief officer of which
shall be callc<l the Coniniissioner of Patents, to be ap-
jKiinted by the President, by and with the advice and
consent of the Senate, whose duty it shall be, under the
direction of the Secretary of State, to superintend, exe-
cute, and i)erform all such acts and things toiu-hing and
respecting the granting and issuing of patents for new
and useful discoveries, inventions, and improvements, as
are herein provided for, or shall hereafter be, by law,
directed to be done and performed, and shall have the
charge and cusioily of all the books, records, papers,
models, machines, and all other things belongitig to said

PATENT LAWS. 107

ACT OP 1836, CHAP. 357, § 1. IN FORCE.

office. ■ Ami saifl Commissioner shall receive the same
conipc'iisatioii ('•) as is allowed by law to the Commis-
sioner of the Indian T)i'j»;irtmi'nt, and shall be entitled to
send and receive letters and packages by mail, relating to
the business of the office, free of postage, {d)

(a) Policy of the Patent Laws.

1. Many of the provisions of our patent acts are derived from the
principles and practice vrliich have prevailed in Knfj:land. And though
the known and settled construction of the Knplish statute of Monopo-
lies, by tiieir coiirts of law, has not been received by our courts with
nil the weiirlit of authority, yet tlie construction of that statute by the
Knglish courts, and the principles and practice which have regulated
the grants of Englisli p,itcnts aflbrd materials to illustrate our statute^
Pennncky. Dialogue, 2 Pet., 18.— Stouy, .1. ; Sup. Ct., 1829.

2. The intention of the patent laws is to promote the progress of the
useful arts, by the benefits granted to inventors, not by those accruing
to the ])ublic, after the patent has expired, as in England. Intended
for their I)enefit and security, the law should be construed favorably
and beneficially in fiivor of patentees. Whitney v. Emmett, Bald.,
3-21-32:{.— Balpwik, J.; Pa, 18;il.

3. The settled purpose of the United States has ever been to confer
on the authors of useful inventions an exclusive right in their inven-
tions for the time mentioned in their patent. It is the reward stipu-
lated for tlie advantages derived by the public from the exertions of
the individual, and is intended as a stimulus to those exertions. The
laws passed for such purpose should be construed in the spirit in
which they have been passed, and should be fairly executed by the
United States. Grant v. Raymond, 6 Pet., 241, 242. — Marshall, Ch.
J.; Sup. Ct., 1S32.

4. The great object and intention of the patent acts is to secure to
the public the advantages to be derived from the discoveries of indi-
viduals, and the means it employs are the compensation made to those
individuals for the time and labor devoted to those discoveries, by the
exclusive right to make, use, and sell the thing discovered for a limited
time. Ibid., 24."^.

5. Tiie Constitution of the United States, in giving authority to Con-
gress to grant patents for a limited period, declares the object to be to
promote the progress of science and the useful arts, an object as truly
national and meritorious, and well founded in public policy, as any
which can possibly be within tlie scope of national protection. Hence
it has always been the course of the American courts — and latterly of
the Englsh — to construe patents fairly and liberally, and not subject
them to auv overnice and critical refinements. Anus v. Howard, 1

108 PATENT LAWS.

or roRcB, ACT or 1836. chap. 367, § 1.

Sumn 485— Story. J.; Mans.. 1833. Blanchard v. Sprague, 3 Sumn.,
6U9. 540. — Stobt. J.; Mass., 183;>.

G. Tho patent law jriveH to iiiventora a monopoly, but not in an
otli"U3 Bonsc. It takes notliiun: from the i-ommunily at larpc, but
Bct-urcs to tlioni tlic proatoRt licnctit.'^. To BCfiiro to invontors the
remuneration for tlioir time, inpcniiiiy, nnd ex{X'nso, a lilieral construc-
tion should bo (liven to the law. liniok.s v, BirkneU, 3 MeLoan, 4:!7. —
McLean-, J.; Ohio, 1844. Parker v. J/<iworth, 4 Mel^an, :»72.— Mc-
Lean, J.; 111., 184S. Parker V. Stik.i. 6 McLean, 54, 6G.— Leavitt,
J.; Ohio, 1849. Bloomer v. StolU-y, 5 McLean, 162.— McLean, J.;
Ohio, 1830. Parker v. Sears, MS.— Giuer, J.; Pa.. 1850. Go>4\iear
V. Railroads, 2 Wall, Jr., 363. — GniER, J.; N. J., 1833. Allen v. //«n-
(«-, C McLean, 300.— McLkan. J. ; Ohio, IS.'ir..

7. ratonU< are not to be treated as mere monopolies, odious in the
eyes of tiie law, and therefore not to be favored ; nor are they to be
construed with the utmost ripor, as Mr ictissiini juris. Ames v. Uoward,
I Sumn., 4S5. — Stohy, J.; Mass., 1833.

8. Tlio patent laws are not made to encourape monopoliee of what
before belonged to others, or to the public — which is the true idea of a
monopoly — but the desipn is to enconrnpo penius in advancinp tho
aria, llirough Hcience and inpenuity, by protectinp its prodmtious of
what did not before exist, and of what never belonped to another per-
Bon, or the public. DaioU v. Brown, 1 Wood. & Min., 57. — Woodbury,
J.; Mas.s., 1845.

9. Tho patent acts have been passed for the promotion of the useful
arts — for tho ultimate benefit of tho republic, and not for tho solo
benefit of inventors and patentees. It is for the ultimate benefit of the
public, that privilepes are pranlod to inventors, allowed to operate, and
protected fur limited times for their direct l>enerus. Dai/ v. rmon Rub.
Ok, 3 Blatchf, 500.— HaluJ.; N. Y., 1856. KendiM^. W'wsor, 21
JIow., 327, 328.— Daniel, J.; Sup. Ct., 1858.

10. The power granted by the patent laws is domestic in its chamo-
ter, aud neossarily confined within the limits of the rnitetl Stales.
The patent acts do not and were not iutendiMl to o|>erttte beyood the lim-
its of the United Stiites. and the patentee's ripht of jiroiwrty and exclu-
sive use cannot extend beyond llio limits to which the law itself is con-
lined. Broun v Dwhrmw, \'J How.. 195,- Taney, ("h. .1. ; Sup. Ct., 1856.

See also I>i(iFaT I'at. C.v8E.s, title Patent, 1'. 1; Statite.s, B. 3.

{li) The Patent Office is now atliiched to the Department of the In-
terior, and the SecreUiry of the Int«.'rior |>orforins all the duties con-
nected therewith formerly devolving uiK>n tho Secretary of Slate. Act
of 184;». 8 2.

(d) Tho franking jrivilego was annulled by tho " Act to reduce the
raU'S of poBtupe," ai.piuvod March 3d, 1845; but was again restored
by tho " A«a to esUbliidi i-erUiin |)osl routes, and for other purposes,"
•pprovod March 3d, H 17. See al.^o act of 1848, § 4.

PATENT LAWS. 109

ACT or 1836, CHAP. 357, g 2. IN rOBCE.

Section 2. And be it further enacted, That there shall
be, ill 8aid office, an inferior officer, to 1)0 appointed by
the said principal officer, with the apjjroval of the Secre-,
tary of State, to receive an annual salary of seventeen
hundred dollars {'/), and to be called the Chief Ch-rk of
the Patent Office ; who in all cases during the nece'^sary
absence of the Commissioner, or when the said principal
office shall become vacant, shall have the charge and
custody of the seal, and of the records, books, papers,
machines, models, and all other tbings belonging to the
said office, and shall perforin the duties of Commissioner
during such vacancy, {/j) And the said Commissioner
may also, with like approval, appoint an examining clerk,
at an annual salary of fifteen hundred dollars ; two otiier
clerks, at twelve hundred dollars each, one of whom shall
be a competent draughtsman ; one other clerk, at one
thousand dollars ; a machinist at twelve iiundred and
fifty dollars ; and a messenger, at seven hundred dol-
lars, (c) And said Commissioner, clerks, and every other
person appointed and employed in said office, shall be
disqualified and interdicted from acquiring or taking,
except by inheritance, during the period for which they
shall hold their a[)pointmeuts, respectively, any right or
interest, directly or indirectly, in any patent for an inven-
tion or discovery whicli has been, or may hereafter be,
granted.

(a) Salary increased to $2,500 by act of 1861, § 4.

(b) 1. Uuder this section the chief clerk has been considered as the
"acting Commissioner." whenever the Commissioner has been unable
to discliarge his duties from any necessary cause, as well as when a
vacancy occurs from cleatii or rcsiguaticni. Woodtiorth v. Ha!L, 1 Wood.
& Min., o92. — 'WoODBLKY. J. ; Mass. 1S46.

2. The appointment of an acting Commissioner will be presumed to
have been duly made, where drawn in question, incidentally or coUat-

110 TATEXT LAWS.

IX roRCE. ACT or 183«, chap. 357, §§ 2-4.

orallr. if it be Bliown that the person certifying is in the public dis-
cliiirpo of those diiticH. Wo-idworth v. Jlalt. 1 Wood, k Min., 255. —
Wctoi'DiHY, J. ; Mass. ISJ'J.

3. The cortilioatc to a patent made by a porf^on as 'octinR rommio-
sioncr," is Kj^al and siiiricii-nl. Wiison v. /.'Awau, 4 How , 6(13, 061. —
Uklsox, J.; Sup. Ct., 184r>. Woodn'orth v. //.///. 1 WihkI. A Min., 254.
— WO(M>niHV. J.; Mas.s., 1810. York db Aid. K. I\. v. U'l'naru, 17 How.,
41.— (.TlMi-iiKi.U .r.; Sup. Ct., 1854.

See also I'iuk-st Tat. Cases, title Commissioner or Patents, G.

(r) 1. As to tlie appointment of additional examiners, see act of 1837,
§ 11 ; act of IS.'tO. 55 1 ; act of ls.^>f., ^§ 9, 10; and act of ISCO, § 6.

2. The Commissioner of Patent.s is now authorized to appoint addi-
tional examiners, not exceeding four in each class. Act of 1861, § 7.

Section 3. And Iw it further enacted. That the said
principal oflictT, ami ovory other person to be apjiointed
in the said office, shall, before he enters upon the duties
of his office or appointment, make oath or affirmation
tridy and faithfully to execute the trust committed to
him. And the said Commissioner and the Chief Clerk
shall also, before entering upon their duties, severally
give bonds, with sureties, to the Treasurer of the United
States, the former in the sum often thousand dollars, and
the latter in the sum of five thousand dollars, with condi-
tion to render a true aixl faithful account to him or his
successor in office, qtiarterly, of all moneys which shall be
}>y them lespi'ctively rect'iv('<l f )r ilutit'S on jtatents, and
for copies of records and <lra\vings, and all otiier moneys
received by virtue of said office.

SE<-rio.N 4. And be it further enacted, That the said
Commissioner hIi.iII cause a seal to be made an<l provided
for the Hai<l onicc, with such device as the President of
the United Slates shall approve ; and cojiies of any
records, books, papers, or drawings, belonging to the
said office, un<ler the signature of the s.aid Commissioner,
or, when tlie office shall be vacant, under the sigiiattiro

r ATI-: NT LAWS. Ill

ACT OF 1836, CHAP. 357, § 4.

of the Chief Clerk, with the said seal affixed, shall bo
competent evidence in all cases in which the orii^inal
records, books, papers, or druwint^s could be evidence. ('/)
And any person making application therefor may have
certified copies of the records, drawings, and other papers
deposited in said office {/>), on paying, for the written
copies, the sum of ten cents for every page of one hun-
dred words ('•) ; and for copies of drawings, the reason-
able expense of making the same.

(a) 1. A certified copy of an assignment is competent evidence, and
the party cannot be required to produce the originals. Brooks v. Bick-
neli, 3 McLean, 430.— McLean, J.; piiio. 1844.

2. Certified copies of papers and drawings, on file in the Patent
OflSce, must be received in evidence wlien oD'cred. If they are dis-
cordant, they may destroy the eflect of each other; but they need not
concur in every particular. Emerson v. IIo(j<j, 2 Blatchf., 12. — I3ktt.s, J. ;
N. Y., 1845.

3. Certified copies of papers in the Patent Office are prima fade evi-
dence of the genuineness of tlie original, on file, and absolute evidence
of the correctness of the copies from the records. Parker v. Haworth,
4 McLean, 371.— McLeax, J.; 111., 1S48.

4. A certified copy of an assignment of a patent, from the Patent
Office, is prima Jarw evidence of the genuineness of the original. Lea
V. Blandy, M8.— McLean, Leavitt, JJ. ; Ohio, 1860.

5. A former and defective certified copy of a patent may be corrected
by a full and corrected certified copv. Brooks v. Bickndl, 3 McLean,
434.— McLean, J. ; Ohio, 1841. Woodworth v. Hall, 1 "Wood, k Min.,
260.— "WooDHriiY, J. ; Mass., 1846.

ib) 1. The Commissioner of Patents having under his care and cus-
tody the records as to patents, it is his duty to give authenticated
copies to any person demanding the same, on payment of the legid
fees; but a demand accompanied by rudeness and insult is not a legal
demand. Boyden v. Burke, 14 How., 583. — Grier, J.; Sup. Ct., Is52.

2. The officer intrusted to give copies of papers or drawings, in pat-
ent cases, has no concern with the purjwse for which asked. The
policy of the law rather requires than forbids that cojiies should bo
given when asked for. Anon., 1 Opin., 171. — Pinckney, Attv.-Uen. ;
1812. . J .

(c) Copies of papers cannot be taken by third persons. They must
be made by the proper officer, and the fees paid therefor. Anon., 2
Opin., 436.— Taney, Atty.-Gen. ; 1831.

See also Digest Pat. Cases, title Copies of Papers. *

112 PATENT I.AW8.

IN rURCB. ACT OF 1836, CHAP. 351, § 6.

Sectiox 6. [Enlarged by act of 1837, § 6.] And be it

further tnnc(nl, That all patents issued from said oflSce
8liall bo issued in the name of the United States, and
uuJir the seal of said uiliec, and be sij^iied by the Sei-re-
tary of State {ft)^ and oountersicjni'd by the Commissioner
of the said office, and shall be recorded, together with
the descriptions, specifications, and drawings, in the said
office, in books to be kept for that purpose. Every such
patent shall contain a short description or title of the
invention or discovery, correctly indicating its nature and
design (//), and in its terms grant to the applicant or ap-
plicants ((•), his or their heirs, administrators, executors,
or assigns, for a term not exceeding fourteen years (</),
the full and exclusive right and liberty of making, using,
and vending to others to be used, the said invention or
discovery (e), referring to the specitications for the par-
ticulars thereof, a copy of which shall be annexed to the
patent, specifying what the patentee claims as his inven-
tion or discovery. (/)

(a) Now i^iprned by tlie Secretary of the Interior. Act of 1849, § 2.

\b) The phrasooluf^y of tliis act, in rcsiwct to what the palout shall
contain, was chan^rctl from that conlaiiu'd in tlie acts of 17".)0 and 17'.i3,
in order to confonn to the upn^o and construction under tlio act of
1793 (of inserting the whole dooriptive i)ortion of the |K«lition in the
pat<nl), as such course HOinetimes was niiBundorstood, and led to mis-
constructions. Hogg V. Eiiicraon, 6 How., 4S2. — Wooi)»i;RV, J. ; Sup.
Ct.. 1H.17.

(d) 1. The terra of the patent is now extended to BCTentcon years.
Art of 1S»;1, g HI.

2. A patc-nt may bo isHued for a less temi of years than fourteen.
The resiriction is en the masimwn only, not on the minimuin. Suili-
van'i Case, Opin., Gilpin's IvJ., 1841, 108.— Whit, Alt.v.tJcn. ; 181rt.

3. A patentee under tliis Kection is not obli^red to claim the whole
fourteen yearn. He m ly waive his claim to a part of ilic icnn. in faror
of the public, by antodntin^' il, or he may take a patent for a term less

I'ATKNT LAWS. 113

ACT OF 1836, CUAP. 357, § 5. IN FOBCa.

thnn fourteen years, or ho may Boek protection ajjainst Rtrnnpers for six
montlis i)reviou8 to tlie issia-. if in that time ho lias made application
iind is seeking in good failh and with reasonable diligence lo perfect
his specifications. Cushman, Ex parte, MS. (App. Cas.) — Dc.nloh, J.;
D. C, 1H53.

('■) I. The exchisivo grant of a patent is the construction and use of
tlie thing patented. Tlio patent hiw protcct-s the thing patented, and
not the product. Boyd v. Brown, 3 McLean, 297. — McLea.v, J. ; Ohio,
1843.

2. It does not cover the products of the patented machine. Ibid,
297. Simpson v. Wilson, 4 How., 711.— Nklson, J.; Sup. Ct., 1845.
Goodyear v. The Railroads, 2 "Wall, .Tr. — Grieii, J. ; N. J., 1853.

3. At common law. an inventor has no exclusive right to make and
vend his invention, after he has published it to the world. Such ex-
clusive right is the creature of tiie statute, which also prescribes the
remedy for its violation. Dudley v. Mayhew, 3 Comst., 13-17. — Steuno,
J.; N. Y., 1849.

4. The fact that a party has a patent, giving him the exchisivo right to
make, use, and sell a particular medicine, does not confer upon him the
right to practise as a physician, and vise such medicine in any particu-
lar State, except in conformity with the laws of such State. Jordan v.
Overseers of Poor, 4 Ohio, 310. — Lane, J.; Ohio, 1831. Thompson v.
Stoats, 15 Wend., 39o.— Nelson, J.; N. Y., Is30.

5. A party lias not necessarily a right to use an invention, in any
State, merely because ho has a patent for it under the United States.
Vannaniw Paine. 1 Harrington, G8. — Robinson, J.; Del., 18:{3.

6. Where V. had a patent for a plan for constructing and drawing
lotteries, and had ol)tained a patent therefor, but there was a State law
prohibiting lotteries, except under certain conditions, which the plain-
tiff and his associates had not complied with, Held, that V. was not
entitled to any relief by way of injunction or othcrwi.<e, for any alleged
use of his invention in the State. Ibid., C9.

1. The Commissioner of Patents, in issuing letters patent, does not
warrant the same, nor does the patent bind tlie Government more than
it does private persons; but the validity of such patent is open to
inquiry, eiilier in wliolo or in part, whether at the instance of private
persons or of the Government. A patent does not conclude anybody.
Mortons Antjest)ietiC Patent, 8 Opin., 27G.— Clshino. Atty.-Gen. ; 1>56.

8. Letters patent issue subject to all legal objections that m.\v be
brought against them. Shreeie v. United States, MS — LoRiNO, J. ; Ct.
Claims, 18.59.

9. In using the word patent, it is to he understood as including the
patent, the specification attached to it. with the model and drawing's in
the Patent OtBco. Whitney v. Eiumett, Bald., 314.— Baldwin, J.; Pa.,
1831. Jfo'jg V. Einersun^ii How., 478, 482, 485. — Woodbury, J.; Sup.
Ct., 1847.

10. Under the act of 1790, a patent was made pnma/ncie evidence;

114 PATENT LAWS.

IX roncE. ACT or 1836, chap. 357, §§ 6, 6.

that act was rcpc.nled by the not of no:^, and that provision was not
re-enacted in it. lleiioe a patent \va.M not received in courts of justice
as even finui facie evidence tliat the invention patented was new or
useful, but tlio piuintiff was bound to i)rovo tliese facts in order to make
out his case. But tlio act of 183(') introduced a new system, and under
it — its inquisition and examination — a jnitent is received ns prima jac e
evidence of tlio truth of the facts stated in it. Coniiwj v. Durdtn, 15
How., 270, 27 1 .— ( jRlEit, J. ; Sup. Ci., 1 853. AUen v. IIuntT. 6 McLean,
304, 305.— MiLeax. J.; Ohio, 1S55. T.ese v. Plicljs. 1 McAllister, 4'.t.
— McAllistek, J.; Cal., IbSJ. Cahoon v. King, MS.— Clifkoud, J.;
Me., 1859.

(/) Under the patent laws since 1836, the specificaUon is always
annexed to and forms a part of the letters patent. Pitts v. \Miitman, 2
Storv, G21.— Stouv, J.; Mass., 184;(.

See also DiotST Pat. Cases, title rATE.NT, D. 1, 2 ; E., II., I., P., 1, 2.

•

Section G. And be it further enacted. That any person
or persons, haviitg discovered or invented any new and
usctul art ('/), machine (/v), manntacture, or composition
of matter (r), or any new and useful improvement (t/) on
any art, macliine, manufacture, or composition of matter,
not known or used by others (<•) before his or their dis-
covery or invention (/") thereof, and not, at the time of
his application for a patent, in public use or on sale, witli
his consent or allowance, as the inventor or discoverer;
and shall desire to obtain an exclusive proj)erty therein,
may make application, in writing, to the Commissioner of
Patents, expressini; such desire, (//) and the Commissioner,
on due j)rocer(lin^8 had, may grant a patent tlu-refor.
But before any inventor shall receive a j)atent for any
Buch new invention or discovery, he shall deliver a writ-
ten description of his invention or discovery, and of the
manner and pmeess of making, constructing, using, and
compounding the same, in such full, clear, and exact
terms, avoiding unnecessary prolixity, m to enable any
pcrs-.n skillcil in the art or science t<> which it appertains,
or with which it is most nearly connected, to make, con

PATENT LAWS. 116

Acr OF 1836, CHAP. 357, § G. IN FOnCE.

struct, compouiKl and use tlio same (//) ; and in case of any
machine, he shall fully explain the ])riMoii>le and tlio
several modes iij which he has contemplated the applica-
tion of that principle or character by which it may be
distinguished from other inventions (/) ; and shall par-
ticularly specify and point out the part, improvement, or
combination, which he claims as his own invention or
discovery. (_;) lie shall, furtbenuore, accompany the
whole with a drawing, or drawings (A), and written
references, where the nature of the case admits of draw-
ings, or with specimens of ingredients, and of the compo-
sition of matter, sufficient in quantity for the purpose of
experiment, where the invention or discovery is of a
composition of matter; which descriptions and drawings,
signed by the inventor and attested by two witnesses,
shall be tiled in the Patent Office ; and he shall moreover
furnish a model of his invention, in all cases which admit
of a representation by model, of a convenient size to
exhibit advantageously its several parts. (/) The appli-
cant shall also niake oath or affirmation {f/i) that he does
verily believe that he is tlie original and tirst inventor or
discoverer of the art, machine, composition, or improve-
ment, for which he solicits a patent, and that he does not
know or believe that the same was ever before known or
used ; and also of what country he is a citizen ; which
oath or affirmation may be made before any person
authorized by law to administer oaths. (;<)

(a) 1. When art is spoken of as the subject of a patent, it is not an
art in the abstract, but it is an art as explained in the spccilication,
and illustrated by a machine, or model, or drawings, when of a charac-
ter 80 to be. It means a useful art or manulacture, which must be
described with e-iactnesa in its mode of operation, and which can be
protected only in tlie mode and to the extent described. Smith v.
Downing, MS. — Woodbury, J.; Mass., 1850.

lin PATENT LAWS.

IH roRca ACT or 1836, chap. 357, § 6.

2. In the Enplish patent laws Ihe word "art" is not used at <ill. In
ours, its will as in our Clln^ililutio^. the word art means a useful art,
or a manufacture whidi is l)onoflcial. Ibid.

3. A process, eo nomine, is not the Kuhjcet of a patent, under our
laws. It is included under the general t<>nn "useful art," and an art
may require one or more processes or maelnnes, in order to produce a
certain a'sult or raaiuifaclure. Coming v. Burden, 15 IIow., 267. —
Gkier, J.; Sup. Cl., 1853.

See also Digest Pat. Cases, titles Art; Process.

(t) 1. The term machine includes every mechanical device or combi-
nation of meehanicid powers and devices to perform some function and
produce a certain efleet or result. Corniwj v. Burden, 15 How., 207. —
Grier, J.; Sup. Ct., 1853.

2. A patent cnnuot be for the function or abstract effect of a ma-
chine, but only for the machine itself. Ibid., 2«8.

3. A now process is usually the result of discovery ; a machine of
invention. Ibid., 26S.

4. One may discover an improvement in a process, irrespective of
any particular form of machinery; and another may invent a labor-
saving' machine, by which the op<ratiou or process may be performed,
and each mav l>e entitled to a patent. Ibid.. 2r>S.

6. The word "madiine'" in the statute includes new combinations
as well as now organizations of mechanism. Wintermute r. liedingUm,
MS.— WiUJOX, J.; Ohio. 1H5G.

See also Digest Pat. Cases, title Machi.vbs. A.

(c) 1. It is not necessary that every inRrcdient. or that any one in-
gredient used by the patentee in his invention, should Ik3 new or »m-
used before, for the purpo.so intended. ■ The true question is whctlier
the combination of malei ials used by the patentee is substuulially new.
liyan v. h'"oduin. 3 Suiiui., 518.— SrORY, J. ; Mas.s., 1830.

2. There is a wide dilVerence between the invention of a new method
or process, by which a known fabric, jjroduct, or nianufaeturo is pro-
ducr-d In a better and cheajK-r way. and the discovery of a new tx>in-
potmd, BubsUiui-e, or manufacture, 'having qualities never found to exist
together in any otht-r material. G^jodyear v. Tlie liailroada, 2 WalL,
Jr , 30O — UriiKiu J ; -N'. J , 1853.

3. In the first case tho inventor can patent nothing but his process,
and not his comp<»«ition of matter; in the latter, »)Oth are now and
oriifinal, and both patentable ; not severally, but as one disc«jvery or
invention. Ibid., 3til.

See hL<o Digest Pat. Cases, titles CoMPoamoN op .Matteu; Manu-
rACTCBE, .\urri.E ok.

(d) 1. An '• unproved machine," ami "an improvement on a ma-
chine," ore Hubauuli.illy the same. li-trrrU v. lla'L 1 Mas.-*., 476. —
Story, J.: Mass., isH. Evan$ v. E^itoa, 3 Wheat., 517.— Marshall,
Ch. J.; Sup. Ct., IMH.

'i. An improvement has C8.senlial reference to a subject-matter to bo

PATENT LAWS. 117

ACT OP 1836, CBAP. 357, § 6. IN rOBCK.

improved. It is not an oripinal, but cinbraceB, and eithtT adds to or
altors, the nri.Lrinal. I'aje v. b\rnj, M.S. — Wii.kiNs, J.; Mich., 1857.

Soo also I)i(;K.sr Pat. Case.s, title Imi'Uuvkmk.nt.i.

(e) 1. Tho words "l)y others. " in this sci-tioii, wero probably added
by way of ccplanation of the douljt formerly entertained on the snl)-
jcct, wlietlier a ii.se i)y tlie patentee himself of hi.s invention before
application, would deprive him of a riplit to a patent; and Xo conlirin
the decision in Fennock v. I'uil'igue, 2 Pet., 18-22, that a prior use, to
invalidate a patent, must have been by others than tho inventor. Heed
V. Cutter, 1 Story, 597. — Story. J.; Mass., 1841.

2. Sueli words do not denote a i)lnrality of persons by whom the use
should be known, but that the use should be known by some other
person or persons than the patentee. Ibid., 597, 598.

3. The words " not known or used" are qualified by section 15, and
mean a knowled<;e or use existing in a manner accessible to the pub-
lic. GayUr v. Wilder, 10 How., 197.— Taney. Ch. J.; Sup. Ct., 1850.

As to priority of invention, see also Digest Pat. Cases, titles Inven-
Tio.v, C. ; Inventor, B. ; and Prior Knowledge.

(/) 1. Under the Constitution and laws of tho United States re-
specting patents, discovery is synonymous with iniention. Kemper, Ex
parte, MS. (.\pp. Cas.)— Crancii. C'h. J.; D. C, 1841.

2. An invention resting in mere theory, or in intellectual notion, or
imperfect experiments, and not reduced to practice, is not patentable.
Beedv. Cutter. 1 Story, 599. — Stouy, J.; Mass., 1841.

3. Conceiving the idea of an improvement or machine is not inven-
tion. Uildreatli v. Heath, MS. (App. Cas.) — Ceanch, Ch. J. ; D. C,
1841.

As to what is invention, see Digest Pat. Cases, title Intextion. A.,
and the several titles, Art; Composmon of Matter, A.; Combina-
tion; Discovery; Improvements, A.; M.a.ciiines. A. ; Maxckactlbb,
Article op ; New Application ; Principle.

{g) Under the present practice of the Patent Office, two distinct and
separate inventions cannot bo included in one application, except
where they have a necessary and dependent connection with each
other, and all co-operate in attaining the end sought.

(}i) 1. The descri]>tion should be accommodated to the comprehen-
sion of any practical mechanic, without taxing his genius or inventive
powers. Gray v. James, Pet. C. C, 401. — W.^shixgto.v, J. ; Pa., 1817.

2. It is not enough, however, if, from the description, some very,
skilful artisan could make and use it, but persons of ordinary skill
must be able to do so ; and must bo able not only to construct but to
use tho machine for a useful j purpose. Lippincott v. Keily, 1 West. Law
Jour., 514. — Irvin, J.; Pa.. 1S44.

3. No description will fuldl the demands of the law but such as is
of record, and of which all the world may have the benefit. Dixon v.
Mcnjer, 4 Wash. 73.— Washington, J. ; Pa.. 1821.

4. The object of this provision is twofold: 1, that when the term baa

118 PATENT LAWS.

IX rOBCB. ACT or 1836, OHAP. 367, g 6.

expired, and the invenlion Incomes pviblie pro|xTty, such means of
iuformation may 1)C accessible tliroiifjh the I'atent Otlieo as will enable
others to avail themselves of its benefits; and 2, that while the patent
Is in force, others may be inrormed of the precise claim of the patentee,
and not ipnoranilv infringe hi8 exclusive ri^lit. Parker v. SliUa, 5
McLean, 5a.— Leavitt, J.; Ohio, 1849. Brook.s v. liirkiitU. 3 McLean,
441._McLkas, J. ; Ohio, 1844. Jiulson v. Moore, MS. — Leavitt, J.;
Ohio, isr.u.

5. lUit the specification need not particularly describe the operation
of mecliani.sm which is well known by persons acquainted with the
art Kiifass v. Schuylk-ill .BanA, 4 Wash., 14. — Washington, J. ; I'a.,
1820. Brooks v. BickuM, 3 McLean, 447, 448.— McLean, J. ; Ohio,
1844. Emerson v. Uogg. 'J Blatclif.. 9.— Betts, J.; N. Y.. 1845.

See also Dkjest I'at. C.vsks, titles Composition of Matter, B. ;

SPECLriCATIO.V, B. ; IMI'ROVK-MENT, B.

(i) 1. This section seems dearly to show that a patentee may law-
I'liUy unite in one patent all the modes of npiilyinir his invention con-
templated, and all the difll-rent sorts or raodilicatious of madiinery, by
which it may be applied, and if each were new the patent would cover
them all Wyttli v. ^tonc, 1 Story, 2!"2. — Story, J.: Mass., 1840.

2. It is the duty of an inventor to describe in liis specification the
several diflerent modes or devices or mo<liflcation3 known to liim of
his invention. Sarijeut v. Curler, 11 Mo. Law Kep., G55. — Curtis, J.;
Mass., 180.S.

See al.«o Digest Pat. Ca.se8, title Machines, B.

(j) 1. The summing up or claim is conclusive upon the right and
title of the patentee. Wyeth v. Stone, 1 Story, 28J. — Story, J.; Mass.,
1840.

2. The cLiim is tlie most material part of the specificatiou. Many v.
Jogger, 1 Blutchf, 37H.— Neijjos, J.; N. Y., 1848.

3. Altliough a patentee dix-s not e.xpro.ssly claim equivalents, ho is
undcrsiuod to embrace them, and in contemplation does embrace them.
Byam v. Farr, 1 Curt., 203. — Ci ktis, J.; Mass. 18J2.

See also l>i(iK«T I'at. ('ase,s, title rATKXTS. P. 5.

(k) 1. Drawing's annexed, and referred to in the B|)cciflcation, eon-
atitute a part thereof; and tliey may Ix' resorted to to aid the descrip-
tion, and to distiniTuish the thing patented from other things known
before, /iir/* v. Sawyer. I Mass., U. — SiOHV, .1.; Mass, l.si;.").

2. Referenc<'H t<> the drawings in the s|H-cilication are not requisite
to the validity' of a patent, unless they are necessary toon underst.'Uid-
ing of the invcMiliiin. Brtxiks v. Uickm-ll, 3 McU-an, 2tll. — .McLemc, J.;
Ohio, 1843. Wiiafiburn v. Gould, 3 Story, 133.— SioRY, J.; Ma.s.s., 1S44.

3. The deHcripiion of a machine or improvement, acconjpanied by •
drawing, may, in many coses, bo understood without refercnoea.
/bid., 202.

4. The drawings njay bo signed by the Inventor, or by his altomoj
for him. .^noo., MS.— Black, Alty.-GoD. ; 1859.

PATENT LAWS. 119

ACT or 1836, CHAP. 357, § 6.

5. Duplicate drawings are now required. Act of 1837, § 6.

6. DrawiiiffH .should be in diiplicilo, twenty inches by tifteen in size;
one on thick drawin^'-papcr, colored and shaded, and the otiicr on
tracing-cloth, and should be in per8|JCctivo, with detached sectional
and pUuio views.

7. In the case of designs, photographs may bo substituted for draw-
ings, but the " negatives " must be sent to the Patent Oflice.

See also Diokst Pat. Casks, title Duawixos.

(/) 1. Models and drawings arc a part of the letters patent, and may
be resorted to for clearer information respecting the invention de-
scribed in the specitication. Iligg v. Eimrson, G How., 485. — WooD-
BfRY, J. ; Sup. Ct., 1847. St'-phcns v. Salisbury, MS. — Morsell, J.;
D. C, 1855.

2. Models should be made of durable material ; and, if of wood, should
be stained, painted, or varnished, and should not be more than one
foot in length and height, unless a larger model is necessary to exhibit
the invention.

3. In the case of a design, which can be sufiBciently represented by a
drawing, a model may be dispensed with.

See al.xo Digest Pat. Cases, title Models.

(m) 1. The Uiking of the oath by the inventor is but a prerequisite
to the granting of a patent, and in no degree essential to its validity.
If, therefore, not conformable to the statute it is no objection to the
patent. WhitUmore v. Cutter, 1 Gall., 4.'?3.— Story, J.; Mass., ISl.'i.

2. The oath extends to all the schedule or specitication no less than
to the title of the invention. IIo<jg v. Einason, 6 How., 432. — Wood-
bury, J. ; Sup. Ct., 1847.

3. The declaration ailmitted under the English law cannot be sub-
stituted in place of the oath. Anon., 3 Opin., 532. — GiLi'i.v, Atty.-Geu. ;
1840.

4. Affirmation may be substituted in place of an oath, when the
person of whom it is required is conscientiously scrupulous of taking
an oath. Act of 1837, g 13.

5. As to the persons before whom the oath may be taken, when the
applicant is not, for the time being, residing in the United States. Act
of 1842, § 4.

See also Digest Pat. Cases, title Oath.

(n) 1. The act of 183G, sections 6 and 15, and the act of 1837, section
9, are to be construed, as to originality of invention, as though they
were embodied in one act. Smith v. Ely, 5 McLean, 84. — McLean,
J. ; Ohio, 184'.>.

2. The things specified in tliis section are prerequisites to the grant-
ing of a patent, and unless these prerequisites are complied with, a
party sued for an infringement of the patent may show that they have
not been complied with, and in that mode defeat the action of the sup-
posed inventor. Ramoin v. Mayor, dec, of Xew I'orA, MS. — Hall, J. ;
N. Y., 185G.

120

PATENT LAWS.

IN POBCK.

ACT or 183G, OHAP. 357, § 1.

Section 7. [Amended by act of 1839, §§ 7-1 1 : repealed
in part by act of 1H39, § 12 ; and act of 1SG3, § 1.] A)id
be it furt/ur t n<irie<I, That, on tlie tiling of any such ap-
plication, description, and specification, and the payment
of tlic duty hercitiarter jirovided, the Commissioner shall
make or cause to be made, an examination («) of the
alleged new invention or discovery; and if, on any such
examination, it shall not apjiear to the Commissioner that
the same had been invented or discovered by any oilier
person in this country prior to the alleged invention or
discovery thereof by the applicant, or that it had been
patentecl or described in any printed publication in this
or any foreign country, or had been in public use or on
sale with the applicant's consent or allowance prior to
the application (/>), if the Commissioner shall deem it to
be sufficiently useful (<•) and important, it shall be his
duty to issue a j)atent therefor, {d) But whenever, on
such exanjination, it shall ai)pear to the Commissioner
that the applicant was not the original an<l ilrst inventor
or disciiverer thereof (<), or that any part of that which
is claimed as new bad before been invented or discovered,
or patented, or descrSx'd in any j)rinted juiblication in
thLs or any foreign country, as aforesaid, or that the
description is defective and insufficient, he shall notify
the applicant thereof, giving him, briifly, such informa-
tion and n-ferences as may be useful in judging of the
propriety of renewing his a|iplication, or of altering his
Bpecilicatioii to c inbrace only that part of the invention
or discovery which is new. (,/") In every such case, if
the applicant shall elect to willidraw his appHcation, re-
lincpiisliing his claim to the model, he shall be entitled to
receive back twenty dollars, part of the duty required by

PATENT LAWS. 121

ACT OF 1836, CHAP. 357, § 7. IN FORCE.

this act, on filing a notice in writing of such elefction in
the Patent Office, a copy of which, certified by the Cora-
mi.ssioiicr, sliall be a sufficient warrant to the treasurer
for payiiijif back to the said applicant the said sum of
twenty dollars. (//) But if the applicant in such case,
shall persist in his claims for a patent, with or without
any alteration of his specification, he shall be re(|uirod to
make oath or affirmation anew (//), in manner a.s afore-
said. And if the si)ecification and claim shall not have
been so modified as, in the opinion of the Commissioner,
shall entitle the applicant to a patent, lie may, on appeal,
and upon request in writing, have the decision of a
board of examiners (<), to be composed of three disin-
terested persons, who shall be appointed for that pur-
pose by the Secretary of State, one of whom at least, to
be selected, if practicable and convenient, for his knowl-
edge and skill in the particular art, manufacture, or
branch of science to which the alleged invention apper-
tains; who shall be under oath or affirmation for the
faithful and impartial performance of the duty imposed
upon them by said appointment. Said board shall be
furnished with a certificate in writing, of the opinion and
decision of the Commissioner, stating the particular
grounds of his objection, and the part or parts of the
invention which he considers as not entitled to be pat-
ented. And the said board shall give reasonable notice
to the applicant, as well as to the Commissioner, of the
time and place of their meeting, that they may have an
opportunity of furnishing them with such facts and evi-
dence as they may deem necessary to a just decision;
and it shall be the duty of the Commissioner to furnish
to the board of examiners such information as he may
6

l':2 PATENT LAWS.

IN FoncK. ACr OF 183G, CHAP. 357, § 7.

possess relative to the matter under their consideration.

And on an examination and consideration of the matter
by such board, it shall be in their power, or of a majority
of them, tojeverse the decision of the Commissioner, either
in whole or in part, and their opinion bi'inix certified to the
Commissioner, he shall be governed thereby in the further
proceedings to be had on such application : Provided^
hoirever, That before aboard sliall be instituted in any such
case, the applicant shall pay to the credit of the treasury,
as provided in the ninth section of this act, the sura of
twenty-five dollars, an<l each of said persons so appointed
shall be entitled to receive for his services in each case a
sum not exceeding ten dollars, to be determined and paid
by the Commissioner out of any moneys in his hands,
which shall be in full compensation to the persons who
may be so appointed, for their examination and certificate
as aforesaid.

(a) The proceedings before the Commissioner are initiatory — all re-
lating to tlie question whether a patent shall issue. Pomeroy v. Ofi-
nison, M.S. (App. Cii8.) — Cra.nch, Cli. J. ; D. C. 1842. Perry v. Cor-
nell, MS. (.\pp. Cas.)— Crancii, Ch. J.; D. C, 1847. Secley, Ex parte,
M.S. (App. Cafl.)— MoHSEi.L, J.; D. (\, 185:i.

.See also Diiii':sT Pat. Cases, title Aim'I.icatios ron Patent, A.

(b) 1. An inventor will not be ilcprivod of the In-nofit of his inven-
tion and a riglit to u patent, by a u.xo of his invention Uloro his appli-
cation for u i>auut, witiiout his consent and against hia will, and with-
out anv Uffiea or niisoou<luft on his part. Pierson v. K<igU Screw Co.,
3 Story, 407. — .<t<)KV, .1.; R. I., 1814. Fry .(• Seeley, Kx parte, MS.
(App. Cos,)— MoiuSKLi., J.; D. C, 1869.

2 The provisions of sections 7 and 15 of the act of lS3iV introd\ici^d
an important mo<lillcation into the law of patont.s, designed to prou<ct
the Americin inventor against the injustice of being thrown out of the
fruits of his iiigcMiiiiy by the cxistcniv of a secret invention or discov-
ery abroad — that is, a discovery not patented, and not descril>ed in any
pruitod publiction. Amm.. 5 Upin . 21.— ToCCET. Atty.-Cen.; 1S48.

A. If the uppli<ant is an orijfinal i.ventor, and in a condition to mako
the oath required, the ac-t reqiiins the rommissionor to issue the pat-
ent, and Iho court* declare it valid, and caUblish tlie American right

PATENT LAWS. 123

ACT OF 1836, CHAP. 367, § 7.

to the exolusioD of the foreign discovery, which has not, in either of
tho modes in<licated by Uic net of Congress, been coinniuiiicated to the
public. Ibid, '21. Also Coleman \. Lies'>r, MS. — Leavitt, J.; Ohio,
1859 Judson v. C>pe, M.S. — Leavitt, J ; Oliio, ISCO.

4. To constitute a prior invention, the party alleged to )iave pro-
duced it must have proceeded so far as to have reduced liis idea to
practice, and eiuljodiod it in .some di.stinct form. Parkhursl v. Kinsman,
1 Biatdif., 49i.— Nklsox, J.; N. Y., 1810. Howe v. Underwood, .MS.—
Si'RAGCK, J.; Mas.s., isr)4. Allen v. Hunter, 6 McLean, 321.— McLkax,
J.; Ohio, 185.i. I'oppenheusen v. K V. G. P. Comb Co., M.S. — Ixoer-
80LL, J.; N. Y., 1858. Ellithorpe r. liobcrtson, MS. — Lvoersoll, J.:
N. Y., 1859.

5. Tlic words 'prior to tlic application," refer only to the "public
use or sale of the invention with the applicant's consent or allowance,"
and do not refer to any thing else. Bartholomew v. Sawyer, MS. —
I.NGER.SOLL, J.; X. Y., 1850.

6. The words ''prior to the alleged invention of the applicant," refer
to an invention or discovery of some one, other than the applicant, in
this country, and also to a patent or description in this or some foreign
country. Jbil.

7. The true meaning of this section is, that a patent shall issue to
the applicant and be valid, if he is the originator and author of a use-
ful invention, unless the tiiinir invented by him has, prior to his alleged
invention or discovery, been invented, or discovered, or used by some
one else in this country ; or unless the invention of the applicant has
been patented or described in some printed publication in this or some
foreign country, jtrior to the alleged invention or discovery of the ap-
plicant; or has been on sale with the applicant's consent, prior to his
application for a patent. Ibid.

8. The provision of this section as to the invention having been ia
use or on sale prior to the application, amended by the act of 18;!9, § 7.

See also Dicest P.\t. Cases, titles Prior K.\owledge; Prior Use.

(c) 1. As to the utility of an invention, all that the law requires
is, that the invention t^hould not be frivolous or injurious. Tho
word usr/id is used in contraijistinction to mischievous or immoral.
"Whether theinvention be more or less u.seful is unimportant. Lmvell v.
Lewis, 1 Mas.s.. 18G.— Story, J.; Mas.s.. 1817. Bclf'ord v. Hunt, 1
Mass, 303.— Story. J.; Mass. 1817. E'trl' v. Saivyr, 4 Mass., 6.—
Story, J.; Mass., 1825. Whitney v. Emmeti, Bald., 309.— Baldwin,
J.; Pa., 1831. Winans v. Schenec. <t Troy R. P., 2 Blatchf., 290.—
Nklsox, J.; N. Y., 1851. Page v. Ferry. M.S.— ■\Vir.Kixs. J.; Mich.,
1857. Lea'-h, Ex parte, MS. (App. Cas.)— Merrick, J.; D. C, 1860.

2. The invention need not be the best for the use to which it can be
applied. Many v. Jagger, 1 Blatchf, .sei. — Neuson, J.; X. Y., 1848.
Roberts v. Ward, 4 McLean, 50G. — McLean, J.; Mich., 1849. Wilbur
V. Beechcr, 2 Blatchf. 137.— Nelson, J.; N. Y., 1850.

See also Digest Pat. Cases, title Invextio.v, D. 1.

12 4 PATENT LAWS.

ACT OP 1836, CHAP. 367, § 7.

(rf) 1. The CommiRsionpr is bound to issue a patent in the case and
under the circumstfliipes inontionod in tliis section. lie has no discre-
tiou aWout it. Uildrralh v. Ilfoih, MS. (App. Cas.) — ('ranch, ("li. J.;
D. C, 1S41. Aikni, Ex parUt (Car- Wheels), MS. (App. Cas.)— C'rascu,
Ch. J.: D. C, 1850.

2. When a patent has issued, the jurisdiction of the Commissioner ia
exhausted, and ho has no further control over it, except under section
13, upon application for a reissue. Pomerotj v. Conuison, MS. (App.
Caa.)— (.'iiANcn, Ch. J. ; D. C, 1 842.

3. But his power exists in full force until the patent actually issues,
and is not controlled by intervening opinions in proceedhigs during
the examination. Wade v. Malthews, MS., 6 Opin., 222. — Johnson,
Atty.-Gen. ; lb»9.

See al.so Dic.kst P.it. Case.s, title Arpi.irATioN ron Patents, B.

(e) 1. The inventor must be tlie oriffiiial inventor as to all llio world,
to be entitled to a patent R'tit'jfn v. Kanowrs, 1 Wash., 188. — Wasb-
INOTON, J. ; Til, 1804. Dawson \. FoUen, 2 Wat^h., 311.— WABlllxa-
TON, J.; Pa., 1808. Lowell v. Lewis, 1 Mass., 190.— Story, J.; Masa.,
1817.

2. No person, who is not at once the first ns well as the original
inventor, by whom tlie invention has been perfected and put into use,
is entitled to a patent. L'eed v. Cutter, 1 Story, 696, 598. — Stoky, J. ;
Mass., 1841.

3. A subsequent inventor, though an original one, is not entitled to
a patent. JbuL, 59G-508.

4. Tlic invention must l>o original with the inventor, and not known
to others. The only e.tception exists in the case of a party obtaining
a patent, believing himself to be the original inventor, and liis inven-
tion is sliown to have been knoiifi in a furei'jn country, b\it not patented
there, or do8critK.'d in any j)rinted publication. Parker v. Stiles, 6
Mcl.K?an, 61.— McLkan, J.; Ohio, 184;».

See also DniEST Pat. (.'ase.i, titles Inventor, B. ; Inventton. C.

(/) An original application or specification cannot Ikj amended, to
conform the specilicntion to the alterations suggested by the Commis-
BtODcr, except under this section. Dyson, Ex parte, MS. (App. Caa.J —
DcKUiP. .1.; D. C, 1860.

{g) Right of willjdrawal extended to foreigners by act of 1837, sec-
tion 12.

Right of withdrawal, as to applications made after March 2d, 1861,
aboliiilio<i by act of IHt.l, section 1*.

Ai to tlie eflcct of a withdrawal, see DuiraT Pat. Ca.ses, title Ap-
plication run I'atpnis, V.

(h) Tlio renewal oalli re<iuircd by this section, is re(|uired only when
the ni)plic.int jMirsium in his npplication, after having been informed of
the defivls of his s|M>cifiiiaion. If the rejection Is tlniil. though upon a
first examination, no new nnth is necessary to enable him to ap|>caL
Crookcr, Ex parte, M.S. (App. Caa.) — CRAJiCU, Ch. J. ; D. C, 1860.

PATENT LAWS. 125

AC3T OP 1836, CHAP. 357, §§ 1, 8. IN Fonct

So niiich of tliig section as requires the renewal of the oath, repealed
by the act of isr.:',. section 1.

(f) 1. By section II, of the act of 1S39, an appeal was pivcn to the
Chief Ju.stico of the Circuit Court of the United States for ti»e District
of Cohimbia ; and by section 12 of the same act, the board of exami-
ners was abolished. Tlio right of appeal was afterwards extended, by
tho act of 1852, section 4, to cither of the assistant justicca of such
court.

'2. By tho act of 18G.'!, section 3, establishing the Supreme Court of
the District of Cohimbia, ami abolishing tho Circuit Court, the powers
theretofore exorcised b}' the judges of the Circuit Court were conferred
up m the justices of the said Supremo Court, severally. Under this
act, appeals are now taken to the justices of .said Supreme Court.

3. An ajipcal lies under this section to an applicant, upon the refusal
of a patent to him when there is no opposing party. Fultz, Ex parte,
MS. (App. Cas.)— .MoRSELL, J.; D. C, 18.".:J.

4. There is nothing in the act of 1839 which takes away, or impairs
Buch right. Ibid.

6. There is no limitation of time as to an appeal from the decision
of the Commissioner of Patents. Jaunty, Ex parte, MS. (App. Cas.) —
Cranch, Ch. J.; I). C, 1847.

As to right of appeal, duties of Commissioner of Patents in cases of,
&c., see Digest Pat. Cases, title Appeals, B.

See also notes to section 8 of this act, and notes to section II of the
act of 1839.

Section 8. [Modified by act of 1839, § 6.] A)i<J he it
further enacted., That whenever an application shall be
made for a patent which, in the opinion of the Conimis-
Bioner, would interfere with any other patent for which
an application may be pending, or with any unexpired
patent which shall have been granted, it shrill be the duty
of the Commissioner to give notice thereof to such appli-
cants, or patentees, as the case may be (a) ; and if cither
shall be dissatisfied with the decision of the Commissioner
on the question of priority of rtght or invention, on a
hearing thereof, he may apjieal from such decision, on
the like terms and conditions as are provided in the pre-
ceding section of this act ; and the like proceedings shall
be had, to determine which or whether either of tho

126 PATENT LAWS.

IX rOBCE. ACT or 1836, CHAP. 357, g 8.

applicants is entitled to receive a patrnt as prayed for. (6)
But notl'.in;^ in this act contained shall be construed to
deprive an original and true inventor of' the riglit to a
patent for his invention, by reason of his having previous-
ly taken out letters patent therefor in a foreign country,
and the same liaving been j)ublis]ied, at any time within
six months next preceding the filing of his specification
and drawings. (<•) And whenever the applicant shall
request it, the jiatent shall take date from the time of the
filing of the specification and drawings, not however ex-
ceeding six montlis prior to the actual issuing of the
patent; and on like request, and the payment of the duty
herein required, by any ajiplicant, his specification and
drawings shall be filed in the secret archives of the oflice
until he shall furnish the model and the patent be issued
not exceeding the term of one year, the ai)plicant being
entitled to notice of interfering ap[)lications.

(a) 1. Tho interference mentioned in this Boction must be nn inter-
ference in respect to patcntaHe matters, and tlie claims of tho appli-
cants must ho limited tti the matters spccilically set forth as their
respective inventions; and what is not claimed is to l)e considered, for
tho purjKJso of suoh intorfiTonci', as disclaiiiictl. A patenlaldo im-
provement is not un inlerforcnco. Bain v. J/wrae, M.S. (App. Cas ) —
CnASCll, Ch. .1.; D. C, 1849.

2. There ran 1k« no interference between apjilications, unless there
iff a substantial idiiitity uf the thing's for which a patent is sought.
7V*"i V. Jii/>kin, MS. (App. Ca.s.)— .MoiU^Kl.U J.; D. ("., 1853.

U. An intorfereiK-o may be doelared between a pt-ndin^j application
and an application fur a reissue of an existing patent, but tlie omi.s-
■ion to do H'l at that time does not take away tho rlRlit of tlio Palout
OflSce to declare such an interference 8ub.sc«iuently. Jlickt v. Shaver,
MS. (App. Ca''.)— l)ixi,op, J.; I). C, 18<-.l.

4. The Commifsionor has authority to |)onnit one of two competing
•pplicantN for a patent for a similar invention to withdraw his applic.i-
tion, after deciftjon upon an interferenoo, and relile his application, and
to declare a k cond interferencv l>etweou such last application and the
com{>etinK one. WitJr v. MaWtewt, 6 Opin., 'J'21. — .loHNSOV, Atty.-
OcD. ; 1H4'J.

PATENT LAWS. 127

ACT OF 1836, CHAP. 357, § 8.

5. A second interferonce is only a rehearinj? of tlio same case.
Eamesx. Richanh, M«. (App. (Jas.)— .MF.n!:UK, J.; P. C, 1859.

6. Tlio |)ioccc'(iin>fs in contested cises in tliu Patent Ollice have no
resemblance to triala at law. Speur v. AbboU, MS. (App. Cas.) — DuN-
LOP. J.; U. C. 1859.

See also Digest Tat. Case?, title Interference.

(6) 1. Tlie scope ofthi-* section is b^oad cnouKl> to include tlie ques-
tion of interference as well as that of priorit'j. if it should arise, on an
appeal to the judge. The question of priority necessarily includes
that of interference. Bain v. Morse, MS. (App. Cas.) — C'RANcn, Ch. J. ;
D. C, 1819.

2. An appeal is given by secUon 7 to an applicant where there is no
Opposing part}'; and by this section where there are interfering appli-
cations ; and there is nothing in the repealinj^ act of 1839 which takes
away or impairs such right. Fidtz, £x parte. MS. (App. Cas.) — MoE-
selC J.; D. C, 1853.

3. Under this section no appeal can be taken from the decision of
the Cumniiss^ioner of Patents, unless the application for a patent is re-
jected. In no case can an appeal be taken to the granting of a patent.
Fom'Toy v. Connison, MS. (App. Cas.) — CR.\Ncn, Ch. J.: 1». C, 1842.

4. A patentee there fMc h is no rig I it of appeal from the decision of
the Commissioner granting a patent to another person, an applicant, in
an interference between such applicant and patentee. Ibid.

5. The word " eithei in this section — when speaking of the parties
who may appeal — apiV.ies to the words ''such appli"ants," i.e.. either of
such aiplicants. 'ihis construction is sustained by tJie language below
authorizing the jud_'e, on appeal, " to detf-rniine which or whether
either of the apjilicunts is entitled to receive a patent as praijed for. Ihid.

6. This decision was followed in Whippk v. Benton, MS. (App. Cas.)
— MoRSELL. J.; D. C, 1854. Hopkins v. Bamum, MS. (App. Cas )—
MoiiSELi^ J.; D. C, 1859. Kingstey v. flerriet, MS. (App. Cas.) — MOK-
si;li.. J.; D. C, 1851. Drake v. Cunning.'ia,n, MS. (App. Cas.) — XIorsell,
J.; I). C, 1855.

7. In a later case, it was held thit a patentee has equal right of ap-
peal from a decision of the Commissioner of Patents in favor of au ap-
l)licant, and granting him a patent, that an applicant has from a
decision in favor of a prior patentee, and refusing the applicant a
patent. Babcock v T>eg->rr, MS. (App Cas.)— Mkrrick. J.; D. C, 1859.

8. This decision was followed in Sjyear v. Aobott, MS. (App. Cas.) —
DcNtOP, .T. ; D. C. 18'.9; and B'^ch v. Tucker. MS. (App Cas.)— MOR-
SEi.L, J.; D. C, 18(10.

[>. Tlio right of appeal is now considered as established in accord-
ance with these later decisions.

10. As to the requisites of the reasons of appeal, and the jurisdiction
of the justices of the Circuit Court on appeal, and the eflect of their
decisions, see notes to section 11 of the act of 1839.

See also Digkst Pat. Cases, title -Vppeals, B.

128 TATKNT LAWS.

ACT OF 1836, CHAP, 367, §§ 8, 9.

(«■) 1. Br the act of 1839, section 6, the obtaining a foreign patent
more tlinn six months prior to his npplication hero will not debar a p<T-
pon from ro<"civing a patent, providi'd the invention lias not been intro-
diK-cil into public and common use in the United States prior to such
application.

2. The provisions of this section, and of section 6 of the act of IS30,
as to the obtaining of patents after foreii,Ti patents have been secured,
and «s to the date of tlie home patent in such case, relates only to such
patents as are applied for hero after the issue of the foreign patent.
IVettch V. Rogers, MS. — Kane, J.; Pa., 1851.

Section 9. [Amended by act of 1801, § 10.] And be
it fiirt/nr enactvd, That before any application for a pat-
ent sliall be considered by the Conimi.s.sionor as afure.><aid,
the ai)plicant shall pay into the Treasury of the United
States, or into the Patent Office, or into any of the de-
posit banks («), to the credit of the Treasury, if he be a
citizen of the United States, or an alien, and shall have
been resident in the United States for one year next pre-
ceding, and shall have made oath of his intention to
become a citizen thereof, the sum of thirty dollars; if a
subject of the king of (Jreat Mritain, the sum of live hun-
dred dollars; and all other persons the sum of three hun*
dred dollars (/>) ; for wliich payment dujdicate receipts
fhall be taken, one of which to be filed in the office of the
Treasurer. And the moneys received into the Treasury
under this act shall consiitute a fund for the payment of
the salaries of the officers and clerks herein provided for,
and all other expenses of the Patent Office, and to bo
called the Patent Fund.

(a) Ywn mnj be aont to the Patent OCQce, or bo paid to the Assistant
Trcasurernof the t'. 8 at Now York City; Hoston, Ma-sa. ; and St. Louia,
Mo.; Trcaaurers of the Mint, I'hilndeljfliin, Pa.; and New Orleans. La.:
8ur%'eyor and Inc|)ector of tlie CiitttomH, PittsburtJ, Pn. : Surveyor of
the Cutloms, Cincinnati, D : Collerturs of the Customs ut Haltimoro, Md.;
BufTalo Creek, N. Y-; and San FranciHco, Cal. : lUwiTors of Public Mo-
neys at .lenriT-ionville, Ind. ; ('iiicngo, 111.; and Detroit, Mich.; and anj
Kalioaal Bank which luui b«CD doaigoalvd a depository of public mone/.

PATENT LAWS. 129

ACT or 1836, CHAP. 357, §§ 10, 11. IN FOBCE.

(b) By a subsequent statute, all laws flxinpr the rateR of the Patent
OfTico foes to bo paid, and discriminating between tlie inliabitants of
the I'nited States and thoso of other roiintries. v.hicli fh-.M not dis-
criininalo ap.iin.st llic itilialiitanls of the United ."^tates, are lejiealed,
and a uniform rate of fees established for all. Act of 18G1, section 10.

Sectiox 10. And he it furt/icr enacted^ That where
any persdn h.ith made, or shall liave made, any new in-
vention, discovery, or improvement, on accoimt of which
a patent might by virtue of this act be granted, and such
person shall die before any patent shall be (granted there-
for, the right of applying for and obtaining such patent
shall devolve on the executor or administrator of such
person, in trust for the heirs-at-Iaw of the deceased, in
case he sh.all have died intestate; but if otherwise, then
in trust for his devisees, in as full and ample manner, and
under the same conditions, limitations, and restrictions
as the same was held, or might have been claimed or en-
joyed by such person in his or her lifetime (</) ; and when
application for a patent shall be made by such legal rep-
resentatives, the oath or affirmation provided in the sixth
section of this act shall be so varied as to be applicable
to them.

(a) 1. Under this section, if an inventor die before he has obtained a
patent for his invention, no person other than his executor or adminis-
trator can apply for a patent for such invention, and the patent must
be issued to such persons in trust for the heirs-at-law or devisees of
the inventor. Stimpson v. Rogers, 4 Blatclif. — Ingersoll, J.; Ct
185JI.

2. It need not, however, be expressed in the patent, that it is issued
to such executor in trust for those entitled to it. It will be sufficient
that the jiatcnt s -t fortii that it was issued to the prantee as executor.
AVluit the cxccut )r does in relation to the property of the devisor, ho
does in trust for those to whom such property is given by the will
Ibid.

Sectiox 11. And he it fxrt/ier enacted, That every
patent shall be assignable in law, either as to the whole
c*

130 PATENT LAWS.

ACT OF 1836, CHAP. 357, § 11.

interest, or any undivided part thereof, by any instrument

in writing; whicli assignment, an«l also every grant and
otnveyance of the exclusive riglit undi-r any patent, to
make and use, and to grant to otlicrs to make and use {<i)
the thing patented within and throughout any specilied
])art or portion of the United States, shall he recorded in
the Pateut Olliee within three months from the exicution
thereof (6), tor which the assignee or grantee shall piy to
the Commissioner the sum of three dollars, (c)

(a) \. Tills section provides for but tlireo kiiul^ of a.ssignmcnts :
1st. As to the whole interist ; 2(1, As to an undividod part; and 3d,
An exclusive rijjlit in any district. lUandftrd v, EUrid-jr, 1 Wall., Jr.,
339. — UuiKK, J.; Pa., 18-i'J. I'ott^r \. Holland, MS. — IxOEKSoLI^ J.;
Ct., 1S58.

2. The term e.rclusive comprclieuds not only an exclusive rij^ht to tho
whole patent, but an exclusive right to the patent in a particular aeetiou
of country. W'aaltburn v. Gvuld, A Story, l;;l. — SxoRV, J. ; Mas.s , 1841.

:{. Tile uioniipoly is capable of subdivL-^ion as to locality, and in no
other wav. Blanchurd v. Kldrid-je, 1 Wall,, Jr., :i»0.— GuiKR, J.; I'a.,
Is-lU. Wkittemort v. Cutter, 1 iJall., 431.— SiOIlV. J.; Mu^-s., 1S13.
Jirooka v. Dyam. 2 Story, 525, 552. — Stouv, J.; Mass., 1S43. Suyda.n
V. Day, 2 lilatchf., 23.— Nei^o.v. J.; N. Y.. IS-IU. Hitter v. &mi/, 2
Blatohf., 3.S3. — llKTTS, J.; N. Y., 1852. Washnuj Madi. Co. V. Earlt, 3
■\Vull., Jr.— IJitltli, J.; Pa., ISGI.

4. An assignment o!" a pateut may be made as well before tho issuing
of the patent as allcrwurds. The thing to 1h5 a.ssigned is not tho men*
parciin»«iit, but the monopoly conferred — the right of |irop.rly which
it creaicn. And when the party has a<.fpiircd an incho;itc right, nn afl-
Bignnicnt of it i« legal. Gayer v. WUder, 10 How., I'.i.t.— Ta.nev, Clu
J.; Sup. Ct., 1850. liatlilx'He \. Orr, 5 McI/jan, 131, 132. — McLean,
J.; Mich, 1850. liich v. LiypiiuotL, 2G Jour. Fr. Inst., 3d Sen, 13.—
GUIEU, J.; Pu., 1853.

5. Future improvement.s may 1k> sold, as well as tlmse already mads;
and Xt) include a Be<'<'nd as well as a lirsl patent. Sesmith v. Calrcit,
1 Wood A Mm., n.— WoouiiLUY, J., Mass., 18 J5.

0. Tho iuehoato right of an inventor to a rcnowol is the subject of
gain. Clum v. Jirei'rr, 2 I'urt., 520.— (.'UHIIS, J.; .Mass., l.-5."».

7. Ono toDunt in comm(»n has iw unml right to uho and sell to otitors
to uso the thing patented, as tho other tc-naut in conmion has; and
Deilbor can restrain the oilier from such use or sale, fbil, 521.

8. A pajwr pur|>orting to \x3 an as.signment of an expired patent !■
void. IkU V. McCuU'j'jh, M.S.— Le.wut, J.; Ohio, 1858.

PATENT LAWS. 181

ACT OP 1830, CHAP. 357, §§ 11, 12. IN FORCR.

(b) 1. Tlic provision as to recording assignments witliln three months
is motfly diroctorv, and except as to intermediate homijide purciiaseis,
•without notice, any subsequent recording; is sufllcient. lirool.s v. Hyam,
2 Story. r.4J.— Stouy, J.; Mass., 184:{. J'itts v. Whitman, 2 Story,
Gl;").— Stoky, J.; Mass., 1813. Blanch. Gun-SU>ck Fac. v. Warner, 1
Blatchf. U7 I. —Nelson-, .!.; Ct.. 1;4G. Uolden v. Curtis, 2' N. Hanip.,
63.— WoOLBCRV, .1.; N. II., 1819.

2. A mere license need not be recorded — it is not an exclusive right.
Brooks V. Uyam, '1 Story, 5i2, o-i:i. — Stoi:y. J. ; Mass., 1843. Stevens v.
Ilvad. 9 Verm., 177. — Williams, Ch. J.; Vt.. 1837.

3 Under this section an a.^si^nment inu.st be recorded within three
months to defeat tlie right of a aubscqueut purchaser without notice,
and for a v.duable consideration In order to guard against an out-
standing title of over three montiis' duration, the purchaser need only
look to the records of the Patent Office. Within tliat period he must
protect liimself in the best way he can, as an unrecorded assignment
would prevail; but it must be one in writing, that may be recorded.
Cibson v. Cook, 2 Bhitchf., 148. — Xelsok, J.; X. Y., 1S50.

See aI.so Digi:.st P.\t. (.'ask.'', titles Assioxmext, B. 2; License. B.

Section 12. [Araendccl by .act of 1861, §§ 9, 10.] And
be it further oiai'trd^ That any citizen of the United
States, or alien, Avho sliall have been a resident of the
United Slate.s one year next preceding, ai;d shall have
made oath of his intention to become a citizen thereof,
who shall have invented any new art, machine, or im-
provement tliereof, and shall desire further time to mature
the same, m.iy, on i)aying to the ciedit of the Treasm-y,
in manner as provided in the ninth section of this act,
the sum of twenty dollars (a), file in the Patent Office a
caveat, setting forth the design and purpose thereof, and
its principal and distinguishing cliaracteristics, and pray-
ing protection of hi:> right till he shall h.ave matured his
invention ; which sum of twenty dollars, in case the
person filing such caveat shall jifterwards take out a
patent for the invention therein mentioned, shall be con-
sidered a part of the sum licrein required i'or the same.

132 PATENT LAWS.

ACT or 1836, CUAP. 357, § 12.

And such caveat shall be filed in the confidential archives
of the office, and preserved in secrecy. And if applica-
tion shall be made by any other person within one year
from tlie time of filini; such caveat, for a patent of any
invention with which it njay in any respect interfere, it
tli:jll be duty of the Coniinissiioner to deposit the descrijH
li<»n, s])ecitications, drawings, and model, in the confi<len-
lial archives of the office, and to give notice, by mail, to
the person filing the caveat, of such application (/>), who
Khali, witiiin three months after receiving the notice, if
he W(»uld avail himself of the benclit of his caveat, lilo
his (lescrij)tion, spci'ificatioiis, drawings, and model ; and
if, in the opinion of the Commissioner, the specifications
of claim interfere with each other, like j»roceetlings may
be had in all respects as are in this act provided in the
case of interfering applications : Provided^ /lotrever, That
no opinion or decision of any board of examiners, under
tlie provisions of this act, shall preclude any person inter-
ested in favor of or against the validity of any patent
wliieh has been or may hereafter be granted, from the
right to contest the same in any judicial couit in any
action in which its validity may come in question.

(fl) 1. Th<' fio ro'juirid on liliii^r n Ciivoat is now rediicoil to ton dollars,
ond fucli HUin in no lunpcr lo \h.< eoiisiilorod us n part of llio sum re-
quiriKl to l>o paicl on tiliti^ it RutiHoquont n|>|>lication for h patent for the
Buino invention. Act of ISf.l, soctionH 1», lo.

'2. \ caveat may t>c« renewed at ilio end of ono year by paying a fur-
ther fe« of ten dollurx, nnd no on from year to ycnr.

{b) I. TliJH mi-lion is for tiic bcnclii of the inventor, but is not neoes*
nary for the prenorvHtion of liiH ri^hl, nor drwa the oniisaion to lllo a
c.ivcat impair hi.H tile. Jl.ldnntk v. IJeatli^ M8. (.Vpp. CuH.)— CliAKCU,
Ch J ; D. C, 1841.

2. It only enablts him t'> have notice of any interfering application.
It, however, ifivon no noticv to the world, nor even to the interfering;
opplicnnt, an<l Im notice to the Ci>mmii««inner only. Ibid.

3. Tlio utvcat is to Hvt forth thu " duHign and piirpoao " of the invoa-

PATENT LAWS. 133

ACT OP 18.16, CHAP. 357, §§ 12, 13. W FORCE.

tion, and "its principal and distinsruisJiini? cliaractoriatics;" but it is
not nece.ssarv tiiat it sliouid explain tlio principle involved, or tho
modes in which it can be applied, nor how it is distinpnishcd from
other inventions. Aiion., MS, Opin. — Black, Attv. -Gen. : 1857.

4. The Commissioner can perform no act upon it, but filing it, nor
in consequence of it, except to give ibo caveator notice of a conHicting
application. Ihi'/.

5. A caveat answers a double purpose: 1st, to give notice of tho
claim of tiie inventor; and 2d, to prevent a patent issuing to another
for the same thing. Allen v. Hunter, G McLean, 301. — McLea.v, J. ;
Ohio, 18.^1.-).

6. A caveat is evidence as to an invention, so far aa it extends to
the description of the invention and tho machinery which was then
constructed. Jonea v. WetherelL, MS. (App. Cas.) — Mousell, J.; D. C,
1855.

7. A caveat is not conclusive evidence that an invention is not per-
fected. Johnson v. Hoot, M>. — Spr.voue, J.; Mass., I9i)9.

8. The fact that a patent is granted to one person, while another has
a caveat pending and in force, will not of itself vacate the patent
granted, nor authorize the Commissioner to grant a patent to tho
caveator. Cochrane v. Waterman, MS. (App. Cas.) — Craxch, Ch. J. ;
D. C, 1811.

9. The purpose of a caveat is to save the discoverer of an invention
from the efl'cct of the rule of law that gives to the inventor who (irst
adapts his invention to practical iise the right to the grant of a patent;
and if the Commissioner gives the caveator notice of any interfering
application, it secures him against the effect of the rule. J'lieips, Dodge
d' G>. V. Jh-own Bros., IH How. Pr., 9. — Nelson, J.; N. Y., 1859.

10. But if the Commissioner accidentally omits to give the caveator
the notice required, his rights will not be prejudiced thereby. Jbid., 9.

See also Digest Pat. Cases, title Caveat.

Section 13. [Anicndoil by act of 1837, §§ 5-8; Re-
pealed in part by act of 1861, § 9.] And be it further
enacted. That whenever any patent which has heretofore
been granted, or which shall hereafter be granted, shall
be inoperative, or invalid, by reason of a defective or
insiiflicient description or specitication, or by renson of
the patentee claiming in hi.s specification as his uwn in-
vention, more than he had or shall have a riudit to claim
as new; if the error has, or shall have arisen by inadvert-
ency, accident, or mistake, and without anv fraudulent or

134 PATENT LAWS.

IX roncE. ACT or 183G, rnAP. .Jf)?. g 13.

deceptive intention, it shall be lawful for the Commis-
sioner, upon tlie surrender to him of such patent, and the
payment of the further duty of fifteen dolhirs, to cause a
new ]>att'iit to be issued to the said inventor, for the same
invention, for the residue of tlie period then unexjiired
for which the original patent was granted, in accordance
with the patentee's corrected description and specifica-
tion, {a) And in case of his death, or any assignment by
him made of the original patent, a simihir right shall vest
in liis executors, administrators, or assignees. {/>) And
the patent, so reissued, together with the corrected de-
scription and specification, shall have the same efl:ect and
operation in law, on the trial of all actions hereafter com-
menced for causes suhsecjuently accruing, as though the
same had been originally filed in such corrected form,
before the issuing out of the original patent, (c) And
whenever the original ])ateutee shall be desirous of add-
ing the description and specification of any new improve-
ment of the original invention or discovery which shall
have been invented or discovered ])y him subsequent to
the date of his patent, he may, like jiroccedings being
liad in all respects as in the case of original appii<'ations,
and on tin- jiaymmt of liftecn dollars, as hereinbeforo
])rovided, have the same annc\c<l to tlie orininal description
and specification; and the C'ommis^ioiu'r shall certify, on
the margin of such annexed description and speciiieation,
the time of its ])oing annexed aii<l ri'corded ; and the
same shall hereafter have the same (fleet in law, to all
intents and puqioses, as though it had been cnd^raccd in
the original description and specification, (d)

(n) 1. T}ii« Bection cnnloniplolfg two claKsoR of cdsob, wlioro a pnt-
cnt iM invalid or inoperatvt ; iMt, l>y rcnnon of a dcfoclive or inBufUcient

I'ATENT LAWS. 135

ACT OF 1836, CHAP. 367, .§ 13. IN FORCE.

Bpociflcation ; and 2d, whoro tho sanio objection arises because the
]iatfmeo has claiini'i iiioro tliaii he ijad a right to claim. Goodyear v.
Day, MS.— DicKKHsoN-, .1.; N. J., Isb'J.

2. This ."fftiou may lie regarded as affirming the propriety of tlie
usa^e whicli had obtained under tlie former laws, and under which a
second reissue was allowed aa well as the first. French v. liogcrs,
MS.— K.VXE, J.; Pa., 1851.

2. There may be more than one reissue of the same patent. Tho
surrender and reissue should be allowed to follow each other as oft«a
as the inventor is content to be more specific or more modest in hi8
cl:\ims. Ibi(L Also Ball, Ex parte, M.S. (App. Cas.) — Mohsell, J. ;
D. C, 18G0.

4. The power to correct mistakes in a patent is confided to the Com-
missioner of Patents under this section, and does not belong to the
courts. The courts can only construe tho specification and claim as it
Btand.s. Kittle v. Merriam. 2 Curt., 478. — CuRTi.s, J.; Mass., 1855.

5. This section gives to the patentee the right to correct his de-
scription or spccilicatiou. when its imperfection has arisen from inad-
veitency, ac-c-ideut, or misake. But the only condition on whicli this
can be done, is that the original patent is incqKrative or invalid by
reason of a failure to comply with the requirements of the statutes.
The proceeding is liiercfure equivalent to a distinct admission, made in
tho niMHt ."^olemn form, that the patent has no validitj- in the sense of
entitling a patentee to an action for its infringement. Morjitt v. Gaab,
MS.— Leavitt, J.; Ohio, IS'JO.

C. The words in this section, "it shall be lawful for the Commia-
Bioucr, Ac, to cause a new patent to be issued," are to be construed as
mandatoy, and to be of the same import as if the words had been, "it
shall be the duty of the Commissioner,'' 4c. The true meaning is, tlie
Commissioner is to liavo no discretion in the case provided for in the
section. J9i/ma;j. Ejt jmrte. MS. (.\pp. Cas.) — Dlxlop, J.; D. C, 18G0.

7. When tho case proviiled lor arises, he is commanded to exercise
the power, whether ho thinks it just and right to exercise it or not ; he
has no discretion. Ibid.

8. The surrcndci- and reissue of a patent extended by act of Con-
gress, after an extension, under section 18 of the act of 18:!G, stands
on the same looting as if such surrender and reissue were made under
the extension bv virtue of said section 18. Gibson v. Harris, 1 Blalchf.,
IGli, no.— Xei.so.x, J.; N. Y.. 184ti.

9. It is not the meaning of this section that the patentee, in his
reissue, must describe and claim in his new specification, either in
■words or idea, just what he described and claimed in his old one; but
his specilication must be of the same invention, and he cannot embrace
a difiereut subject-matter than that ho sought to patent originally.
French v. S gers, MS. — Kane. J.; Pa., 1851. BaUin v. Tagyari, 17
How., 83.— McLeax, J.; Sup. Ct., 1854.

10. Upon an application for a reissue, the applicant is not necessarily

136 PATENT LAWS.

IX FORCE. ACT OF 18.10, CHAP. 351, § 13.

contlDe<i to tlio oripiiial record, i. r., iho patent and ppocificntion. but
the ori^nnal model m:iv be referred to as evidenw of the then inven-
tion. Wtlson V. Singer, M.S. (App. Cas.)— Dtsixd', J.; I>. C, 18C0.
JUiU, Ex jHxrU, MS. (App. Cas.), and Dktz, Ex park, MS. (App. Cns.)-;
MonsKi-u J.; I>. i'., IS'JO.

II. Fee on rei.ssue now thirty dollars. Act of ISfil. ^10.

fx>e also DiGKST r.\T. CA.SE.S, title ItKissuE OF Patent, B., C.

{b) 1. Under tliis section the power to .«tirrcndcr a patent and take
ont a renewal thereof, is vested e.xclu.»<ively in the patentee. hi.s execu-
tors administrator;*, or assij^ns, and tlaro is nothing re.striclinj^ nuch
rlL'ht beeanse of sjx>cial or limited grants of licvnses previounly made.
i^iiiith V. ilrrcer, 4 West. Law Jour., 52. — Kaxj:, J.; Pa.. 184f».

2. By this section the solo right to surnMuler is ffiven, 1st, to the
patentee, if he is alive and has made no assi^'nment of the orijfiiial pat-
ent; 2, to liie executors and administrators of the patentee, afler liis
decease, where there ha.«< lK.'en no such assi|i^iment ; and M, to llio
assi^rnec, where there has been an assignment of tlic original patent
The right to surrender is giveu to no oue else. Potter v. Holland, MS.
— IXGEILSOLL, J.; Ct., 1S5S.

3. Where, however, there has Ix-on an assignment of an undivided
part of the whole patent, in siicli case the assignee and patentee U>oome
joint owners, and should join in the surrender; and if they do not it
will be invalid, unless the part owner not joining sliall ratify it. Ibid.
■ 4. A lieonpoe has no aiuhority to make a surronder. and one made
without his consent is valid. But such a licensee may hold under the
original or the reissued patent, as he prefers. Jbil.

r». 'I hero may be a claim of right in an invention, under one or the
old palcnl, for one .section of the country, and a diflerent cluini of right,
under the reissued patent, for the same invention, for another section
of countrv. Ibid.

Soe also Di<iF„ST Pat. Cases, title Reis-sce of Patent, A.

(r) 1. I'nder this section the second |)atent. with (Mrreetod spccillca-
tions, haH r< lation bark to the emanation of the lirst patent, as fully for
every legal i»uri>ose as to catises subsetiuently accruing, as if the second
)>at/-iit had l>een issmti at the dale of the (Irat one. i<tinley v. W/iijtple,
2 McLf'an. :!7.— McLean. J. ; Ohio. Is.lO.

2. A reissued patent is only a i-ontinuation of the original one.
Amrt v. Jlvard, 1 .Sumn., -l.s.s.— .Stouv, .1.; Mass., 1H33. SlnnUi/ v.
W/iij,pl>; 2 M<-Lean, :J7.— .McLeax. .1.; dliio. \y.\0. W'oi'dworth v. Jlall,

I W'otA. k Min.. 2.'i7.— W(K)i)niuv, .!.; Mu.hh.. Is-l''..

3. The rights of the patentee are to bo ascertained by the law imdor
which the original application was made. Shaw v. Cooper, 1 Pet ,
315.— McIj^ax. J.; Sup. Pi., 1833.

4. A patentee cannot by a surrender affect the rights of third por-
noan to whom lie had previously conveyed an interest. Wixxluvrth ▼.
Sumr, 3 Stor)', 7.'i<i._SioriY. J.; Mass.', 1815. JJcUumcy \: Goudyoar,

II t'ush., 370.— MERRtr-K, .L ; Masa., 1853.

rATF.XT LAWS. IfJT

ACT or 1836, CHAP. 357, §§ 13, 14. IK FORCE.

6. The f^rant of an amended patent is conclusive as to the existence
of the facts necessary for n reissue; \iiiless it is patent tliere is h clear
excess of authority, or there has been fraud. Allen v. Blunt, A Stor}-,
715.— SrORY, J.; Mass., 184.5. S. C, 2 Wood. & Min , l.'.O.— WooD-
UIRY. J.; Mass., 1846. ScUlin v. Taygart, 17 IIow., 84. — McLeak, J.;
Sup. Ct., 18.j4.

(d) \. Under this section an improvement may be annexed to tho
specification of the original patent, so as to mal\e it form a part of the
original patent; but there is nothing tliat forbids an inventor taking
out a new patent fur tlie improvement, if he prefers it. O'Jieilly v.
Morse, 15 How., 12-2.— Taney, Ch. J.; Sup. Ct., la53.

2. Nor is ho bound in liis new patent to retcr specially to his former
one. Ibul., 122.

3. Tlie provision of this section authorizing: additions to patents for
improvements, is now repealed, and patents of additions are no more
granted. Act of 18GI, § 9.

Section 14. And b' it furf/irr oiartrd, That whenever,
in any action for damages for making, using, or selling
(a) the thing whereof the exclusive right is secured by
any patent heretofore granted, or by any patent wliich
may hereafter be granted, a verdict sh:dl be rendered f >r
the plaintiff in such action, it sliall be in the power of tlie
court to render judgment for any sum above the amount
found by such verdict as the actual damages sustained hy
the plaintiff, not exceeding three times the amount there-
of (ft), according to tlie circumstances of the case, with
costs ; and such damages may be recovered by action on
the case, in any court of competent jurisdiction, to be
brought in the name or names of the person or persons
interested, whether as patentees, assignees, or as grantees
of the exclusive right within and througlioiit a specitied
part of the United States, (c)

(a) Tho sale, under execution, of the materials of patented articles ia
not such a sale as mokes tho sherifT liable to an infriugemenL Sauin
V. Gvilii 1 Gall., 4S7.— SrOKY, J.; Mass., 1813.

(b) 1. The patent act of IT'JO, section 4, made the infringer liable to
pay such damages as tlie jury should tind, and also Ibrfeit tlie machine.
The act of 1793, section 5, declared that au infringer should p:iy fi sum

188 PATENT LAWS.

IX FOROB. ACT OF 1836, CHAP. 367, § 14.

equal to three times the price for which tlie patentee had sold llecnfce.
The :.ct of If^OO jiroviilfd that an infiin}fer fihoiiM pisy throo times ihe
act»i:d damap s sustained. Sq/mour v. McComiick, IG How., 488. —
GuiEn, J.; .-up. Ct., 1S5:?.

2. This .«eclii)n eonliues the jury to the actual damapes sustained by
the patentee. The power to increase tlicui as punitive damages is
committed to the discretion and judgment of the cDurt. Ibul., 488.

3. Actual dai'>age,% nccordiiip to this section, are the amount Used by
the verdict. SO-jih'-ns v. Fe% 2 Ulatclif., 38.— Hetts, J.; N. Y., ls4G.

4. But s\ich term cannot be construed to mean exeini)lary, vindic-
tive, or punilorv damages, inflicted bv wav of smart monev. Stimp-
son V. Jinilroadt, 1 Wall., Jr., 16n.— GliiF.it. J. ; Pa., 1847. Buck v.
Hennancc. 1 lilatchf, 400.— Xeusox, J.; X. Y., 1849. i'itta v. Z/h i, 2
Blatchf., 238.— NKi..soy, J.; N. Y., IS.'.l.

5. Daniapes are only to In? compensatory : the criterion is indemnity.
rarhr v. IMme. 7 West. I.ji\v Jour., 4'JS.— Kaxk. J. ; Pa., 1840.

C. Damages cannot include counsel fc, in addition to the taxaldo
costs. Sttiupson v. linilnads, 1 Wall., Jr., IfiG, IC.:). — (iliiER. J.; Pa.,
1.S.J7. Bland,. Gun-SUck Fac. v. Wanur, 1 Blatchf., 272.— XEl.fiON, J.;
Ct.. 184G. Varhcr v. llui.nc. 1 West. Law Jour., 129. — Kane, J.; Pa.,
1849. Toesi' v. Iluntiwjton, 2.'! How., 8. — Clikfuki>, J.; Sup. Ct., 18;'>9.

7. It rests with the discretion of the court whether the damnpos
phall be trebled. Previous to 1S3G, the court wiis ctmipelled to treble
them. Guyon v. SrrrtU, 1 Blatchf.. 215.— Nei^ox, J.; N. Y., 1847.
Slivipirm v. li.iilruadi, 1 Wall., Jr., IGG. — Guirn, J.; Pa., 1S47.

8. The court may increase the damapes thouph the jtlaintifr is not
entitled to costs, for neplcct of tiling a discLiimer, a.s required by sec-
tion 9 of the act of 1837. Guyon v. Serrell, 1 BUktchf., 246.— Nelsox,
J.; N. Y., 1K17.

9. The object of this section, as to treblinp damages, is to remune-
rate patentees, who were comiK-lled to sustain their patents apainst
wanton and persistent infrinpi-'r.s. Scyii,our v. McCormifk, IG Mow.,
4H8. — liRiKii, J. i .Sup. Ct., 18 J3 Bell V. McCuUoch, MS.— LEAVirr, J. ;
Ohio, 1h:>.4.

S<-« also I)i(;E.sr Pat. ('ahe.h, titlos Dauaors; Inkuixoemknt.

(f) I. The word "aHsipm-es ' in this Hectit)n, is to Imj e<jnstrued by
rcfercuoo to section 1 1, of the same act, as nuaninp the assignees of a
whole int<'rest, or an un<livided one, or an exclusive hx-al right.
Blunrhard Y. E dmlje, 1 Wall., Jr., .MO. — Gkiek, J.; Pa., 1849. i:uy
dam v Itfj, 2 lllat.hr, 23.— Nkijjon, Betth, JJ.; N. Y., ISIG.

2. T I tnable an aiisignoo to sue in his own name, he must have the
oxclusivo riiflil, or ••ntirc, or un<|'ialili<'d monopoly, which the palenieo
hud, oxrluding the patonleo liiuiself as well as others. Gaijlcr v. Wtl-
de , 10 IIoA-.. 49.:.— Tanev, Ch. J. ; Sup. Ct, 1H60.

3. The uHHipntt'H of an exclusive right in a patent, are the proper
p<n(oni t • maintain an action for a violation of it. Waahburn v. Gould,
a Story, 131, 107. — Stoby, J. ; Mass., 1846.

rATEXT LAWS. 139

ACT OF 1336, CHAP. 337, §§ 14, 15. IN FOUOE.

4. The granfoo of an exc-lusivo right under a patent, even though
such ri;ilit is limitL'd to a jiarlioular nurnl)or of niacliincs, may niaiiiia-n
an aclioa for iiifringomenl. Wihon v. Jios-eau, 4 IJow., 080, 08,>. —
Nelso.v. J.; Slip. Ct., 1845.

5. Under this section, in connection with section 11, an action is
given only to such parly — composed of ono or more persons — as pos-
sesses tlie whole interest in tiie patent. SuyJam v. I>itij, 2 Blatchf.,
23.— Nklson. Bepts. JJ.; N. Y., 184(;.

G. Where a jiarty has an interest in only a part of a patent, as a
license to use the invention, he cannot maintain an action for an in-
fringement. Ibid., 23.

7. Under this section, an action is properly brought in the name of a
patentee, in behalf of a licensee who is damaged by an infringement.
Goodyear v. McBuniey, 3 Blatchf., 33. — Nelso.n, J.; N. Y., Is53.

Section 15. [Enlarged by act of 1837, § 9; and by-
act of 1839, § v.] A/id be it further enacted, That the
defeudant in any such action shall be permitted to plead
the general issue, and to give this act and any special
matter in evidence («), of which notice in writing may
have been given to the plaintiff or his attorney, thirty
days before trial (A), tending to prove that the descrip-
tion and specification liled by the plaintiff does not con-
tain the whole truth relative to his invention or discovery,
or that it contains more than is necessary to produce
the described effect ; which concealment or addition shall
fully appear to have been made for tiie purpose of de-
ceiving the public (c), or that the patentee was not the
ori>'inal and tirst inventor or discoverer of the thinej
patented, or of a substantial and material part thereof
claimed as new (f?), or that it had been described in some
public work anterior to the supposed discovery thereof
by the patentee (e), or had been in public use or on sale
with the consent and allowance of the patentee before
his application for a patent (/"), or that he had surrepti-
tiously or unjustly obtained tlie patent for that which
was iu fact invented or discovered by another, who was

140 PATENT LAWS.

ACT or 1836, CHAP. 357, § 15.

using reasonable diligence in adapting and perfecting the
same (//) ; or that tlie patentee, if an alien at the time the
patent was. granted, had failed and neglectetl for the
space of eighteen months from the date of the patent, to
put and contiinie on sale to the ])ublie, on reasonable
tenn.s, the invention or discovery for which the ])atent
issued (A); in either of which rases judgment sliall be
rendered for the defemlant -with costs. And whenever
the (Icfemlant relies in his defence on the fact of a pre-
Tious invention, knowledge, or use of the thing patented,
he shall state, in his notice of special matter the names
and places of residence of those whom he intends to
prove to have possessed a prior knowledge of the thing,
and where the same had been used (/) : Proriiled^ /luic-
tvcr, That whenever it shall satisfactorily appear that the
pati-ntee, at the time of making his application for the
I)atent, believed hiujsclf to be the tirst inventor or dis-
coverer of the thing patented, the same shall not be held
to be void on account of the invention or discovery or
any |)art thereof having been before known or used in
any foreign country, it not appearing that tiic same or
any substantial part thereof had bifore been patented or
describt-d in any printnl publication. (./') And pmriilnl^
aUoy That whi-never the plaintiff shall fail to sustain his
action «jn the grouinl that in his specification of claim is
embracr.l more than that of which he was the first in-
ventor, if it shall appear that the defen<lant had used or
violated any part of the invention justly and truly speci-
fied and clainii'tl as new, it shall be in the power of the
court, to adju Igi* and .iwaid as to costs as may appear to
be just and ctpiitabie. (A)

(a) 1. Tlie right Uj pluod ihu gcncrul issvio and givo notice, in an en*

PATENT LAWS. 141

ACT or 183G, CUAP. 357, § 15.

largemcnt of the defendant's mode of defence, but docs not take nway
his riirlit to jilcad .specially. PhUlips v. Coinbstock, 4 McLean, 6J5. —
McLea.v, J.; lud., l.siu.

l!. Tlic defendant need n(>t plead tlie poneral is.siie, and give notice
of tiie special matter. He nuiy plead s|iccially. and tlien llie j)lea is
the only notice. Evam v. Eaton, 3 AVlicat., 504. — Mah.shai.l. Ch. J.;
Sup. Cl., 181. S. Crrant v. Raymond, U Pet., 217. — Marshall, Cli. J. ;
Sup. Ct., I8:{2. Phillips V. CoinbslocJc, 4 Mclxjan, 525. — McLean. J.:
lud., 1 8 19. Smith v. Eli/. 1 5 How., 141.— Taxky, Ch. J. ; Sup. Ct., 1H5.J.
Diiy V. ^V. E. Cur-Sprinj Co., 4 Blatehf., 181.— Betts, J.; N. Y., 1854.

3. But wl ere notice of .special matter is given under the general
issue, special pleas containing the same matters cannot be filed. TV7/-
der \. Gaykr. 1 Blatehf., 5'j7. — Nelsu.v, J.; N. Y., 1S50. Brunswick v.
Holzalh, MS.— Leavitt, J.; Ohio, 1858.

(6) 1. No order of court is necessary to entitle a defendant to file and
serve notice of special matter. It is only necessary that it be in wri-
ting and be served thirty days before the trial. Ttese v. Huntington, 23
How., 10. — Cliffopu>, J.; »Sup. Ct., 1859.

2. if a l.rst notice is defective or not sufficiently comprehensive,
other notices may be given to remedy the defect or supply the de-
ficiency. Jfjid., 10.

3. Under such notice, depositions taken before it was served, as well
aa those taken afterwards, are adniis-sible. Jbid., 10.

4. Notices may be served in term time, but must be thirty days be-
fore trial. Latta v. Shauk, M.S.— Leavitt, J.; Ohio, 1850.

5. !>ueh notices cannot, however, be filed and served in suits la
equity. JJouyhty v. Vl'wY, MS. — Nelson, Suii'MA.v, JJ. ; N. Y., 1865.

(c) 1. It is a question fur the jury whether the si^citication contains
the whole truth relative to the discovery ; and, if not, whether it has
been concciled with a view to deceive. lieuUjen v. Kanowrs, 1 Wash.,
171.— Wasuixgto.v, J. ; Pa., 1804.

2. A defect or concealment is not fatal, unless made with an inten-
tion to deceive. Whiitemorev. Cuitt-r, 1 Gall., 437. — Stoky, J.; Mass.,
1813. Gray y. James, Pet. C. C, 409. — Wasuingtox. J.; Pa., 1817.
LoukU v. Lenis, 1 Mass., 188, 189. — STORY, J.; Mass., 1817.

3. The question as to the materiality of the thing concealed is, could
an artist, after the e-xjuration of the patent, construct a machine by
looking at the spccilication. RtuUjtn v. Kanours, 1 Wash., 171.—
■Wasuixgtox, J. ; Pa., 1804.

((/) 1. The defence "that the patentee was not the original and first
inventor or di.scoverer of the thing patented," is complete Vithout
showing that the first inventor had put hi.s invention in practice.
midnath v. Uvath, MS. (.Vpp. Ca.><.) — Craxcii, Ch. J. ; D. C. 1S41.

2. No person who is not at once the first and original inventor, is
entitled to a patent. A subsequent inventor, though an original one, is
not. Reedy. Cutter, 1 Story, 59tl.— SroitY. J.; Mas.s., 1841.

See also Digest Pat. Cases, title Lsvextor, B.

142 PATENT LAWS.

ACT or 1836, CHAP. 357, § 15.

(f) 1. Tlio description in a public work must bo sudlcicntly full and
precise to enable a mfdmnic to construct the inacliine, and must bo in
all material rosi>ects like that covered by the plaintifl's patent. Par-
ker V. StUes, 5 McLean, Gl.— McLeaS. J. : Ohio. 1.S49.

•J. The publication may be proved as to its coutent.s, and the fact of
publicitiou by the production of the book, or by parol testimony. Alien
V. Hunter, 6 McLean, 31 1.— McLkan, J.; Ohio, 185'..

3. The publication m\\< have been prior to the tinx'' of invention. It
is not suftjcient that it was prior to the time of application for a patent.
Bartholomew v. Sawyer, MS — IsoEiisoLi., J.; N. Y., 1859. AUm v.
Hunter, 6 McLean, 311.— McLean. J.; Ohio. 1855.

4. To render admissible in evidence a printed publication it is not
necessary to make proof of the date of its publication. A book pur-
poriiti^f on its title-papc to be pulilished in a certain year will l>e ro-
ceived without proof that it was then published. JwLion v. C'o/x*, MS. —
Leavitt, J.; Ohio, 1800.

5. A book of j)lates without any letter-pre.es cannot bo admitted in
evidence. Semble, that it is not a "printe<l publication." lOiiL

6. Where reference is made to a public work, it shouhl be to the
particular part of the work intended to be relied n|MMi. A reference
merely to the title of tlie work is not sufficient. Fnole v. Silsby, 1
Bbtolif., 4.'. 4, 402.— ("OXKI.INO, NKL.SO.V, JJ.; X. Y., 1849. Stlnby V.
J-'oote, IJ How., 222— Ci UTl.s. J.; Sup. Ct., 18.')2.

See also DiuEST Pat. Case.><. title Pcni.ic Work.

(/) 1. The public use or sale, to defeat the inventor of a right to a
patent, muKt l)e a public use or sale by others with his knowledge aud
consent before his application for a patent, h'jan v. Goodwin, 3 Sumn.,
.'.18.— .Stouy, J. ; Mass., 18::;). ^'i/rth v. Stone, 1 Story, 281.— vStort,
.1.; Ma.^.s., 1«40. Gayler v. WiUlr-r, lu How., 4".«;, 4;)S.— Taxev, Ch. J. ;
Sui>. Ct.. 1850. PiUi V. IJcUl, 2 lilatehf. 235, 2:iO.— Xei.sox, J.; N. Y.,
18.J1. Hunt V. I/owe, MS. (.\pp. <"as.)— M«ui.sell, J.; 1). C, 1855.

2. \ use without the iiivenior's knowlod^t) ^r consent, or experi-
mental to ascertain its value, utility, or succcsh, or a use inlermodiato
tlto aiiplicnliou ami grant, will not bo Bulllcient. Jiynn v. Goodwin, 3
Sumn., 518.— Stouy, J.; Masn.. 18.(9. Wyrth v. St-nr, 1 Story, 281. —
Stouy, J.; Mass., 1840. J'irrfon v. F.nijU Screw Co., 3 Story, 407. —
SroBY. J.; U. I.. 184 1. Winana v. S. Y. d- II ir. li. li., 31 'jour. Fr.
lM^t.. ::d Sor, 322.— .Vei.Sov, .1. ; N. Y.. 18.'.5.

:t. n 1... r, .i,i lo uMo and sell iin invention for two yearn proTions to
;hp n) ' now conferred by act of 1H39. hocliim 7.

Se. -r I'AT. Cahks, titles .\ii.\MKj\iiENT. ,\.; Pt'liMC USR.

(y) 1. An inventor who hart (Irst ncHially perfeetrd his invontiim will
not b«< doomtnl ifj hiivo Hurreptitiously or unjtiHily obUiined a patent for
th it V ' inventofl by unother, uti'oBS tho latter WM
„t tl . le-o in adapting and perfecting his inven-
tion. ...-.i •• ^ 1 • • 'V, 599. — Stouy, J.; Mjuim., 1841.

2. But t!iO Qrnt iavont<jr has tho prior right if bo is using due dili-

PATENT LAWS. 148

ACT OF 183G, CHAP. 357, g 15.

gence, even though another may have first perfected the invention.
J bid., 600.

H. Tlic clause using " rcasonaljlo dilipetico in adapting and perfeot-
ing" an invention is apjilicabli.' only to the case of a defence tliat tho
phiintitV's ])atfnt had been snrreptilit)\isly or unjustly obtaine<l ; and if
pleaded, it may be necessary for the defendant to aliow, in order to
vacate the patent, tliat he was usinir due diligonco when the patent
was obtained. Pernj v. Cornell, MS. (App. Cas.) — Craxcii, Ch. J.;
D. C, 1847.

4. The words " unless such person was using reasonable diligenco
in adapting and porfi-cting tho same," constitute a <]ualification of tlie
preceding language of the section, so that an inventor who lias actu-
ally perfected his invention will not be deemed to have surreptitiously
or unjustly obtained a patent for that wliicli was in fact invenUxl by
another, uth^s the latter was at the time nsing reasonable diU(jtnce in
adapiing and perfecting the same. Marshall v. Mee, MS. (App. Cas.) —
Dc.NLOP, J.; D. C, 1853.

5. The defence tliat tiie patentee had "surreptitiously and unjustly
obtained a patent for that which was in fact invented or discovered by
another, who was using reasonable diligence in perfecting and adapt-
ing tile same," does not necessarily imply liad faith on the part of the
patentee against whose patent this defence is set up. The words
were intended to be used, and are used, in their broadest sense.
Plidps, Dodge <fc Co., v. Broun Bros., 18 llow. Pr. — Nelsox, J. ; N. Y.,
1S59.

6. If a person does not use due diligence in perfecting bis invention
after he has conceived the idea, and another conceives the idea and
perfects it, and applies it to use, the latter will ije considered the tirst
inventor, and a patent granted the former will bo void. Ransom v.
Mayor, <tc., or New Yorlc, MS. — Halt., J.; N. Y.. 185G.

(h) 1. An alien patentee must put and continue on sale his invention
witiiin eighteen months from the date of his patent. IlildreaOi v.
Jltath, MS. (App. Cas.)— Cranch, Ch. J.- D. C, 1811.

2. The assignees of an alien patentee take their patent with all tho
privileges of American citizens. The alien clause in this section does
not apply to such assignees. Tatliam v. Loivbtr, 2 Blatchf., 60, 51. —
Nelso.v, J.; X. Y., 184 7.

3. But it is not necessary tliat an alien patentee, or his assignee,
should take active measures for putting his patented invention in tho
market, and forcing a sale, but only that he should at all times bo
ready to sell at a fair price when a reasonable offer is made. J bid., 51.
Tatham v. Le Roy, MS. — Xklson. J.; X. Y., 1849.

(il I. The provision in this section, requiring notice of prior knowl-
edge and use, was intended to guard against surprise from such evi-
dence as was given in Whitney's case. Though his invention was ona
of undoubted originality, two persons were broui:ht forward, one of
whom testilied that he had seen such an invention in England sevi'ii-

144 PATENT LAWS.

ACT or 1836, CHAP. 357, § 16.

teen rears before, and the other that he had seen one in Ireland.
Watdn V. Halroads. 1 Wall.. Jr.. 105.— Ghifr. .1.; Pa., 1R47.

2. The provision of the statnto requirimr notice of the previous use,
is ilosiiined to pivo the patentee the beiieQt of cxaiiiining into the facta
of the Piipposed prior use. Coleman v. Li^for, MS. — Leavitt, J. ;
Ohio, 1S5;».

3. This .section requires only the names and residence.'* of the per-
sons who possessed the prior knowledge, and of the places whore the
invention lidB been used. The names and re.'^idenccs of tho witnesses
need not l>e piven. Wilton v. Jiuilroads. 1 'Wall., Jr., 105. — GiilEn, J.;
Pa., 1847. Many v. dagger, 1 Blalehf., 370.— Nelsok, J.; N. Y.,
1848.

4. Notice of the time of the prior knowledge or use is not required.
PhiUips V. Page, 24 How., IGS.— Xei-.son, J.; Sup. Ct., 18G0.

6. In tlie seventh circuit, tiio notice must specify the street or fac-
tor}' whore the prior stnicture was U8e<l, or the name of tho person or
owner \i8inp it. The name of the city, or town, or county, is not
BufBciently d<'finito as to jilace. iMttn v. Shawk. MS. — I.e.wiit, J.;
Ohio, 185U. Cvleman v. Li^mr, MS. — Lkavitt, J.; Ohio, IH.'iO.

6. And also, the name of the person by wliom tho j)rior knowledge
is to be proved. Judson v. Cop^ MS.— Leavitt, J.; Ohio, 1800.

See al.*o Dkjest Pat. Case.s. title (Ikxeual Is.sue, B.

{j) 1. The provision of section 7 and of this section introdnoed nn
im|)ortaut moditlcution into the laws of patents, designed to protect tho
AiHcric.'ui inventor against the inju.stii-v of being thrown out of tho
fruits of his in(;eDuity l)y the existence of n .secret invention or discov-
ery abroad, that i.s a discovery not patented, ntul not described in any
printed publication. Anon., 5 Opin., 21. — Toli'EY, Atty.-tien., 1848.

2. Tlie only exception to the rule that a patentee must be tho origlu&l
and first inventor, exists in the case of u party obtaining a patent,
believing himself to bo tho original inventor, and his invention is shown
to have been known in a foreign country, but not patented there, or
doHcribed in a printed )iublication. I'arkrr v. Stilfs, 5 McL<<an, 01.^
McLkas. J.; Ohio, iMl'.i.

3. In dr-termining whether the j>at<ntoo Mievnl himself to l>o tho
first inventor, the delendant may give evi<lenco that the patentee
knew of the existetx-e of tii<< thi'ig aliroad; ami in considerinij the fact
whether be ho Mirvrti himself to bo tho first inventor, it is material to
determine whether ho was in fact tho original inventor. Fcrbush v.
Cook, in Mo Law llep., (jr.t. — Ciims. .F.; Mass., 18.'>7.

4. A I rior use of a thin;.' in n for«'iK'n country will not invalidate ft
patent »ubwfju<'ntly taken out here, where the inventor lulieved him-
wlf to Ix' l!io first inventor, unlcNs the prior invention had been pat-
ented, or deocribed in some printed publicatiou. Q'leman v. Liemrr,
M.S.— LEAVirr. J.; Ohii>, I8u9.

6. KvideniH- cjinnot b«' re<x'ived of an actual use and knowledge of
■n invention In a foreign country, prior to the time of tho invention

PATENT LAWS. 145

ACT OF 1836, CHAP. 357, §§ 15, 16. is roncE.

hero, hut the defendants must ho confined to the description of the
iuvcnlioD as found in printed publications or patents; tliey cannot go
beyond sui'h ])ubrn'ations or palcuta. Jud-on v. Cope, MS. — Leavitt,
J.; Ohio, 18C0.

6. The time referred to in this sectioD by the terms "having been
before known and used in any foreign country," or "had been patented
or described in any printed publication," is the time when the original
discovery or invention of a patentee was made, and not the time when
he presented liis ap|ilicatioa ff>r a patent. Bartholomew v. Sawyrr,
MS.— IXUEHSOLI., J.; N. Y., 1859.

7. A foreign patent, in order to defeat an American patent for the
same invention, must have been before the discovery or invention
here; it is not sufficient that it is before the application. Howe v.
Morton, M.S.— Spragle, J.; Mass., 18G0.

8. An invention is not "patented" in England within the meaning
of this section, until the complete specification has been enrolled — until
the invention shall have been made patent to the world, which is
usually six montiis after tlie date of the patent. IbtJ.

(k) The second proviso of this section virtually superseded by the
act of 1837, section 9.

Section 16. [Enlarged by act of 1839, § 10.] And be
it further enacted, That whenever there shall be two in-
terfering patents, or whenever a patent on application
shall have been refused on an adverse decision of a board
of examiners (a), on the ground that the patent applied
for would interfere with an unexpired patent previously
granted, any person interested in any such patent, either
by assignment or otherwise (ft), in the one case, and any
such applicant in the other case, may have remedy by
bill in equity; and the court having cognizance thereof,
on notice to adverse parties, and other due proceedings
had, may adjudge and declare either the patents void in
the whole or in part, or inoperative or invalid in any par-
ticular part or portion of the United States, according to
the interest which tlie parties to such suit may possess in
the patent or the inventions patented, and may also
adjudge that such applicant is entitled, according to the
principles and provisions of this act, to have and receive
7

14fl PATENT LAWS.

ACT or 1836, CIIAP. 367, § IG.

a patent for his invention, as specified in his claim, or for
any part thereof, as the fact of priority of right or inven-
tion .«-lialI in any sucli case be made to appear. (<•) And
siuli adjudicalion, if it be in fivor of the right of such
applicant, shall authorize the Commissioner to issue such
]>atent, on liis tilin<; a cojiy of the adjudication, and other-
■\vise comi»lying witli the requisitions of this act. Pro-
viJi.d, /loircvcr, That no such judgment or adjudication
sliali affect the riglits of any person except the parties to
tlie action and those deriving title from or under them
subsequent to the rendition of such judgment.

(a) Of the justices of tlic Supreme Court of the District of Columbia,
nppeals now lying to them untler section 3 of the act of 18C3, estjib-
lishing that court. Previous to tiiat act ft[>peals lay, by Uio act of
1839, section 11, to the chief-justice, ami, by the act of 1852, section 1,
to the assistant justices of the Circuit Court of the District of Columbia.

(b) The provisions of this section are now extcnilod "to all cases
where patents are refused for any reason whatever." Act of 1839,
Ecction 10.

(c) 1. Proceedings, under this section and eoction 10 of the act of
1831), in equity, against the Commissioner of Patents, to compel hira
to if^suo a patent, must In? commenced in the Circuit Court of the
Uniteii ."-'tales for the In.strict of Columbia, and the I'ircuit Courts ia
llio various Slates have no jurisdiction. Prtntiaa v. EU-yworth, Via.
I'ut. Off., 35, 3i;.— Randai.i., J.; Pa., 18-16.

2. r|>on a bill JUod under this section and section 10 of the net of
1839, to declare a i)atent granted by the Commissioner invalid or inop-
erative, the hearing in altogrlher indejiendent of that before the Com-
niisHioner, and takes jjhice ujion such testimony as the parties may see
111 to iirf><luce, agroably to liie rules and practice of a court f)f equity.
The evidence l>cfore the Conunis-tioner is not evitlenco in such a suit
except by connont of parties ; nor are the parti»«» restricted to the tes-
timony used before the CommisHioncr. Kither parly is at liberty to
iulroduoo ad<litional evidence. Atkinson v. Boanlntan, M.S. — Neusox,
J.; N. Y, 1851.

3. The assignee of an invenlion. by virtue of nn oasignment made
Ix'forf pnUnt 1? sued, may llle a bill in his own name under this H'-ction
.'.hd •'irtion 10 of the act of 18:19. agaiimt a patentee U) whom a p:itent
istixd on Iho rej«H-tion of his assijrtior's ajiplicaiion, for the piirjioso of
iitinullin^ tlx' pntont so issucfl, and having one griinU'd to him as as*
BigDc«. And audi assiguuieut need not bavo been recorded before

PATENT LAWS. 147

ACT OF 1836, CHAP. 357, §17. IN FORCE.

Bult brought : it will bo siifTicient if it is recorded at any time before
the issuiii}!: of the patent. Gay v. Cornell, 1 Blalchf, r>U'J, 510. — Nel-
80.V, J.; N. Y., 18 to.

4. The Circuit Courts of the United States have exclusive jurisdic-
tion under this section. Gibson v. Woodivorth, 8 Paige, 134. — Wal-
worth, Chan.; N. Y., 1840.

Section 17. [Enlarged by act of 1861, chap. 37.] And
heit furtlwr oiactcd, That all actions, suit.s, controversies,
and cases arising under any law of the United States,
granting or confirming to inventors the exclusive right to
their inventions or discoveries, shall be originally cog-
nizable, as well in equity as at law, by the Circuit Courts
of the United States, or any District Court having the
power and jurisdiction of a Circuit Court; which courts
shall have power, upon a bill in equity filed by any party
aggrieved, in any such case, to grant injunctions, accord-
ing to the course and principles of courts of equity, to
prevent the violation of the rights of any inventor as
secured to him by any law of the United States, on such
terras and conditions as said courts may deem reason-
able (rt) : Provided, hoicever, That from all judgments
and decrees from any such court rendered in the premises,
a writ of error or appeal, as the case may require, shall lie
to the Supreme Court of the United States, in the same
manner and under the same circumstances as is now pro-
vided by law in other judgments and decrees of Circuit
Courts, and in all other cases in which the court shall
deem it reasonable to allow the same, (h)

(o) 1. Under this section the Circuit Courts of the Unit«d States
have not only original, but exclusive cognizance of all actions arising
under the patent laws. Dudlei/ y. Mayheic, 3 Comst., 14. — Strong, J.;
N. Y., 184!). Elmer v. Fetmel, 40 Maine, 434.— Rice. J.; Me., 1856.
Parsons V. Barnard, 1 John., 144. — Ciriam; N. Y., 1810.

2. The jurisdiction conferred upon the Circuit Courts by this section
ifi the same in its nature and extent as the equitj jurisdiction in Eng-

148 PATENT LAWS.

Sr rOBCE. ACT OP 1836, OHAP. 357, § 17.

land, from w hich it is derived. Allen v. Blunt, 1 Blatchf., 4S6. — Nel-
BOX, J.; N. Y., 1819.

3. Under this section the Circuit Courts have jurisdiction irresiwctive
of the riglit of tlio jilaintifT to an injunction or a demand for one. Kevins
V. Johnson, 3 Blatchf., 83.— Nelson, Bktts, JJ.; N. Y., 18;>3.

4. The natural interpretation of the lanpuago of this section seems
to be, that Conpress has betowed upon this court a common jurisdic-
tion, botli on its law and equity sides, over all cases under the patt-nt
laws, and that no suit of that character can be maintained at law which
may not also be prosecuted in equity. Jbid., 83.

5. In cases arisiiip under tlie jtatint law, the jurisdiction of the Cir-
cuit Courts docs not depend upon the citizensliip of the parties to the
action, or the amount in controversy, but upon the subject-matter.
Allen V. Blunt, 1 Blatchf., 48t;.—NKi.soN. J. ; N. Y., 1849. Goodyear
V. i'ni"n htub Co., MS. — Ixgkrsoli., J.; N. Y., 1857.

G. The jurisdiction as to subject-matter does not extend to a bill in
equity liUd for the spocilic perfurmanc-e of a contract res|>ecting patents.
Xrsiiiith V. Caliert, 1 ^V(Jod. k Min , 37. — WooDULUY. J.; Mass., 1815.
Brwks V. SloUey, 3 Mclx-an, 525.— McLe.\x, .1.; Ohio, 1813. Burr v.
Gregory, 2 I'aiiie, 42fi, 429.— Tnoursox, J.; N. Y., 1828.

7. Xur to a suit brought to enforce the covenants of a license grant-
ed under a patent. Goodyear v. Union Bub. Co., MS. — Inqersoll, J. ;
N. Y., 1857.

8. Section 1 1 of the judiciary act of 1789 requiring one of the parties,
plaiiitifl' or defendant, to bo an inhabitant of the State where tlio suit
is brought, dois not apply to actions arising under the patent laws.
All'n V. Blunt, 1 Blatchf., 4 StJ.— Nelson, .F.; N. Y., 18J9.

9. To give the courts jurisdiction, the party defendant must bo an
inliabitant of the district in which the suit is brouglit, or he must bo
found within it at ti.o time of the service of the original process. The
provisioiiB of section 11 of the act of 178rt, in this respect, apply to
patent actions. Day v. Newark Ind. Hub. Co., 1 lUatclif., f.3l, ti32. —
Nkusov, J. ; N. Y., 1850. AU-n v. Blunt, 1 Blatchf, 48ti.— Neusox. J.;
N. Y., 1849. Wdwn v. Sherman. 1 Blatchf, 541 — Nkuson, .1.; N. Y.,
]850. Brown v. Shannon, 20 How., 50. — T.tNEV, Ch. J.; Sup. Ct,
1857. Cluiffee V. Unyuard, 20 Flow., 215— Catkon, J.; Sup. Ct , 1857.

See also I»ich.:,st Tat. (.'a»e.s, title ('0LKT8, B. 2.

(6) 1. Other rensoiiaijle cases under this section in which npponls
and writa of error may bo allowed to the Supreme Court, must bo
limited to cases which rolafo to the construction of the patent laws,
and sii' h «« involve iiii|Mirtnnt and nui tnltiiig matters oonnocled with
those laws, and qucMtions nolly doubtful. Allen v. Blunt, 2 Wood, k
Min., 157.— WoouBtHV, .1.; Mass, l8iC. Sizer v. Manny, 16 How.,
103.— TaKKV. Ch. J.; Hup. Ct., 1H53.

2. Under this iM'<'ti<in, if a writ of error is allowed liy the court as
" roaaonablo," Bueli writ MiU'<t bring up the whole case for i-onsidera-
tioo, aod the court below cannot decide aa to what particular pointa

PATENT LAWS. 149

ACT OP 1836, CHAP. 357, § 18. in POROK,

shall bo taken up. IJogg v. Emerson, 6 How., 478. — "Woodbury, J. ;
Sup. Ct., 1847.

3. An appeal or writ of error now lies to tlic Supremo Court from
all judpmonts and decrees of any Circuit Court rendered in any action
nri.sing under the patent laws, without regard to the value or amount
in controversy. Act of 18G1, chap. 37.

Seo also Dioest Pat. Cases, titles Appeals, A. ; Weit of Error.

Section 18. [Amended by act of 1848, § 1; act of
1861, §§ 12, 16.] A)id be it further enacted, That when-
ever any patentee of an invention or discovery shall desire
an extension of his patent beyond the term of its limita-
tion, he may make application therefor, in writing, to the
Commissioner of the Patent (3ffice, setting forth the
grounds thereof (a) ; and the Commissioner shall, on the
applicant's paying the sum of forty dollars to the credit
of the treasury (h), as in the case of an original applica-
tion for a patent, cause to be published in one or more of
the principal newspapers in the city of Washington, and
in such other paper or papers as he may deem proper,
published in the section of country most interested ad-
versely to the extension of the patent, a notice of such
application and of the time and place when and where
the same will be considered, that any person may appear
and show canse why the e.xtension should not be grant-
ed, (e) And the Secretary of State, the Commissioner of
the Patent Office, and the Solicitor of the Treasury, shall
constitute a board (d) to hear and decide upon the evi-
dence produced before them both for and against the
extension, and shall sit for that purpose at the time and
place designated in the published notice thereof. The.
patentee shall furnish to said board a statement, in
■writing, under oath, of the ascertained value of the
invention, and of his receipts and expenditures, sufficient-
ly in detail to exhibit a true and faithful account of loss

160 PATENT LAWS.

I\ rOBCI. ACT or 183G, chap. 357, § 18.

and profit in any manner accruing to him from and by
reason of paid invention. And if, upon a lu aring of the
matter, it shall apj>ear to the full and entire satisfaction
of said board, having due regard to the public interest
therein, that it is just and proper that the term of the
jiatent should be extended, by reason of the patentee,
without neglect or fault on his part, having failed to
obtain, from the use and sale of his invention, a reason-
able remuncrati<in for the time, ingenuity, and expense
bestowed upon the same, and the introduction thereof
into use, it shall be the duty of the Commissioner to
renew and extend the patent, by making a certificate
thereon of such extension, for the term of seven years
from and after the expiration of the first term ; which
certificate, with a certificate of said board of their
judgment and opinion as aforesaid, shall be entered on
record in the Patent Office ; and thereupon the said
patent shall have the same effect in law as though it
La<l been originally granted for the t<rm of twenty-one
years, (e) And the benefit of such renewal shall extend
to assignees and grantees of the right to use the thing
patented, to the extent of their respective interests there-
in {/): Pro'-idiil, hmrcver, That no extension of a
patent shall be granted after the expiration of the term
for which it was originally issued, (ff)

(a) 1. In tliiii doction Iho word patrnUe in iidpd m equivalent to in-
ventor. H'Wr/v^«A V, ShrrmatK 3 Piory, n<', — St*)UT, .J.; MaBS., 1«44.

2. Thui noclion aulhorizoH tho extonnion of n patent on the applica-
tion of uQ a<lmini«tralor. Nipnan'a C'-we, 3 <>pin, lli'i. — (iKUM>T,
Atly.-(»en. ; 1H3'J Van ll,M,k v. Scudder (cittd i Story. UJ; 3 Mc-
Lean. 4:{8) — Thomi-wiK, J. ; N. Y.. 1H4:1. Brooks v. UicktieU, 3 McLoun,
X5H.— M<L«AS, J.; Ohio, 1HI3. Drooka \. DirkneU. 3 Mclx-nn, 436. —
McLeaK, J.; f)hio, 1844. Woixiwcrth v. Sherman, 3 Story. 17*2.—
&rOBT, J.; U»M, 1844. Woodworth v. Wilson, 4 Uow., 71G.— Nelso»,
i. i Sup. CL, 18*6.

PATENT LAWS. 161

ACT or 1836, CHAP. 357, § 13.

3. And tins, though the patentee diirinp: his lifetime had disposed of
all his interest in the existing patent, and having at tiie time of his
death no interest in it. Wilson v. Hosatau, 4 How., 675, 686, 688. —
Nei^o.v, J.; Sup. Ct., 1845.

See al.so Diokst P.\t. Ca.ses, title Extension of Patknt, A.

(6) The fee i.s now fifty dollars on the application for an extension,
and fifty dollars whon the extension is granted. Act of 18G1, § 10.

(c) 1. The notice of application for an extension is intended to pro-
tect the public, and give all an opportunity to appear and oppose.
Gale's Cas'', 3 Opin., 6;i4.— Gilpin, Atty.-Gen. ; 1840.

2. Application must now be made at least ninety daya before the
expiration of the patent, and the notice must be published at least
sixty days before such expiration. Act of 1861, S 12.

(d) Commissioner of Patents substituted for this board by act of
1848, section 1.

(e) 1. The right of renewal is not limited to future patents, but ap-
plies to the past. Woodworth v. Sherman, 3 Story, 176. — Story, J.;
Mass., 1844. Wilson v. Turntr, 1 Law Rep., 529.— Taney, Ch. J.; Md.,
1845.

2. This section provides for but one extension. Gibson v. Cook, %
Blatchf, 146— Nelso.v, .1.; N. Y.. 1850.

3. The decision of the Board of Commissioners, under this section, is
conclu.sivo within the scope of its authority. Brooks v. Bkknell, 3
McLean, 2.')8. — McLean, J.; Ohio, 184.T. Wilson \. Hosscau, 4 How.,
688.— Nklson, J.; Sup. Ct., 1345. Woodworth v. Stone, 3 Stor>-, 753.
—Story, J.; Mass.. 1845. Coltx. Young, 2 Blatchf., 473, 474.— Nel-
son, J.; N. Y., 1852. Battin v. Taggert. 17 How., 84.— McLean, J.;
Sup. Ct., 1854. Clunx v. Brewer, 2 Curt., 518.— CcKTis, J.; Mass.,
1855.

4. A renewed patent confers the same rights with an original patent
Evans v. Jordan, 1 Brock., 254. — Marshall, Ch. J.; Va., 1813.

5. After an extension, the- original patent becomes one virtually for
twenty-one years. Gibson t. Harris, 1 Blatchf., 169. — Nelson, J. ; N
Y., 1846.

6. If extended again by act of Congress, it becomes one for twenty
eight years. Woodworth v. Edwards, 3 Wood. 4 Min., 125. — Wood
BCRY, J. ; Mass., 1847.

7. Patents may also be extended by act of Congress, after having
been once extended, under this section. Evans v. Eaton, Pet. C. C,
3;?7.— Washinoton. J. ; Pa., 1816. Evans v. Eaton. 3 Wheat., 528.—
Marshall, Ch. J.; Sup. Ct., 1818. Blanchard v. IJaynef. 6 West. Law
Jour., 83.— Woodbury. J. ; X. H., 1848. Bloomer v. StoUey, 5 McLean,
160, 161.— McLean, J.; Ohio, 1850.

See also Digest Pat. Cases, title Extension of Patent, B., D.. E.

(/) 1. The extension of a patent, under this section, does not inure
to the benefit of assignees or grantees under the original patent, so as
to Test in them any exclusive right. But the benefit of such renewal

152 PATENT LAWS.

IN FORCE. ACT OF 1836, CUAP. 357, g§ 18, 19.

is limited to those who were in the use of the patented article at the
time of the renewal, and saves to Buch pereons the ripht to xise the
machines hfhl by them ut tlic time of siicli renewal. Wd-Km v. Bosseau,
4 How., 082. — Nkuso.v, J.; Sup. Ct., 1!>-13.

2. T!io meaning of the words "thinp: patented," in the latter part
of this section, when construed in connection with the simple riphi to
uae, witliout the right to make and rend, lias reference to the machine
patented. Ibid., 683.

3. The phra.se "to the extent of their interests therein," means their
interests in the patented machines, be that interest in one or more at
the time of the extension. Ibid.. 683.

4. The object of the clause ns to assignees, is to preserve any pre-
vious contract of assignment in the sense in which boiii parties under-
ptoo<l and intended it at the time it was made, and to secure to the
purchaser the right he had intended to buy, and which the patentee
intended to sell. Wilson v. Turrur, 7 Law Kep., 630,— Tankt, Ch. J.;
Md., 184.J.

6. The words of this section as to assignees and grantees, seem to
convey the impression that sonietliing more than the mere ownership
of existing machines was intended, and that they were intended to
embrace all classes of such assignees and grantees, and all inventions,
whether of machines, processes, or comjiositions of matter, and to em-
brace rights and interests which were diflferent in extent, either of time
or territory, or both. Day v. Union Hub. Co., 3 Blatchf., 497. — IIall,
J.; X. Y., 1856.

6. But such right is limited to a right to U5«, although the person
holding it may also have iicld. during the original term, an exclusive
right to use, to make, and vend. And such right to u-se is .secured
only to the extent of the respective interests of the assignees or
grantees tlierein. IbpJ., 502.

See also I'KiE.sT Tat. Casrs, title Extension' of Patent, C.

(;;) The extension of all patents, except for designs, granted subM-
queully to March 2d, Isoi, is now prohibited. Act of 18G1, g 16.

Section 19. An<f l>r it furdur nmrffif. That tlnTo
phall he provided for llic use of sriid ofllce, a lil>rary of
scientific works and jn-riodical puhlitatioiis, Ijolli foreign
and American, calculated to facilitate the discharge of
tlie duties herehy required of the chief officers therein, to
he j»urclia«e<l uiidtr the direction of the Committee of
the Library of Congress. And the sum of fifteen hun-
dred dollars ift hereby appropriated for that purpose, to
be ]>aid out of tlie patent fund.

PATENT LAWS. 153

ACT OF 1836, CHAP. 357, §§ 20, 21.

Section 20. And be it further enacted, That it shall
be the duty of the Commissioner to cause to be classified
and .'irrangcd, in such rooms or cjallcrics as may be pro-
vidt-'il for that purpose, in suitable cases, when necessary
for their preservation, and in such manner as shall be
conducive to a beneficial and favorable display thereof,
the models and specimens of compositions and of fabrics
and other manufactures and works of art, patented or
unpatented, which have been, or shall hereafter be, de-
posited in said office. And said rooms or galleries shall
be kept open during suitable hours for public inspection.

The Commissioner of Patents may now restore to appliennts, models
of rejected applications, or of applications for designs, or otherwise dis-
pose of then^ in cases wlierc he shall not tliink it necessary to preserve
them. Act of ISGl, g 5.

Seition 21. And be it further enacted. That all acts
and parts of acts heretofore passed on this subject be, and
the same are hereby repealed : Provided, hcncever, That
all actions and processes in law or equity sued out prior
to the passage of this act, may be prosecuted to final
judgment and cxiH-uiion, in the same manner as though
this act had not been passed, excepting and saving the
application to any such action of the provisions of the
fourteenth and fifteenth sections of this act, so far as they
may be applicable thereto : And provided, afs<>. That all
applications or petitions for patents, pending at the time
of the passage of this act, in cases where the duty has
been paid, shall be proceeded with and acted on in the
same mamier as though filed after the passage hereof

Approved July 4th, 1836.

154 PATENT LAWS.

IN rOROK. ACT or 1837, CHAP, 45, § 1.

ACT OF 1837, CHAPTER 45.
5 Statutes at Large, 191.

[T7ii» Act still in Force.]

An Act in addition to the act to promote the progress of

science and useful arts.

Sectiox 1. JJe it enacted by the Senate and House of
Representatives of the United States of America in Con-
gress assembled., That any person who may be in posses-
sion of, or in any way interested in, any patent for an
invention, discovery, or improvement, issued prior to the
fil^t-enth day of DeeemlxT, in the year of our Lord one
thuus.-ind ei^^ht hundre<l and thirty-six, or in an assign-
ment of any patent, or interest therein, executed and re-
corded prior to the said fifteenth thiy of Deeenihcr, may,
witliuut charge, on presentation or transmission thereof
to the Commissioner of Patents, have the same recorded
anew in the Patent Office, together with the descriptions,
Hpet'ifieaf ions of chiim and drawings nnnexed or lieh)ng-
ing to the same ; and it shall be the duty of the Commifl-
hioner to cause the same, or any authenticated copy of
th«* original record, speeifieation, t>r drawing which ho
may obtain, to be trans(;ril)ed and copied into books
of record to be kept for that purpose ; and wherever a
drawing was not originally ann<'xed to the patent and
referred to in tin- specification, any drawing produced as
a delineation of the invention, being verified by oath in
such maimer as the Coraniissioner shall require, may be
transniitte<l and placed on tile or cojiied as aforesaid, to-
gether with certificate of the oath; or such drawings may

PATENT LAWS. 155

ACT OP 1837, CHAP. 45, §§ 1, 2. IN FORCE.

be made in the office, under the direction of the Commis-
sioner, in conformity with the specification. And it shall
be the duty of the Commissioner to take such measures
as may be advised and determined by the Board of Com-
missioners provided for in tlie fourth section of this act,
to obtain the patents, specifications, and copies aforesaid,
for the purpose of being so transcribed and recorded.
And it sliall be the duty of each of the several clerks of
the judicial courts of the United States, to transmit as
soon as may be, to the Commissioner of the Patent Office,
a statement of all the authenticated copies of patents,
descriptions, specifications, and drawings of inventions
and discoveries made and executed prior to the aforesaid
fifteenth day of December, which may be found on the
files of liis office ; and also to make out and transmit to
said Commissioner, for record as aforesaid, a certified
copy of every such patent, description, specification, or
drawing, which shall be specially required by said Com-
missioner.

Sectiox 2. And be it furthtr enacted^ That copies of
such record and drawings, certified by the Commissioner,
or, in his absence, by the cliief clerk, shall ha prima facie
evidence of the particulars of the invention and of the
patent granted therefor in any judicial court of the United
States, in all cases where copies of the original record or
specification and drawings would be evidence, without
proof of the loss of such originals ; and no patent issued
prior to the aforesaid fifteenth day of December, shall,
after the first day of June next, be received in evidence
in any of the said courts in behalf of the patentee or
other person who shall be in possession of the same,
unless it shall have been so recorded anew, and a draw-

156 PATENT LAWS.

ACT OF 1837, CIUP. 45, §§ 2, 3.

ing of the invention, if separate from the patent, verified
as aforesaid, deposited in the Patent Office ; nor shall any
Aviiiteii as^iLrnnu'Ut of ajiy such ))atent, executed and re-
coitk'd j.rior to tlie said fifteenth day of December, be
received in evidence in any of the said courts in behalf of
tlie assignee or other person in possession thereof, uolil it
shall have been so recorded anew.

1. Uuder this section it was lield, whore a patent was prantod in
lF;t4, but no drawiiii; wa.s attached thereto, and in June, 1837, such
patent was recorded anew, and was also extended for seven years on
the 25lh of Septcmlx>r. lH-t8, and in Xovoniher, 1818, a drawing with
written references was liltd, with an anidavit of the jiatentce of tlio
oorrectncHS of such drawintf. tliat a certilied copy of such drawing was
admissible in evidem-o in connection with the patent and s|»ociticatioo,
and tliat the whoio to;fetht-r made prima jacU eviilence of tiio particu-
lars of such invention. Winana v. Srfienec. & Tivy JL A'., "2 Blatchf.,
2.S3, -JSS, 21*8 -Nkusos, J.; N. Y., 18:il.

1j. Such u drawing', iiowever, as a ),'eneral rule will not bo ofli-ctual
to correct any material defect in the si>eci(ication. ^n case of discrep-
ancy between the drawinjfs and specitication, tlio latter must prevail.
Nor will such a drawing have the same eflbct as if it had been referred
to in the specification. Jbid., 200.

Section 3. [Extended by act of 1842, § 2.] And be it
furlher enartnl^ That whenever it shall appear to the
Commissioner that any patent was destroyed ])y the
l)Uming of the Patent Ofliee building on the aforesaiil
fifteenth day of December, or was otherwise lost prior
thereto, it shall be his duty, on application therefor by
the patentee or other person interested therein, to is-^uo
Ji new piitfut ft)r tlie same invention or diseovery, bearing
the date of the original patent, w ith his certificate theri!-
<jn that it w:is made and issued pursuant to the provisions
of the third section of this act, and shall eiiler the same
of record : J*ruci<h<f, hoiecctr. That before such paten^
shall be issued, tln^ applicant therefor shall deposit in the
I'ateut Ofliee a duplicate, as near as may be, of the origi-

PATENT LAWS. 157

ACT or 1837, CHAP. 45, §§ 3, 4. IN FORCE.

nal mo<lel, Jrawiiitfs, and description, with specification
of the invention or discovery, verified by oath, us shall
be required by the Commissioner ; and such patent and
copies of such drawings and descriptions, duly certified,
shall be admissible as evidence in any judicial court of
the United States, and shall protect the rights of the
patentee, his administrators, heirs, and assigns, to the ex-
tent only in ■which they would have been protected by
the original patent and specification.

1. "U'here a patent was obtained in 18;!4, the original of which and
tlie drawings were destro^-cd b_y fire in 1S3G, and the patentee, under
the act of 18:!7, filed in 1841 a copy of his patent, and deposited a
drawing, wliicli, however, was not verified, but which he verified in
February, 184-1, and subsequently in March, 1844, considering such
copy imperfect, filed another and a fuller drawing, and commenced suit
iu May, 1844; lltld, that a certified copy of such second drawing was
properly received in evidence in such action. Emerson v. Hogg, 2
Blatchf., 9.— Beits, J.; N. Y., 1845.

2. When such drawings are put on file they become public records,
and copies of them must be received in evidence. If they are dis-
cordant, one may destroy the effect of tlie other. Ibid., 12.

3. Under this section drawings when burnt may be restored, and if
in some respects erroneous they can be corrected. Uogg v. Emerson,
11 How., G0(>.— WooDiiL-RY, J.; Sup. Ct., ISfiO.

4. But it would not bo proper to leave the drawings so long not
restored or corrected as to evince neglect, or a design to mislead the
public. Ibid., GOG.

5. The provisions of this section extended to patents granted prior
to December 15th, 1836, but lost subsequent thereto. Act of 1842, § 2.

Section 4. And be it further enacted,, That it shall be
the duty of the Commissioner to procure a duplicate of
such of the models destroyed by fire on the aforesaid
fifteenth day of December, as were most valuable and
interesting, and whose preservation would be important
to the public ; and such as would be necessary to facili-
tate the just discharge of the duties imposed by law on
the Commissiuner iu issuing patents, and to protect the
rights of the public and of patentees in patented i-jven-

158 PATENT LAWS.

nr roRCS. act or 1837, chap. 45, §g 4, 6.

tions and improvements: /Vovtffe(/, That a diiplicate of
Buch models may be obtained at a reasoniible expense:
Auff prorideff, also, That the whole amount of expi'ndi-
ture for this purpose shall not exceed the sum of one
hundred thousand dollars. And there shall be a tem-
porary board of commissioners, to be composed of the
Commissioner of the Patent Office and two other persons
to be appointed by the President, whose duty it shall be
to consider and determine upon the best and most judi-
cious mode of obtaining models of suitable construciion ;
and, also, to consider and determine what models may be
procured in pursuance of, and in accordance with, the
provisions and limitations in this section contained. And
said Commissioners may make and establish all such reg-
ulations, terms, and conditions, not inconsistent with law,
as in their opinion may be j)roper and necessary to carry
the pr(jvisions of this section into effect, according to its
true intent.

SEfTiON 5. [. Amending .act of 1830, g 13.] And be it
/urt/ter t/uirted, That, whenever a j»atent shall be re-
turned for correction and reissue under the thirteenth
section of the net to which this is additional, ami the
patentee shall desire several ])atentrt to be issued for dis-
tinct and separate parts of the thing patented, he shall
first pay, in maimer and in addition to the sum provided
by that act, the sum of thirty dollars for each additional
patent bo to be issued ('/) ; I'rovidftf, /unrrvfr, That no
patent made jirior to the aforesaid fifteenth day of De-
cember, shall be corrected and reissued until a duplicate
of the model and drawing of the thing as originally in-
vented, verified by oath as shall be required by the Com-
missioner, shall be deposited in the Patent Office ;

PATENT LAWS. 159

ACT OF 1837, CHAP. 45, §§ 5, 6. IN FORCE.

Nor shall any adilition of an improvement be made to
any patent heretofore granted, nor any new patent be
issued for an improvement made in any machine, manu-
factmc, or process, to the original inventor, assignee, or
possessor, of a patent therefor, nor any disclaimer be
admitted to record, until a duplicate model and drawing
of the thing originally invented, verified as aforesaid,
shall have beon deposited in the Patent Office, if the
Commissioner sliall require the same ; nor shall any
patent be granted for an invention, improvement, or dis-
covery, the model or drawing of which shall have been
lost, until another model and drawing, if required by
the Commissioner, shall, in like manner, be deposited in
the Patent Office ;

And in all such cases, as well as in those which may
arise under the third section of this act, the question of
compensation for such models and drawing shall be sub-
ject to the judgment and decision of the commissioners
provided for in the fourth section, under the same limita-
tions and restrictions as are therein prescribed.

(a) 1. If an original patent include two inventions, and its validity
on that account is doubted, a separate renewal is just and proper.
Goodyear v. Day, MS. — Grier, J. ; X. J., 1852.

2. With respect to reissues, this section, and section 13 of the act
of 183G are to be taken together in construction, and the most just and
equitable extent to which the terms of the law in its true spirit will
admit of, ouglit to be adopted. Ball, Ex parte, MS. ( App. Cas.) — MoR-
SELL, J.; D. C, 18G0.

3. If the patent be defective or insufficient, either in the specifica-
tion or claim, the patentee has a right, in the absence of fraud and
deception, to have a rei.ssue. for each separate and distinct part, effect-
ually to cure the defect : and lie has the right to restrict or enlarje hia
claim, so as to give it operation, and eflectuate his invention. Ibid.

See also notes to section 13 of the act of 1836.

Section 6. [Enlarging act of 1836, § 5.] And be it
further enacted, That any patent hereafter to be issued,

100 rAT£NT LAWS.

IN FORCE. ACT OF 1S37, CHAP. 46, § 6.

may bu made ami issued to the assignee or assignees of
l!io inventor or discoverer, the assignment thero».»l' being
tiist entered of record, and the application thercfur being
d liy made, and the specification duly sworn to by the
inventor. And in all cases hereafter, the applicant for a
p:iteut shall be held to furnish duplicate drawings, when-
ever t!ie case admits of drawings, one of which to bo
deposited in the office, and the other to be annexed to
the i)atent, and considered a part of the specification.

1. This is un cnabliug statute. Prior to its passajro, letters patent
could only issue to tiie inventor: and after tiiey %fere issued they woro
assignable, so as to ^jive tlio assignee, in whole or in {'art, \ogti\ rights.
Thia act gave the right to the a>.sijfiiec or assignees to have the patent
ihsued to liiin or them, un<l not to the inventor. An^m., 4 Opin., 4U0.
— Masox, Atty.-Gen.; 1845.

2. But patents cannot issue jointly to the inventor as such, and to
the assignee of a partial interest : IJut must issue to the assignee or
aesignecs of the whole interest. Jbid., 4ol.

3. A partial assigniuent before issue, does not entitle the p-nrtiol as-
signco to have the patent issued to him to the extent of his interest.
Ibid, 401.

4. Alter tho assignment of the invention, rftider tliis section, by
which tho inventor divests himself of all interest therein, and transfers
it to the assignee, aUhoiigh the application for a patent must bu in hia
name, still, for all substantial purpo.ses, and in judgment of law, tho
ii.>M»igne<« is the party making the application. Gjy v. CoimL, 1 lilulchf.,
609.— NEI30.S-, J.; N. Y.. Is 19.

6. An assignmi-nt Ixforo paioni issued, may be made aflcr tho rejec-
tion of the uMsignor's apiilicition, and alter liis appeal to the justices
of the Circuit (.'ourt, and wdi be sunicient to enable Bueh Odsignoe to
tile hia bdl under section 10 of the act of ls3ti. amended by sjt^lion 10
of tho act of 1839, to comjiol the issue of a patent to him. Jbid., .i09,
.•.10.

G. If an inventor assign all hia right in an inveiiiion, tlio aasignoe
may have tlio |mlent isHued to himself. Hut if the as-ignmeui bo only
partial, though tho pari ozci-pted ia lunall, the asslguiH) has no legal
claim to the |>utent. It must be i.-<sued in the name of the uiventor,
kud be held by him in trust for the use of the us'iguee, to the extent
of the cquitie** he has by virtue of hia contract. Agcr's t'o-se, MS.,
Opin.— Bi.A( K, Atty.-0<-n,; 18.'i9.

7. Tlio i>rovisi<>n of iliia ncctioo, requiring duplicate drawings, though
directory in it« tcruua, is not a condition : and it has retereuce, in point

PATENT LAWS. IGl

ACT OF 1837, CHAP. 45, § 7. IX FORCE.

of lime, to the issuing of tho patent, and not to the filing of the peti-
tion for it. Duijhcati.' drawings need not he tiled at the time of llio
application, nnd such is the interpretation of tiio Patent Ollice. J-Ye.ich
V. J:ofj<:is, MS. — Kane, J.; Pa., Ibol. O'HeiUij v. J/ors^, 15 How., 12G.
— LiuiEii, J.; Sup. Cl., 1653.

See also Digest Pat. Cases, title Assigxee, B. 3.

Skction 7. A)id })e it further enacted^ Th;it. whenever
any patentee shall have through inadvertence, accident,
or mistake, made his specihcution of claim too broad,
claiming; more th:m that of wliich ho was the original or
iirst inventor, some material and substantial part of the
thing patented being truly and justly his own, any
such patentee, hi."? aibninistrators, executors, and assigns,
whether of the whole or of a sectional interest therein,
may make disclaimer {a) of such parts of the thing pat-
ented as the disdaimant shall not claim to hold by virtue
of the patent or asignmeut, slating therein the extent of
his interest in such patent {b) ; which disclaimer shall be
in writing, attesud by one or more witnesses, and re-
corded in the Patent Oftice, on payment by the person
disclaiming in manner as other patent duties are required
by law to be paid, of the sum of ten dollai-s. And such
disclaimer shall thereafter be taken and considered as
part of the original specification, to the extent of the
interest which shall be possessed in the patent or right
secured thereby, by the disdaimant, and by those claim-
ing by or under him ('■) subsequent to the record thereof.
But no such disclaimer shall atlcct any action pending at
the time of its being filed, except so far as may relate to
the question of unreasonable neglect or delay in filing the
same, {d)

(a) 1. The law requiring and permitting a patentee to enter a dis-
claimer, is penal and not remedial. It is intended for the proteetiuu
of the patentee as well as tlie piihlij, and should Dot receive a cj;.si.ae-

162 PATENT LAWS.

ACT OP 1837, CHAP. 46, § 1.

tion thnt would restrict its operation within narrower limits Dinn the
law fairly imports. O'Reilly \. Morse^ 16 How., 121. — Taney, Ch. J.;
Sup. Cl.. 18..3.

'1. Whuthcr a patent is illeg.il in part because of cl.iiming more than
he had described, or more than he lias invenieil, the patentee must in
either case disclaim, in order to save the portion to which he is enti-
tled. Ibid.. 122.

3. A pateniee has a right to disclaim any thing which has been
claimed through " inadvertence or mistake." I'arkcr y. SfMrs, MS. —
Grieii. J.; Pa., 1850.

•1. StmbU, That a disclaimer, under this section, should not only dis-
claim what is not claiuied as new, but should al.so distinctly .set forth
what part of the invention is still cluiined, as it is uiauil'estly designed
to act as a new specification. Lipirincvtt v. Kelly, 1 West. l<aw Jour.,
613.— iKVi.v, J.; I'a., 1844.

(b) 1. Under this section the di.sclaimer must state the interest of
the person disclaiming. But where an administrator in whoso name a
patent had been extended, entered a disclaimer, slating that he was
the patcutee, and rilerriug to the patt^-nt as showing his interest, it
was lield sulBcient. Brooks v. litcknell, 3 McLean, 439. — McLkas, J.;
Ohio, 18J4.

2. Where a discluiiner made by a j)atentce stated that ' it was to
ojHfrate to the e.xtent of the interest in said letters patent vested" in
the j.atentee, Htld, that it fairly imported on its fatv, that the |>atentee
was tiie owner of the entire interest in the patent, and if so, there
was a substantial tomplianco with the statute, as to tlio discluimcr
staling the interest of tlie party making it FooU r. Sileby, 1 Blatchf.,
401.— Nkuso.v, J.; aN'. Y., isl'J, Silsby v. /bote, 14 llow., 221.— CUK-
TI8, J.; Sup. C't., 1H52.

(e) 1. If a patent lias been previou.sly assigned in part, and a dis-
cluiniur haa )>een filed by the patentee alone, such disclaimer will not
0|>oralo in favor of the assignee, in any suit either at law or equity,
unless ho has joined in it. WyeUi v. Stonr, 1 Story, 2U4. — Stouv, J.;
Mass., 1H40.

2. A diiicbim t of jmrt of an invention cannot afiect a prior granfo
undur the patent, uiilosa ho accopta of it ; he may refuse to \>o iiflTected
by U. Sintth V. Hcrccr, 6 West. Law Jour., 63. — Kank, J. ; I'u.,
1 84''>.

3. I'ndor section 7 of the act fif 1837, the owner of a seclional in-
iorent in a patent may make a disclaimer of |>arl of the thing ])utented,
which wdl Ik' ciusid-rod us a part of the original patent, to ihu extent
of bin interest; but the patentee is not coiniK?lled lo join in such dis-
cl.'iinirr, nor will it a(r<'i:l any one ezcipt him making it, and those
claiming under him. rotUr v. JluUaud, MS. — NeL8UN, iNUKRauLL^ J J. ;
Ct, IMatf.

4. Afl^r stj'^h a dlHclnlmer, a different claim of right is secured to
the discUimaat from what is purported to be secured to the patentee.

PATENT LAWS. 168

ACT OP 1837, CHAP. 45, §§ 7, 8. IN FORCE.

Different cliiims of right in the same invention arc thus secured to dif-
ferent sectional owners. Ibid.

5. A disclaimer, licforc it can be received in evidence, must be prop-
erly prowd, cither as an original paper, or by a ccrtitied copy, and if
received at nil, must have full efil-ct given to it as a disclaimer. FooU
V. Silshy, 1 Blatcht . 450, 4«l.— Nei.son, J.; N. Y., 1849.

f). The disclaimer of part of an invention, provided such disclaimer
arose from inadvertency, accident, or mistake, will not prevent tiie pat-
entee from embracing the part so disclaimed, oma reissue of liis patent
Hayden, Ex parte, U^. (App. ("as. >— Merrick, J.; D. C, ISf.o.

(d) 1. The disclaimer mentioned in this section applies solely to suits
pending when the disclaimer is tiled ; and the disclaimer mentioned in
section 9, applies solely to suits brought after the disclaimer is filed.
Wyeth V. .S'ton*, 1 Story. 294.— Story, J.; Mass., 18K).

2. A disclaimer to be cflectual under this and section 9, must be filed
before suit brought. If it is filed during the pendency of the suit, tlie
plaintiff will not be entitled to the benefit thereof in that suit Beed v.
Cuttir, 1 Story, «00.— Stcry, J.; Mass., 1841.

3. If filed before suit, the plaintiCf will be entitled to costs, if he es-
tablish tliat a part of his invention, not disclaimed, has been infringed
by the defendant Ibid., 600.

4. But whether filed before or after suit brought, the plaintiff will not
be entitled to tiie benefit thereof, if he has unreasonably neglected and
delayed to file it. Such neglect or delay is a good defence to the suit.
Ibid., COO.

See also Digest Pat. Cases, title Dbcuaimer ; and notes to section
9 of this act.

Skction 8. [Repealed in part by act of 1861, § 9.]
A/id be it further enacted., That, whenever application
shall be made to the Commissioner for any addition of a
newly discovered improvement to be made to an existing
patent, or whenever a patent sliall be returned for cor-
rection and reissue, the specification of claim annexed to
every such patent shall be subject to revision and re-
striction, in the same manner as are original applications
for patents ; the Commissi<.mer shall not a<ld any such
improvement to the patent in the one case, nor grant the
reissue in the other case, until the applicant shall have
entered a disclaimer, or altered his specification of claim
in accordance with the decision of the Conunissioner ;

164 PATENT LAWS.

IN FORCE. ACT OF 1837, CHAP. 45, §§ 8, 9.

and in all such ca.ses, the api)licant, if dissatisfied with
such decision, shall have the same remedy, and be en-
titled to the benefit of the same privileges and proceed-
ings as are provided by law in tlie case of original
applications for patents.

This section po fnr as it relates to patents for additions to existing
patents, is repealed by iho act of ISCI, section 9.

Section 9. [Enlarging act of 1836, § 15.] And be it
further e)Htcte<J^ (any thing in the fifteenth section of the
act to wliich this is additional to the contrary notwith-
standing,) That, whenever Ijy mistake, aeeident, or in-
advertence, and without any wilful dcfanlt or intent to
defraud or mislead the public, any jiatcntee shall have in
lii.s specification claimed to be the original and first in-
ventor or discoverer of any material or substantial part
of the thing patented, of wliich he was not the first and
original inventor, and shall have no legal or just right to
claim the same, in every such ease the patent shall be
deemed good and valid for so much of the invention or
discovery as shall be truly and bona fide his own ; PrO'
vidtd, It shall be a material and sulisrimti.al part of the
thing patented, arxl be definitely (listingui--hable from the
other parts so claimed without right as aforesaid, (a)
And i'very such patentee, his executors, a<lministrator9,
and assigns, whether of tiie whole or of a sectional in-
tercBt therein, shall be entitled to maintain a suit, at law
or in equity on sieh patent for any iidVingeinent lif such
part of the invention or discovery as shiU be A////a fii/e
his own as afoiesaid, notwithstanding the .-^pecificatiou
may embrace more than he shall have any legal right to
claim. (A) But, in every such c:u>e iu which a judg'ucnt

PATENT LAWS. 165

ACT OF 1837, CHAP. 45, § 9.

or verdict shall be rendered for the plaintiff, he shall not
be entitled to recover co^ts against the defendant, unle>s
he shall have entered at the Patent Oflice, prior to the
comMiencemcnt of the suit, a disclaimer of all tliat part
of the thing patented which was so claimed without
right (c). Provided^ hoiccver, That no person bringing
any such suit shall be entitled to the benefits of the pro-
visions contained in this section, who shall have unrea-
sonably neglected or delayed to enter at the Patent
Office a disclaimer as aforesaid, (d)

(a) 1. This section couteniplutes the rule of the common law, that if
a patent embraces ditl'erenl machines, and any one of tliem is not new,
or was not the invention of the patentee, or the like, the whole patent
would be void, as being then in lull force, and therefore souglit to miti-
gate it by providing that under the cases therein mentioned, the patent
sliould be good to the extent of tlie ]iatentee's invention. Wyeth v.
Stone. 1 Story, 28S, 'JSO.— SroRV, J.; Mass., 1840.

2 It points tlirougliout to a single invention, as the " thing pat-
ented," and docs not justify the position that one patent can lawt'ully
include divers distinct and independent inventions, having no connec-
tion with encli other, nor any common purpose. It may therefore bo
deemed a legislative recognition and adoption of the general rule of law
in cases not within its exceptive provision. Ib.d., 'J90.

3. Tliis section is intended to cover "inadvertences and mistakes"
of law. as well as inadvertences and mistakes of fact. Ibid., 295.

4. Prior to the act of l83tJ, if the patentee claimed more than lie had
invented, his patent was void. But under this section, his patent is
not absolute!}' void, because the patentee claims more than he has
actually invented, but is valid for as much as is truly and bona fide his
own; but to secure the benelits of this section, the specification must
state in what the improvement consists. Peterson v. VrcWcvi, 3 McLean,
249.— McLean, J.; Ohio, 1843.

(/i) 1. Prior to the act of 1S3{>, a patent was void if the claim extend-
ed beyond the invention. Lender section G of the act of 183G, it wa.s
void if a substantial part had been patented or described in a printed
publication. Section 15 of the same act saved the patent from being
void, if the patentee beheved himself to be the first inventor. Sccti>iu
9 of the act of 1837, enlarged the right of the patentee, providing, not-
witlistanding section 15 of the act of 1S36, that the patent should not
be void, where the patentee had acted in go<.Kl faith, if through mistake
or inadvertence he had claimed more than ho had invented, and that he
might maintain suit on the part actually invented by liim, provided be

IGfl PATENT LAWS.

IX FORCE. ACT Of 1837, CHAP. 45, § 9.

filed within a reasonable time, a disclaimer of the parts not invented

by him. StnWt v. Ely. 5 McLean, 84, 85.— McLean, J., Ohio. 1849.

2. The titKtrino lluit a iiarty may take out a valid patent for a com-
Viination, and inohide in it a right to eacli distinct improvement, is cou-
firmid by the obvious intent of this section, wliich pives a patentee a
right of action lor a piratical use of any one of hi.s invented improve-
ments, which is distinctly stated in his patent, though ho may by mis-
take, accident, or inadvertence, have claimed others of which ho was
not the inventor. J'itUi v. Whitman, 2 Story, G21. — Stoby, J.; MaAS.,
1843.

(c) 1. The disclaimer mentioned in this section applies solely to suits
brouglit after the disclaimer is tiled. Wyeth v. iitonc, I Story, 294. —
i^ronx. J.; Mass., li«40.

2. Where a patent contains several claims, and the invention em-
braced in one seems to be not new, or useless, the patentee, unJer Ibis
and section " may still maintain an action for an infringoment, although
ho did not, before action brought, make a disclaimer of the part claimed
without riglit; but he will not be entitled to costs. JIaU v. Wiiea, 2
Blalchf., I'jS.— NEI.SO.N', J.; N. Y., 1S51.

3. If in the progress of n trial, it turns out that a disclaimer ought
to have been made, the plaintiff may still recover, but will not be en-
titled to CoBt."!. J bid., 198.

4. A disclaimer is necessary only where the thing claimed without
right is a material and substantial part of the thing invented. If the
pan not new is not essential to the machine, and was not introduced
into the fiatcnl through wilful defaidt. or intent to defraud or mislead
the public, ^the want of a disclaimer affords no groiuid for invalidating
Xli>.- patent.* J bid., 199.

6. Under this section, in an action for infringement, the plaintiff
cannot ncovor costs if he has claimed any thing of which he was not
th<- first and original inventor, unless before suit brought he has dis-
claimed such purl: and it makes no difference whether the infringe-
ment alleged was of or again.'^t the part so cinimofi, but not now, or of
•omu other part claimed in the patent. Hrymour v. McCorinick, 19
How.. IOC— Nki.s<)S, J.; .Suj). Ct., 18:>«;.

G. The omission to diselaim a part not now, prevents a plaintiff from
recovering ooitN and it makes no difforcnco that such part is not
alleged to \yv infringed. J hid., 106

'. TliMugli the neglect to (He a disclaimer until ndor suit brought,
will prevent the plaintiff recovering cost-*, it df>es not interfere with the
l>ower of the court t<> iu<-roai»e the verdict under section 14 of the act
of isaa. Guyon v. Srrrell, 1 Ulatchf, 245, 216.— XklsoK, J. ; N. Y.,
1847.

id) 1. Thn plaintiff will not be entitled to the benoflt of ■ disclaimer
if he lias unrcftHonably neglected and delaye<l to (lie it. Such neglect
or delay it a g'KMl <lefenco to a suit. Hoed v. Cutter, 1 Story, 600. —
Btort, J.; Uasa., 1811.

PATENT LAWS. 167

ACT Of 1837, CHAP. 43, §§ 9-11. m POECE.

2. An unreasonable delay to enter a disclaimer cuts off the patentee,
not only from a right to costs, but also from a right of action. Brooks
V. Bickncll, .? McLean. 4 19.— McLean, J. ; Ohio, 1844.

3. What is an unreasonable delay is a mi.xerl question of law and
fact. Loss vigilance will be required from an administrator than from
the original inventor. Ibid., 449, 450.

4. Where a patentee has unintentionally claimed something which
was not original, but has unreasonably neglected to file a disclaimer, he
cannot, under this section, recover in an action of infringement, even
if the defendant lias infringed the parts of his invention which are new.
Parker v. Stilcf!, 5 McLean, 5G. — Lkavitt, J.; Oliio, is 19.

5. Under this section, the question of unreasonable negligence or
delay in entering a disclaimer goes to the right of the action; and if
the delav .«hows great negligence, the jury may find the patent void.
IlaUv. Wiks, -1 Blatchf, 199.— Nklsok, J.; N. Y., 1851.

6. Where a claim has been held valid by the Patent Office, and has
been sanctioned by a court below, the patentee will not bo guilty of
unrcisonablc tUUiy in disclaiming it by waiting to obtain the decision of
the highest court upon it. O'ReiUy v. Morse. 15 How., 122.— Taxey,
Ch. J.; Sup. Ct., 1S53.

7. Under this section, where a patentee claims more than he haa
invented, or is entitled to, bis patent will still be valid for what he has
invented, provided he enters a disclaimer of what he has included in
his patent which he has not invented, without unreasonable neglect or
delay. SUsby v. Fhote. 20 How., 387.— Xelsox, J.; Sup. Ct., 1857.

See also Digest Pat. Cases, title Disclaimer ; and notes to section
7 of this act.

Section 10. [Repealed by act of 1861, § 0.] And be
it further enacted^ That the Commissioner is hereby au-
thorized and empowered to appoint aijents in not exceed-
ing twenty of the principal cities or towns in the United
States as may best accommodate the diftcrent sections of
the country, for the purpose of receivinir and forwarding
to the Patent Office all such models, specimens of ingre-
dients and raanufoctures, as shall be intended to be pat-
ented or deposited therein, the transportation of the
same to be ch.'irgeabli' to the Patent fund.

Section 11. And be it further enacted^ That, instead
of one examining clerk, as provided by the second section
of the act to which this is additional, there shall be ap-

168 PATENT LAWS.

IN POUCE. ACT or 1837, cnAP. 46, §§ 11-13.

pointed, in manner therein provided, two examining:
clerks, each to n-ceive an anmi:il s.ilary of tifteen humlred
dollars; and also, an additional copying clerk, at an
annual salary of eight hundred tloUars. And the Com-
missioner is also authorized to employ, from time to time,
as many temporary clerks as may be necessary to execute
the copying and draughting required by the first scclion
of this act, and to examine and compare the records with
the oriixinals, who shall receive not exceeding seven cents
for every page of one hundred words, and for drawings
and comparison of records with originals, such reasonable
compensation as shall be agreed upon or prescribed by
the Conunissioner.

The Commissioner of Patents has now tlio power to appoint exami-
ners, not to exceed four in each class. Act of 18G1, § 7.

Sectiox 12. [Repealed by act of 1801, § 0.] Ami be
it further enacted. That, wherever the application of any
foreigner for a patent shall be rejected and withdrawn
for want of novelty in the invention, pursuant to the
seventh section of the act to which this is ;iddiiional, the
certificate thereof of the C'itmniissioiier shall be a suffi-
cient warrant to lh<' treasurer tt) pay l)aek to such a[ipli-
cant two-thirds of the «luty he sh.all have paid into tlie
Treasury on account of such application.

The ri(flit of wiih<lr«wal, bh to any iwirtion of the patent fee, in ap-
pllcQlionH made nubMcijuont to Manli 2<1, 18G1, is now taken away.
Aclof IHOl, ^ 9.

Sbctio.n IM. Ami /" it fiirtli'i' tiiiK'ttiL, That in all
cas«'H in which an oath is re<juir«d by this act, or l)y the
act to which this is a-ldilional, if the person of whom it
is requireil shall be coriH<rientiously scrupulous of taking
an oath, affirmation may be substituted therefor.

PATENT LAWS. 169

ACT OP 1837, CHAP. 45, § 14.

1. The act referred to is that of 183B, section 6.

2. As to what persons may administer this oath, when the apphcant
is without the jurisdiction of the United ijtates, see act of 1&42, sec-
tion 4.

Section 14. And be it further enacted, That all moneys
paid into the Treasury of the United States for patents
and for fees for copies furnished by the Superintendent
of the Patent Office prior to tlie passage of the act to
which this is additional, shall be carried to the credit of
the Patent fund created by said act ; and the moneys
constitutinc: said fund shall be, and the same are hereby,
appropriated for the pa}inent of the salaries of the officers
and clerks provided for by said act, and all other ex-
penses of the Patent Office, inclu'ling all the expendi-
tures provided for by this act ; and also for such other
purposes as are or may be hereafler specially provided
for by law. And the Commissioner is hereby authorized
to draw upon said fund, from time to time, for such sums
as shall be necessary to carry into effect the provisions of
this act, governed, however, by the several limitations
herein contained. And it shall be his duty to lay before
Congress in the month of January, annually, a detailed
statement of the expenditures and payments by him
made from said fund ; And it shall also be his duty to
lay before Congress in the month of January, annually, a
list of all patents which shall have been granted during
the preceding year, designating, under proper heads, the
subjects of such patents, and furnishing an alphabetical
list of the patentees, with their places of residence ; and
he shall also furnish a list of all patents which shall have
become public property during the same period ; together
with such other iufoiniation of the state and couditioa
8

170 PATENT LAWS.

IX FORCE. ACT OF 1839, CHAP. 88, §§ 1, 2.

of the P:itent Office as may be useful to Congress or the
public.

Ajiprove<l March 3(1, 1837.

The annual report of tlie ("ommissioncr of Patents on meohanics is to
be prepared so that the plates and drawings shall be comprised in one
volume, not to exceed eiglit hundred pages. Act of 1859, g 4.

ACT OF 1839, CHAPTER 88.
(5 Statutes at Lakge, 353.)

[This Act itill in Forer.]

An Act in addition to "An act to promote the progress

of the useful arts."

SKfrnox 1. J]e it enacted by the Senate and House of
liejyrcacntativta of the United States oj' America in Con-
ffre-is fis.ir})iOlid, That there shall be appointed, in maimer
provided in the second section of the act to which this is
additional, two assistant e.vaminers, each to receive an
annual salary of twelve hundred and tifly dollars.

Tltc CoromiHflioner of Patents hat now authority to appoint exami-
nerH, not to en-efd four in each class. Act of 1801, tj 7.

Sbctiox 2. A/id be it furtfier enacted. That the Com-
missioner be authorized to t'mpK)y temporary clerks to
do any necrsnary Iranscriliing, whenever the current biisi-
ncHH <if the olliee requires it; f'ruvidid, hmrrrfr, That
inntcad of salary, a compensation shall bo allowed, at a
rate not greater than in charged fur copies now furnished
by the office.

Fee for ooj)ip« is ten cent* per hundred words. Act of 1836, § i.
Actor 1861, § 10.

PATENT LAWS. 171

ACT OP 1839, CHAP. 88, §§ 3-6,

Section 3. And be it further enacted^ That the Com-
missioner is hereby authorized to publish a classitied and
alphabetical list of all patents granted by the Patent
Office previous to said publication, and retain one hun-
dred copies for the Patent Office and nine hundred copies
to be dopositod in the library of Congress, for such dis-
tribution as may be hereafter directed; and that one
thousand dollars, if necessary, be appropriated, out of
the Patent fund, to defray the expense of the same.

Section 4. And be it further enacted, That the sura
of three thousand six hundred and fifty-nine dollars and
twenty-two cents be, and is hereby, appropriated from
the Patent fund, to pay for the use and occupation of
rooms in the City Hall by the Patent Office.

Section 5. yind be it further enacted. That the sum
of one thousand dollars be appropriated from the Patent
fund, to ho expended under the direction of the Commis-
sioner, for the purchase of necessary books fur the library
of the Patent Office.

Section 6, [Enlarging act of 183G, § 8.] And be it
further enacted. That no person shall be debarred from
receiving a patent for any invention or discovery, as pro-
vided in the act approved on the fourth day of July, one
thousand eight hundred and thirty-six (a), to which this
is additional, by reason of the same having been patented
m a foreign country more than six months prior to hia
application : Provided, That the same shall not have been
mtroduced into public and common use in the United
States, prior to the application for such patent: And pro-
vided, also, That in all cases every such patent shall be
limited to the term of fourteen years {b) from the date or
publication of such foreign letters patent, (c)

172 PATENT LAWS.

ACT OF 1830, CHAP. 88, §§ 6, 7.

{a) For pro\'isioii referred to, see act of 1830. ^ 8.

{b) Patents are now granted for tho term of seventeen years. Act
of 18(Jl, 55 16.

(c) 1. The date of a patent mav bo altered to correspond with that
of a foreign patent, previously taken out by the inventor, where tho
mistake has not arisen from any fraudulent or deceptive intention.
Iktmold\s Cas^, 4 0])in., 3;!5.— Ne'i^son, Atty.-Gen. ; 184-1.

2. Under thi.s .'^eclion, if the domestic i)att'nt, in a ca.se where a foreign
patent lias been previously obtained, i)urport.s to give an exclu.sive
right for fourteen years from its date, instead of from the date of tho
foreign jwtent, it is void, as having been issued without authority of
law ; but the error is not fatal, and may bo corrected on application
to tho Patent OtDcc. Smilh v. Ely, 6 McLean, 73, 80. — McLea.n, J.;
Ohio. 1S49.

3. The proviso of this section as to when a homo patent shall bear
the date of a foreign patent, relates only to such patents as are applitd
f(yr here after the issue of a foreign patent. Fraich v. l{i>gers, MS. —
Ka.ne, J.; Pa.. is.-)l.

4. Where, tlicrefore, an application for a patent wa.s made in this
country in April, 1838, and acted on in that month, but a patent was
not actually is.sued until June 'JOtli, l>s40, at whii-h time the patent
was dated, and a foreign patent was obtained in August, 1838 ; field,
■8 the application )iere was l)cfore the foreign patent, that tho grant of
the j>atont ht-ro was under tlie general ena<tmenl3 of the act of 1836,
And its term runs properly from its date. Ibid.

b. A |)atent is not voitl Ik-causo it does not, on its face, Iwar tho
some date with a foreign patent. If it is not, for any reason, exempt
from tho operation of the statute on such subject, the only effect is to
limit the raonojKjly to fourteen years from tho dato of the foreign pat-
ent. O'lieilty V. Morse, 16 How., 112.— Taxey, Ch. J.; Sup. Ct., 1853.

SEr-nox 7. [QtialifyinR act of 183C, g§ 7, 15.] And be
{(further fnarti'd^ That every person or corj>oration who
has, or shall have, purchased or constructed any newly
invented niarhine, niaimfacture, or comjxisilion of matter,
prior to the application by the inventor or diBcovercr for
a patent, Khali he hiM to possrss the ripht to use, and
vend to others to be u.sed, the specitic machine, manuOic-
ture, or composition of matter, so made or purchased,
without liability therefor to the inventor, or any other
jMjrson interested in stirh invention ; and no patent shall
De held to be invalid by reason of such purchase, sale, or

PATENT LAWS. 173

ACT OF 1839, CHAP. 88, g 7.

use prior to the application for a patent as aforesaid, ex-
cept on proof of abaiulonment of such invention to the
public ; or that such purchase, sale, or prior use has been
for more than two years prior to such application for a
patent.

1. This section, allowing the use and sale of an invention for two
years before the application for a patent, is in the nature of a statute
of limitations. Iloiey v. Henry, 3 West. Law Jour., 155. — Woodbury,
J,; Mass., 1845.

2. It virtually extends the patentee's privilego to sixteen years in-
stead of foiirieon. AtcCormick v. Seymour, 2 Blatchf, 254.— Nelson,
J.; N. Y., ISal.

3. The object of this section is twofold : first, to protect the person
who has used the thing patented from any liability to the patentee, or
his assignee ; and second, to protect the rights granted to the patentee
against anv infringement by anv other person. McClurg v. Kingsland,
1 How., 208, 209.— Baldwin, J. ; Sup. Ct.. 1 843.

4. This section relieved the patentee from the effect of the former
laws, and their construction by the court, while it puts the person who
has had such prior use on the same footing as if he had a special
license from the inventor, which, if given before the application for a
patent, would justify a continued use of it after it issued, without
liability. Ibid.. 209.

5. It is not limited to patents for machines, manufactures, and com-
positions of matter, but embraces inventions for modes of doing a
thing, or processes, as a new improvement in the art of casting iron.
Ibid., 209.

6. This section is not to bo construed as confined to a specific ma-
chine as distinguished from an invention or thing patented, but the
words " newly invented machine, manufacture, or composition of mat-
ter," and "such invention," mean the "invention patented," and the
words "specific machine" refer to "the thing as originally patented,"
whereof the right is secured by patent, but not to any newly invented
improvement on a thing once patented. Ibid., 210.

7. This section has exclusive reference, in respect to the use of a
machine, to an original patent, and not to a renewal or reissue of it.
Sdmpson V. West Cluster R. B., 4 How., 403.— McLean, J. ; Sup. Ct,
1845.

8. This section allows the use of an invention, even with leave of
the inventor, for two years before application for a patent, without in-
validating his right to a patent; a fortiori, the use by a third person,
or a subsequent inventor, after the invention and before the issuing of
a patent to the first inventor, without his consent, is no bar to the
issuing of a patent to the first inventor. HUdreaih v. Heath, MS. (App.
Cas.)— Gbanch, Ch, J.; D. C, 1S41.

174 PATKNT LAWS.

IN rOBCK. ACT or 1839, CBAP. 88, §§ 7, 8.

9. Both before and since the act of 1839, an inventor might exercise
a claim to an inciioate ri^^ht to an invention, wiiioh \v;i.s capabU- of be-
ing perfected to an exclusive right by obt lining letters patent, ami the
public may acqniesco in such claim. Sargeant v. SeO'jravt, 2 Curt.,
555. — (,'IRTIS, J.; R. I., 1855.

10. Before the act of 1830, he might, by way of experiment, brin„
the knowledge of his invention to the public, at the same time making
known that lie was about to apply for a patent; and since the act of
1839, he may sell any number of his machines to the public, during
any period less than two years, accompanied by a claim to the inchoate
right sufficient to show an intention not to abandon it to the public.
Ibid., 555.

1 1. Under this section the purchaser must bo a purchaser from the
inventor himself, before his application for a patent, and not from a
wrongdoer, without his knowledge or against his will. I'urrsim v. Ecujle
Screw Co., 3 Story, 40t>, 407. — Story, J.; R. I., Is44. Ilovey v. Ste-
vens, 1 Wood, k Min., 301. — Wooduchy, J.; M.nss., ISIG.

12. A surreptitious knowledge ami uso of an invention, before the
appliciition by the inventor for a patent, does not. under this section,
give any right to continue to use it after the inventor has obtained a
patent for it. Kendall v. Winsor, 21 How., 330. — D.wiel, J.; Sup. Ct.,
1853.

13. The sale of the product of an invention is not a sale of the thing
invented within this Bcction: the sale here spoken of is a sale of tho
invention or patented article. Booth v. GareUy, 1 Blatchf , 250. — N'Eii-
BO.S-, J.; N. Y., 1847.

14. This section gives no protection to those who may have seized
upon an invention or discovery disclosed in a patent, whoso spociflca-
lion may happen to l>e defective or insufficient. Goodyear v. Day, MS.
— Grikii, J.; N. J., 1852.

15. This section provided a remedy for cases where the conduct of
tho party, as to the salo of his inveniiim, did not show an actual aban-
donment. It also secures tho rights of those who may have j'unhased
or constructed any newly invented machine, j>rior to the application
for a patent. Sontlns v. L-jan, 3 Wall., Jr. — Grikr, J.; Pa., 18C1.

IG. Tho obvious construction of it is, tii.it a purchase, side, or prior
U80, nhall not invalidate, unless it amounts to an abandonment to tho
public. Itnd.

Kco also I)iOEflT Pat. Cases, title Prior Use.

Se<th).n 8. Ami be it further enacted, That so much of
the eleventh sect ion of the ahovc recited act as requires
the payment of three d<jHar8 to the Commissioner of
Patents for recording any assignment, grant, or convey-
ance of the whole or uny part of the interest or right

PATENT LAWS. 175

ACT OP 1839, CHAP. 88, §§ 8-10. IN FORCE.

under any patent, be, and tlie same is hereby, repealed ;

and all such assignments, grants, and conveyances shall,

in future, be recorded without any charge whatever.

Fees for recording assignments are again required, according to cer-
tain rates, by the act of 1843, section 2, and the act of 18G1, sec-
tion 10.

Section 9. [Obsolete ; temporary enactment.] A?id be
it further enacted, That a sum of money not exceeding
one thousand dollars, be, and the same is hereby, appro-
priated, out of the Patent fund, to be expended by the
Commissioner of Patents in the collection of agricultural
statistics, and for other agricultural purposes ; for which
the said Commissioner shall account in his next annual
report.

By an act passed May 15, 1862, a " Department of Agriculture " was
established, to which supervision of every thing relating to agriculture
was given. No further provisions relating to agriculture will tliere-
foro be inserted.

Sectiov 10. [Extending act of 1836, § 16.] And be it
further enacted, That the provisions of the sixteenth
section of the before recited act shall extend to all cases
where patents are refused for any reason whatever, either
by the Commissioner of Patents or by the Chief Justice
of the District of Columbia, upon appeals from the deci-
sion of said Commissioner, as well as where the same
shall have been refused on account of, or by reason of,
interference with a previously existing patent ; and in all
cases where there is no opposing party, a copy of the bill
shall be served upon the Commissioner of Patents, when
the whole of the expenses of the proceeding shall be
paid by the applicant, whether the final decision shall be
in his favor or otherwise.

1. An assigaee of an invention, by virtue of an assignment made

17« PATENT LAWS.

IK FORCE. ACT OF 183D, CHAP. 88, g§ 10, 11.

bcroro patent issued, may file a bill in his own name under section 16
of the act of IS.it), and thi.'i section, against a patentee to whom a pat-
ent issued, upon an iaterferencc with complainant's assignor, for tho
purpose of having the patent so issued set aside, and one granted to
the complainant. Gaij v. Cornell, 1 Blatchf., 507. — Nei.sos. J.; N. Y.,
1849.

2. And it will be sufficient if such assignment is recorded before
patent is issued. Ibid., 509.

Section 11. [Amending act of 1836, § V.] And be it
further enacted^ That in all cases where an appeal is now
allowed by law from the decision of the Commissioner
of Patents to a hoard of examiners, providi-d for in the
seventh section of the act to which thi.s is additional, tho
party, instead thereof, shall have a right to appeal to the
Chief Justice of the District Court of the United States
for the Districf of Cohmihia ("), by giving notice thereof
to the Commissioner, and fding in the Patent Ofticc,
within such time as the Commissioner shall appoint (A),
hia reasons of apj)eal, specifically set forth in writing (c),
and also paying into ilie Patent Office, to the credit of
the Patent fund, the sum of twenty-five dollars. And it
shall be the duty of said Chief Justice, on petition, to
hear and determine all such appeals, and to revise such
decisions in a summary way, on the evidence produced
before the Commissioner ('/), at such early and conve-
nient time as he may appoint, first notifying the Com-
misBioner of the time atnl pl:ux> of hearing, whose dtUy it
nhall be to give notice thereof to all parties who aj>i>car
to be intiTcHtcd therein, in such manner as sai<l jinlge
shall prcscrilte. The Commissioner shall also lay before
the §aid judge all the original papers and evidence in tho
case, together with the grounds of his decision, fully set
forth in writing, touching all the points involved by tho
reasons of appeal, to which the revision shall be con-

PATENT LAWS. 177

ACT OF 1839, CHAP. 88, § 11. IN FOBOE.

fined, (e) And at the request of any party interested, or
at the desire of the judijo, the Commissioner and the
examiners in the Patent Office may be examined under
oath, in explanation of the principles of the machine or
other thing for -which a patent, in such case, is prayed
for. (/') And it sliall be the duty of said ju<lge, after a
hearing of any such case, to return all the papers to the
Commissioner, with a certificate of his proceedings and
decision, which shall be entered of record in the Patent
Oflice ; and such decision, so certiKed, shall govern the
further proceedings of the Commissioner in such case (ff) ;
Provided, hotcever, That no opinion or decision of the
judge in any such case, shall preclude any person in-
terested in favor or against the validity of any patent
which has been, or may hereafter, be granted, from the
right to contest the same in any judicial court, in any
action in which its validity may come in question,

(a) 1. Appeals were afterwards allowed to be made to either of the
assistant judges of the Circuit Court of the District of Columbia. Act
of August 18th, 183 J, § 1.

2. By the act of March :!d, 1863, section 3. establishing the Supreme
Court of the District of Columbia, the justices of such court were
clothed with the same powers theretofore exercised by ilie judges of
the Circuit Court.

(/-) 1. The filing of the reasons of appeal is essentially the appeal
itself. Greenoiujh v. Clark. MS. (App. Cas.)— Morselu J.; D. C, 1853.

2. Where the reasons of appeal are not filed within the time pre-
FCribea bv the Commissioner of Patents, t!ie right of appeal is lost.
Jbid. Also, Wade v. Matthews, MS. (App. Cas.)— Cbaxch, Ch. J. ; D.
C, 1850.

:i. But the Commissioner may enlarge the time to file such reasons.
Justice V. Jones, MS. (App. Ca.s.) — Meuiuck. .1.; D. C, 1859.

4. An appeal cannot be made after the time limited in the notice of
appeal. Li.ton, Ex parte, MS. (App. Cas.)— Merkick, J.; D. C, 1860.

See also Digest Pat. Cases, title Appeals, B. 1.

(c) 1. The reasons of appeal must not be vague and unsatisfactory,
a's " that the decision of the Commissiouer was in opposition to a clear
apprehension of the merits of the case." Wiml w. Ex parte, MS. (App.
8*

178 PATENT LAWS.

IN FOBOa. act of 1839, CHAP. 88, § 11.

Oas.)— Craxcii, Ch. J.; P. C, ISJO. Douglass v. Blakinton, MS. (App.
Cas ) — Mkurick, J. ; D. C, ISfij).

•J. Xo reason of appeal can lie considered as valid, which would not
ju.«tifv the Commissioner in refusing a patent. Wade v. MaWiewa, MS.
(App.'Ca.s.)— (JRAXCH, Ch. J.; D. C.', 1S,-)(I.

:'.. No assignment is sutliciently explicit which does not, with reason-
alile certainty, point out tlie precise matter of alleged error. Douglass
V. BlaJdnton, MS. (App. Cas.) — Mkkrick, J.; D. C, 1859.

4. Tlie reasons of appeal should be so expressed that llie judge may
gather from their language what is meant by them, but tliey need not
be according to any tcclinical formula. Laidky v. James, M6. (App.
Cas.)— Merrick, J.; D. C, 18C0.

See also Digest Pat. Case.s, title Appeals, B. 4.

(<f ) 1. The ([uestions are to be decided by the judge according to the
evidence produced before tlie Conunissiom-r. \\'anu;r v. Goodyear, MS.
(App. Cas.)— Crancu. Ch. .1.; D. C, 1S4G. Perry v. CorrieU, M.S. (App.
Cas.)- CUANcii. ( h. J.; D. C, 1847.

2. The jirovisiou requiring tlie judge to hear and detiTmmo appe.ils
"on the eviilen.e iroduced bcfnre the Commissiuiu r," is to be con-
strued witli relirti.ce tu stciion 7 of the act of l^;;ii, providing that
rea.-onable notice sli;;ll be nivcn both to tlie party appc aliug, and the
Commissioner, " so that they may have an opportunity of furnishing
such facts and evidence as they may deem necessary to a just deci>
sion." /W/z, Kx park, M8. (.\pp. Cas) — Mor.sei.l, J.; 1), C, 18J3.

3. There is nothing in the act of 1839. wiiicli takes away or impairs
that riglit, but there is every rea.son to infer that it was iutcudod to bo
saved to the fullest extent. Ibid.

4. Where, tiKrefore, a party has been prevented before the Commis-
sioner from producing his proofs to support his claim, it is the duty of
the judge, by reasonable regulations, similar to those directed by sec-
tion 12 of the act of 1839, to pursue sucli a course, as will afford the
party an opportunity to iirodiic© such pro<jrs, and he may make an
order, authorizing the p.trly to take and (He his proofs as to the origi-
nnlity and utility of his invention. Ibid.

{e) 1. All the L-onditions proscribed by ihis section must be complied
with as ijrere'iuivites before the judge can take jurisdiction. His juris-
diction is sjH.'cial and limited, and no other power can bo exercised ex-
cept that ex presslv given. Llreenotujh v. Clark, MS. (-^pp. C.is.) — MoR-
BKLi., .1. ; \). C, 185::.

2. The powers and jurisdiction of the judges on appeal, are special
and limited, and must bo oxerci.sed and construed strictly. J'omeroy v.
Counun. MS. (.\f,p. Cas.)— CUANill, Ch. .J.; D. C, 1842.

3. The j»ower of the justiciB on appeal from the? decision of the Com-
miasiouer of Talents is contlned to the points involved in the reasons
offtpi)eal. Kejii])i:r, Kc parte. MS. (App. Cas.) — (Jrancii, Ch. J.; D. C,
1841. Arnnl'lv. Jlisbr^, .MS. (App. Cas.)- CUA.vcii, Ch. J. ; D. C, 1841.
SmiUi V. Fiickinger, M.-J. (App. Cas.)— <)aAN'cii, Ch. J.; D. C, 1843.

PATENT LAWS. 179

ACT OF 1839, CUAP. 88, §§ 11, 12.

Cochrane V. Waterman, MS. (A pp. Cas.) — Crancii, Ch. J.; D. C, 1844.
Warner V. Goodyear, MS. (App. Cas.)— -Craxch, Gh. J.; D. C, 184";.
Winslt/w, Fx parte, MS. (App. Cas.)-— Cranch, Ch. J.; D. C, ISoO.
Aiken, Ex parte, MS. (App. Cas.) — Cbaxcii, Ch. J.; D. C, 1850. Bur-
lew V. ffNeil, MS. (.Vpp. Cas.)— Morsell, J. ; D. C, 1853.

See also Digest Pat. Cases, title Appeals, B. 2, 3.

(/) 1. 'J'he provision of this section as to the examination of the Com-;
mi.ssioner, &c., miust be considered in connection with section 7 of the
act of 1S;!6, as to the powers of tlie old Board of Examiners. The
statute means that tlie e.xjjlanation may be so full and clear an expla-
nation of the principles of the thing, as to enable the judge to weigh
and apply the evidence offered, and is not to be hmited to a mere expo-
sition of the terms used; and such explanations the judge is bound to
respect as a part of the case. Richardnon v. Hicks, MS. (App. Cas.) —
MOUSELL, J.; D. C, 1854.

2. The judge succeeds to all the authority conferred upon the Board
of Examiners by section 7 of the act of 183G, to require of the Com-
missioner and examiners information relative to the subject-matter un-
der consideration, and to the full extent. Sttley, Ex parte, MS. (App.
Cas.)— Morsell, J.; D. C, 1853.

3. The officer of the Patent Office attending before the judge is not
to be considered as counsel for the Patent Office, or for either of the
parties, but only attends to explain the decision of the Commissioner.
J'lrry v. Cornell, MS. (App. Cas.) — Ckancii, Ch. J.; D. C, 1847.

(y) I. The provision that "the decision of the judge shall govern the
further proceedings of the Commissioner in the case,"' applies only to
so much of the case as is involved in the reasons of appeal ; and the
appeal itself can only be considered as an appeal to so much of the
decision of the Commissioner as is affected by such reasons. Arnold
V. Bishop, MS. (App. Cas.) — Craxch, <'h. J.; D. C, 1S41.

2. If, therefore, after the judge shall have decided in lavor of an ap-
phcant, upon the points involved in the reasons of appeal, other grounds
remain for rejecting the claim, it would seem the Commissioner might
still reject it ; whether such new rejection would be the subject of ap-
peal ; query. Ibid.

3. As to who may appeal, see notes to section 8, act of 183G.
See also Digest Pat. Cases, title Appeals, B. 3 and 5.

Section 12. [Repealing act of 1836, § 7: Enlarged by
act of 1861, § 1.] Atid be it further enacted., Th:it the
Commissioner of Patents shall have power to make all
sach regulations in respect to the taking of evidence
to be used in contested cases before him, as may be
just and reasonable. And so much of the act to which

180 PATENT LAWS.

IN FOECB. ACT OF 1839, CUAP. 88, §§ 12, 13.

this is additionril, as provides for a board of examiners, is
hereby repealed.

1. The power granted to tlie Commissioner under this section to
make rules as to the taking of evident-c, gives no right to make now
rules of evidence, or to make new rules of law so as to divest vested
rights. Dyson, Exports, MS. (App. Cus.)— Dunlop, J. ; D. C, ISGC

•J. The rules as to i-vidt/nce, made under this section by the Commis-
Bioner of Patents, in conformity wilh the law, while tliey remain unabro-
gated, are as binding as the law itself, and as well upon the Commis-
sioner as on others. Arnold v. Bishop, MS. (.Vpp. Cas.) — Craxch, Ch.
J.; D. C, 1841. O'llara v. Uawes, MS. (App. Cas.)— MoRiiELL, J.;
li. C, 1859.

3. After a deposition has been taken while the rules were in force, a
revocation of thcni cannot nllcct such deposition. A revocation can
uOVct only subseciiient proceedings. Arnold v. liuiltop, MS. {.Vpp. Cas.)
— Ckaxcu, Ch. J.; I>. C, Ks-ll.

4. The rules of the I'atent Office as to taking evidence, prescribed
under tiiis section, must be jmt and reasonable, according to the estalv
lishcd principles and precedents in like cases, yidtols v. Harris, MS.
(.Vjjp. Cas.) — MuitHKLi., J. ; D. C, 1854.

6. The power of tlie Commissioner to make rules as to evidence is
now extended to all cases pending before the Patent 0ffit"O. Act of
1601, g 1.

Soo also Digest Pat. Casrs, title Evidk.sce, C. 3,

Section 13. [Obsolete: Kepeale<l by act of 1852, g 3.]
Ami bi it fin-f/i<r t /If rrfaf, Thai there be paid annually,
out of the I*atent fund, to the said Chief Justice, in con-
sideration of the duties herein im|.<>se<l, the sum of one
hiniilred dollars.

Ai*}. roved March 3.1, 1h:i9.

Thin Hfvlion was ro|K«aipd by soclion 3 of tlic net of 18.'t2; and it was
bImo provided that, m c.iso of an app«>al to the chief justice, or to either
of tho ashidUint juKticcs, tliero should bo paid to the juilgo to whom
appeal xhould \a! luadu, tho $25 ro^piirod to be paid by this section.
Act of ld52, g 2.

PATENT LAWS.

181

ACT OF 1842, CHAP. 263, §§ 1, 2.

IN FORCE.

ACT OF 1842, CHAPTER 263.
5 Statutes at Labge, 543,

[This Act still in Force.]

An Act in addition to an act to promote the progress of

the useful arts, and to repeal nil acts and parts of acts

heretofore made for that purpose, (u)

(a) Tliis act purports, from its title, to repeal all acts and parts of
acts heretofore made to promote the progress of the useful arts ; but
though it extends some of the existing laws to new cases, it in fact re-
peals no act or part of any act whatsoever. Siitnpson v. FoTid, 2 Curt.,
50G.— CcuTis, J. ; Mass., 1855.

Section 1. Be it enacted hy the Se?iate and House of
liepresentatives of the United States of America in Con-
gress assembled, That the Treasurer of the United States
be, and he hereby is, authorized to pay ])ack, out of the
Patent fund, any sum or sums of money, to any peison
who shall have paid the same into the Treasury, or to
any receiver or depositary to the credit of the Treasurer,
as for fees accruing at the Patent Office through niistake,
and which are not provided to be paid by existing laws,
certificate thereof being made to said Treasurer by the
Commissioner of Patents.

Section 2. [Plxtcnding act of 1837, § 3.] And be it
fi/rt/ier enacted, That the third section of the act of
March, eighteen hundred and thirty-seven, which autho.
rizes the renewing of patents lost i)iior to the fifteenth of
December, eighteen hundred and thirty-six, is extended to
patents granted prior to said fifteenth day of December,
though they may have been los; subsequently : Provided,

183 PATENT LAWS.

ACT OF 1842, CHAP. 263, § 3.

hotcever, The same shall not have been recorded anew
under the provisions of said act.

Sections. [Obsolete: Superseded by act of 1 80 1,§ 11.]
And be it farther enacttJ^ lliat any citizen or citizens,
or alien or aliens, having resided one year in the United
States and taken the oath of his or their intention to be-
come a citizen or citizens, who by his, her, or their own
industry, genius, efforts, and expense, may have invented
or produced any new and original design for a manufac-
ture, whether of metal or other material or materials, or
any new and original design for the printing of woollen,
silk, cotton, or other fabrics, or any new and original
design for a bust, statue, or has relief or composition in
alto or ba<so relievo, or any new and original impression
or ornament, or to be placed on any article of manutac-
ture, the same being formed in marble or other material,
or any new and useful pattern, or print, or j)ictnre, to be
either worked into or worked on, or ])rinted or painted
or cast or otherwiHc fixed on, any article of manufacture,
or any new ami original sha]>e or configuration of any
article of manufacture not known or used by others be-
fore his, her, or their invention or production thereof,
and prior to the time of his, her, or their application
for a patent therefor, and who shall desire to obtain an
exclusive property or right therein to make, use, and sell
and vend the same, or copies of the same, to others, by
them to be made, used, and sold, may make application
in writing to the Connnissioner of Patents ex])ressing
Buch desire, and the Commissioner, on due proceedings
had, may grant a patent therefor, as in the case now of
application for a j>atent : Provided^ That the fee in such
cases which by the now existing laws would be required

PATENT LAWS. 183

ACT OP 1842, CHAP. 263, §§ 3-5. ix force.

of the particular applicant shall be one-half the sum, and
that the duration of said patent shall be seven years, and
that all the regulations and provisions which now apply-
to the obtaining or protection of patents not inconsistent
with the provisions of this act shall apply to applications
under this section.

Section 4. And be it further enacted. That the oath
required for applicants for patents may be taken, when
the applicant is not, for the time being, residing in the
United States, before any minister, plenipotentiary, charge
d'affaires, consul, or commercial agent holding commis-
sion under the Government of the United States, or be-
fore any notary public of the foreign country in which
such applicant may be.

Oaths required by act of 1 S.SG, section 6 ; afBrmation substituted
therefor in certain cases by act of 1837, section 13.

Section 5. And be it further enacted, That if any per-
son or persons shall paint or print or mould, cast, carve,
or engrave, or stamp, upon any thing made, used, or sold,
by him, for the sole making or selling which he hath not
or shall not have obtained letteis patent, the name or
any imitation of the name of any other person who hath
or shall have obtained letters patent for the sole making
and vending of such thing, without consent of such pat-
entee, or his assigns or legal representatives ; or if any
person, upon any such thing not having been purchased
from the patentee, or some person who purchased it from
or under such patentee, or not having the license or con-
sent of such patentee, or his assigns or legal representa-
tives, shall write, paint, print, mould, cast, carve, engrave,
stamp, or otherwise make or affix the word " patent," or
the words "letters patent," or the word "patentee," or

184 PATENT LAWS.

IN rOUCE. ACT OF 1842, CHAP. 263, §§ 6, 6.

any word or words of like kind, meaning, or import,
with the view or intent of imitatiii.t^ or counterfeiting the
Btamp, mark, or other device of the patentee, or sliall
affix the same, or any word, stamp, or device, of like im-
port, on any uni)atented article, for the purpose of de-
ceiving the public («), he, she, or they, so offending, shall
be liable for such offence to a penalty of not less than one
hundred dollars (i), with costs, to be recovered by action
in any of the Circuit Courts of the United St:ULes, or in
any of the District Courts of the United States having
the powers and jurisdiction of a Circuit Court (c) ; one-
half of which i)enalty, as recovered, shall be paid to tlie
Patent fund, and the other half to any person or persons
who shall sue for the same.

(a) The i)Ciialty incnlioned in this section is incurred as to all arti-
cles made, and having,' the word "patent" affixed, with a guilty purpose
or intent. Stephnns v. Caldwell, MS. — Si'Uaoik, .1.; Mass., 18G0.

(b) 1. This section — thow>rli its pliraseology, "a penalty of not less than
one liundred dollars," is peculiar — authorizes llie inlliitioii of a penalty
of juHt one hundred dollars for the offonco therein described and uo
more. Stiwpson v. J'ond, 2 Curt., LOU. — Ccinis, J.; Mass., 185j.

2. The penalty may ho recovered in an action of debt. IbU., 506.

(c) The two years' limitation of suits for pi-nalties, contained in sec-
tion 32 of the Crimes act of 171)0 (1 Stat, at Large, 119), is rei>ealod
by implication by Hcction 4 ot the net of 1839 (5 Slat, at Larg*, 3J2),
which extends the time to five years. Ihid., 603.

SE<-noN «. [Superseded by act of IHIJI, § 13.] Afi'l h<: it
further niucttd. That all patentees and assignees of pat-
ents hereafter granted, arc hereby required to stamp,
engrave, (»r cause to be stamped or engraved, o i each
article veniled, or offered f )r .'^ale, the dite of the |tatent;
and if any person dp persons, patentees or assijinees, shall
neglect to do so, he, she, or they, shall be liable to the
same penalty, to be recovered and disposed of in the
manner specified in the foregcung fifth secliun of this act.

Approved August 20th, 1842.

PATENT LAWS. 185

ACT OF 1848, CHAP. 47, § 1. IS FORCE.

1. Under this section it was hold, that it was not the selling tho
articles unstamped that marlo the party liable to tho penalty, but the
omitting to put the stump on. Palmer v. Allen, MS. — Betts, J. ; N. Y.,
1854.

2. The assignees of an interest in a patent are no more liable for
articles purchased and sold by them, without the date of the patent
stamped on them, than any other persons, unless the articles were
manufactured with their connivance. Ihid.

3. Held, alao, that the penalty attaches for each separate article
sold. Ibid.

4. It is necessary that each article should be stamped with the day
of the month, as well as the year ; but if this is done it is suiricient,
even if tho word "patented" is abbreviated. Ilawkij v. Bagley, MS.
—Betts, J.; X. Y., 1835.

ACT OF 1848, CHAPTER 47.

9 Statutes at Large, 231.

[77m Act still in Force.]

An Act to provide additional examiners in the Patent

Office, and for other purposes.

Section 1. [Amending act of 1836, § 18.] £e it enacted
by the Senate and House of Mejyrcsentatives of the United
States of America in Congress assembled, That there
shall be appointed, in the manner provided in the second
section of the act entitled "An act to promote the prog-
ress of useful arts, and to repeal all acts and parts of
acts heretofore made for that purpose," approved .July-
fourth, eighteen hundred and thirty-six, two principal ex-
aminers, and two assistant examiners, in addition to the
number of examiners now employed in the Patent Office;
and that hereafter each of tlie principal examiners em-
ployed in the Patent Office shall receive an annual salary
of twenty-five hundred dollars, and each of t!ie assistant
examiners an annual salary of fifteen hundred dollars (a) :

186 PATENT LAWS.

IS FORCE. ACT OF 1848, CHAP. 47, § 1.

Provided, That the power to extend patents now ve8te«l
in the board composed of the Secretary of State, Com-
missioner of Patents, and Solicitor of the Treasury, liy
the eighteenth section of the act approved July fourth,
eighteen hundred and thirty-six, respecting the Patent
Office, shall hereafter be vested solely in the Commis-
sioner of Patents (/>) ; and when an application is made
to him for the extension of a patent according to said
eighteenth section, and sixty days' notice given thereof,
he shall reft-r the case to the principal examiner liaving
charge of the class of inventions to which said case be-
longs, who shall make a full report to said Commissioner
of the said case, and particularly whether the invention
or improvement secured in the patent was new and pat-
entable when patented; and thereupon the said Commis-
sioner shall grant or refuse the extension of said patent,
upon the same principles and rules that have governed
said board ; but no patent shall be extended for a longer
term tlian seven years, (r)

(a) 1. Tlic ('oinniiKiiionor of Patents is now aulhorizod to appoint,
from time to time, exaiuiuerH, not to exceed four in each clu.s3. Act
of 1801, S5 7.

2. .\k U) the jfradation and pay of examiners and clorke in the Pat-
ent OttHtic, 8eo act of 1853, cliaptcr 07, section 3. and licl of 1800. sec-
tion 5, and act of IHCI, section 7.

(6) I. This act is not a n-jwai of section 18 of the act of 183r,, pro-
vidiiif/f for Uio cxteiinion of patAMits, and tiio en:iclment of a new system
for that piirpofe, but simply a niH-al of ho mucli of it as related to tiie
action of the StHreUiry of State, and tJie ^>^)licitor of tiio Treasury,
Icaviiijf the Commissioner of Patents alone to go on in the execution
of llio duty. 'oU V. i'ti/iy. 2 Hlatciif.. 173.— Nki.sox, J.; N. Y., 1^:.2.

2. WJiere an apiilicaliou for an exlc-nsion of a patent under section
18 of the act of 1830 was |)endinK at the time of the passage of the
net of ls.18, which c«nferre<l upon the CornniisHioner of Patents solely,
tiie power previously voxle<l in the I'oiird cteate<l by the act of 1836,
Jirlil, that it was not necessary to renew liie application, but that the
CommissioDer had the power to go on with the proceedings as having

PATENT LAWS. 187

ACT OP IS-IS, cnAP. 47, §§ 1-4.

been already properly instiUued, and complete them by granting the
extension. Jbid.. 473.

3. For reference to other decisions bearing upon the extension of
patents, see section 18 of the act of 183G. and the notes thereto.

[C) The extension of all patents granted subsequently to March 2d,
1S61, except patents for designs, which may be extended for seven
years, is now prohibited. Act of 1861, § 16.

Sectiox 2. [Re-enacted by act of 1861, § 10.] And be
it further enacted, That hereafter the Commissioner of
Patents shall require a fee of one dollar for recording any
assignment, grant, or conveyance of the whole or any
p.art of the interest in letters patent, or power of attor-
ney, or license to make or use the thing patented, when
such instrument shall not exceed three hundred words ;
the sum of two dollars when it shall exceed three hun-
dred and shall not exceed one thousand words; and the
sum of three dollars when it shall exceed one thousand
words; which fees shall in all cases be paid in advance.

The original provision as to fees for recording assignments, was con-
tained in the act of 1836, section 11. That section was repealed by
act of 1839, section 8. Fees for recording were again restored by this
section, which is also re-enacted in act of 1861, section 10.

Section 3. And be it further enacted, That there shall
be appointed, in manner aforesaid, two clerks, to be em-
ployed in copying and recording, and in other services in
the Patent Office, who .shall each be paid a salary of one
thousand two hundred dollars per annum.

Sectiox 4. And be it further enacted. That the Com-
missioner of Patents is hereby authorized to send by
mail, free of postage, the annual reports of the Patent
Office, in the same manner in whicli he is empowered to
send letters and packages relating to the business of the
Patent Office.

Approved May 27th, 1848.

188 PATENT LAWS.

IN FORCE. ACT OP 1849, CHAP. 108, § 2.

ACT OF 1849, CHAPTER 108.
9 Statutes at Large, 395.

[This Act still in Force.]

Extract from the act entitled "An Act to establish the
Home Department, and to provide for the Treasury
Department as Assistant Secretary of the Treasury
and a Commissioner of the Customs."
Section 2. And be it further enacted, That the Secre-
tary of the Interior shall exercise and perform all the
acts of supervision and appeal in regard to the office of
Commissioner of Patents, now exercised by the Secretary
of State; and the said Secretary of the Interior shall
sign all requisitions for the advance or payment of money
out of the Treasury on estimates or accounts, subject to
the same adjustment or control now exercised on similar
estimates or accounts by the First or Fifth Auditor and
First Comptroller of the Treasury.
Approved March 3d, 1849.

ACT OF 1851, CHAPTER 32.
9 Statutes at Large, CI 7.

[This Act still in Force]

Extract from the act entitled "An Act making appropria-
tions for the civil and diplomatic expenses of govern-
ment," tfec.
Section 2. And be it further enacted, That there shall

PATENT LAWS. 189

ACT OP 1852, CHAP. 107, § 1. IN FORCE.

be appointed and paid, in the manner now provided by
law, two principal examiners and two assistant examiners
of patents, in addition to the examining force now em-
ployed in the Patent Office.
Approved March 3d, 1851.

The Commissioner of Patents is now authorized to appoint, from
time to time, examiners, not to exceed four in each class. Act of
1861, § 7.

ACT OF 1852, CHAPTER 107.
10 Statutes at Large, 75.

[This Act still in Force.]

An Act in addition to an act to promote the progress of

the useful arts.

Section 1. [Enlarging act of 1839, § 11.] lie it en-
acted by the Senate and House of Representatives of the
United States of America in Congress asse^nbled, That
appeals provided for in the eleventh section of the act
entitled "An act in addition to an act to promote the
progress of the useful arts," approved March the third,
eighteen hundred and thirty-nine, may also be made to
either of the assistant judges of the Circuit Court of the
District of Colimabia, and all the powers, duties, and
responsibilities imposed by the aforesaid act, and con-
ferred upon the chief judge, are hereby imposed and
conferred upon each of the said assistant judges.

1. By the act of March 3d, 1863, the Circuit Court of the District of
Columbia was abolislied, and a Supreme Court for the District estab-
lished ; and it was provided by section 3 of that act, that the justices of
the said Supreme Court should severally possess the powers aud exer-
cise the jurisdiction now possessed and exercised by the judges of tho

190 PATENT LAWS.

DI FOUCE. ACT OF 1862, CHAP. 108.

Circuit Court. Under this act, appeals aro now taken to the justioea of
the said Supreme Court.

2. As to appeals, who may make, and when, see notes to sections 7
and 8 of the act of 183G.

3. As to tlie power of the judpos on appeal, and the effect of their
action, see section 1 1 of the act of 1839, and the notes thereto.

Sectiox 2. And be it further enacteJ, That in case
appeal shall be made to the said chief judge, or to either
of the said assistant judges, the Commissioner of Patent.^
shall pay to siu-h chief judge or assistant ju<lge the sum
of twenty -five dollars, iiquired to be paid by the a)»pel-
lant into the P:itent Office by the eleventh section of said
act, on said ajipeal.

Section 3. [Repealing act of 1839, § 13.] And be it
further iiun-tid. That section thirteen of the aforesaid
act, aj»i)roved March the third, eighteen hundied and
thirty-nine, is hereby repealed.

Ajjproved August 30th, 1852.

ACT OF 1862, CHAPTER 108.

10 Statutes at Lakge, 05, 00.

[ThU Act itill in Forre.]

Eitractw from the act entitled "An Act making appro-
priatiotiH for the civil and diplomatic e.x|>en8e8 of the
(ioveniment," &,c.

F«»r compensation of tin- lihrarian of the Patent Office,
tw'flvf hundred dollars, to bi; paid out of the 1 'at cut
Fund. ('/)

For books for the library of the Patent Office, to be
paid out of the I'atcnl Fund, one thousand five htnulred
dollars.

PATENT LAWS. 191

ACT OF 1853, CHAP. 97, §g 1, 3. IN FORCE.

For fitting up the librnry of the Patent Office, to be
paid out of the Patent Fund, two thousand dollars.

For additional compensation to the disbursing clerk
and draughtsman in the Patent Office, the sum of three
hundred dcjllars each, to be paid out of the Patent Office
Fund; and that hereafter the disbursing clerk shall be
required to give bond, with approved security in the sura
of five thousand dollars, conditioned for the faithful dis-
charge of the duties of his office.

For the compensation of two additional permanent
clerks in the Patent Office, to be appointed by the Com-
missioner of Patents, at a salary of fourteen hundred
dollars each, the sum of twenty-eight hundred dollars, to
be paid out of the Patent Office Fund.

Approved August 31st, 1852.

(a) The s.alary of the hbrarian is now fixed at one thousand eight
hundred dollars. Act of 13G1, § i.

ACT OF 1853, CHAPTER 97.

10 Statutes at Large, 209, 210, 211.

[TTiis Act still in Force.]

Extracts from "An Act making appropriations for the

ci^-il and diplomatic expenses of the Government," <fec.

Section 1. For the purchase of books for the library

of the Patent Office, to be paid out of the Patent fund,

one thousand five hundred dollars.

Section 3. A/id be it further enacted, Tiiat from and
after the thirtieth of June, eighteen hundred and fifty-
three, the clerks in the Departments of the Treasury,

192 PATENT LAWS

ACT OP 1855, CHAP. 175, § 10.

War, Navy, the Interior, and the Post Office, shall be
arrans^ed into four classes, of which class number one
shall receive an annual salary of nine hundred dollars
each, class number two an annual salary of one thousand
two hundred dollars each, class number three an annual
salary of one thousand five hundred dollars each, and
class number four an animal salary of one thousand eight
hundred dollars each.

This section also i)rovides for eight clerks of the second
class, twelve (including; six assistant examiners) of the
third class, and one of the fourth class ; and also provides
for an increase of the salary of the chief clerk to two
thousand dollars.

Aj^provid March 3d, 1853.

1. Tlio Coinmi.sHioner of Patents is now nnthorizcd to appoint oi-
aminerw, not to fxceod four in each class. Act of 1801, § 7.

2. Ah to llio juiy of examinere, sco ulso net of 1800, section 5, and act
of 18G1, section 7. *

3. Tlio Halary of the cliief clerk ia now fixed at two thousand five
hiudred dollarti. Act of 1 8(11, ^ 4.

ACT OF 185'), CII A P T E U 175.
10 Statutes at Lakgk, 070, 074.

I Tfii» Art »tiU in Ft>rff.]

EitrartH from".\n Ai-t makin;^ a|Piir<iiiiiationH for the
civil and diplomatic t-xpcnsO't of the ( iovernment," <fec.
Sk'IIo.v 10. Antl l>i' It J'lirtlti r <inir(/(/, That there
shall he appointed and paid in tin; manner now provided
by law, four pi incipal examiners and four assistant exam-
iners «»f jjatcnts, in addition to the examining force now
authorized by l:iw, to be so employed in the I'atent

PATENT LAWS. 103

ACT OF 1866, CHAP. 129, § 9.

Office ; and should the necessities of the public service,
in the estimation of the Commissioner of Patents, require
any additional examining force to that herein provided,
previous to the next session of Congress, there may also
be appointed and paid in the manner now provided by
law, in addition to the foregoing, not exceeding two prin-
cipal and two assistant examiners, who shall not so con-
tinue to be employed subsequent to the expiration of said
next session of Congress, without further provision of
law.

The Commissioner of Patents is now authorized to appoint exami-
ners, not to exceed four in each class. Act of 1861, § 7.

Section 25. And be it further enacted, Th:»t the first
assistant examiners in the Patent Office shall be rated as
of the fourth class of clerks, and the second assistant
examiners, machinist, and librarian as of the third class.

Approved March 3d, 1855.

ACT OF 1856, CHAPTER 129
11 Statutes at Large, 91.

[This Act still in Force.]

Extracts from the "Act making appropriations for cer-
tain civil e.xpenses of the Government," tfcc.
Section 9. And be it further enacted, That there shall
be appointed and paid, in the manner now provided by
law, two principal examiners and two assistant examiners,
in addition to the examining force now authorized by law
to be so employed in the Patent Office.

For provision authorizing the appointment of examiners by the Com-
missioner of Patents, see act of 1861, section 7.
9

194 PATENT L\\\^.

ACT or 1859, CHAP. 80, § 4.

Section 10. [Obsolete — only temporary.] And be it
further enacted^ That the Commissioner of Patents is
hereby authori/.c«l to pay those employed in the United
States Piiteiit Oflioc from April first, fijxhtcen hundred
and tifty-four, until April first, eighteen hundred and fifty-
five, as examiners and assistant examiners of patents, at
the rates fixed by law for these respective grades : Pro-
vid< (l, That tlie same be pai<i out of the Patent Office
fund, and that the compensation thus paid shall not ex-
ceed that received by those duly enrolled as examiners
and assi>t.int examiners of patents for the same period.

Approved August 18th, 1856.

ACT OF 1 8 5 f» , CHAPTER 80.
11 Statutes at Lakoe, 422.

[Thh Act still in Force]

Extract from "An Act making approjiriations for the legis-
lative, executive, and judicial expenses of the Govern-
ment," <fcc.

Skotion 4. And be it further enacted^ 'i'hat the Secre-
tary of the Interior be, and ho is hereby, directed to
cause the annual report of the Commissii>nc'r of Patents
on mechanics hereafter to be matle to the Senate and
IIoU!<e of Kepresentalives to be prepared and submitted
in such mrinner as that the plates and dr.iwings necssary
to illustrate each snliject shall be inserted so as to com.
prise the entire report in one volume not to exceed eight
hundred pagi-x.

Approved March ad, IbOO.

PATENT LAWS. 195

ACT OF 1860, CHAP. 211, § 5.

ACT OF 1860, CHAPTER 211.

12 Statutes at Lakge, 110.

[Ohsolete: Temporary Enactment.']

Extract from " An Act making appropriations for sundry

civil expenses of the Government," &c.

Section 5. Axd be it further enacted^ That the Com-
missioner of Patents is hereby authorized to pay those
employed in the Patent Office from April first, eiirhteen
hundred and fifty-five, until April first, eighteen hundred
and sixty, as examiners and assistant examiners of pat-
ents, at the rates fixed by law for these respective grades:
Provided^ that the same be paid out of the Patent Office
fund, and that the compensation thus paid shall not ex-
ceed that received by those duly enrolled as examiners
and assistant examiners of patents for the same period.

Approved June 25th, 1860.

ACT OF 1861, CHAPTER 3Y.

12 Statutes at Large, 130.

[This Act still in Force.]

An Act to extend the right of appeal from the decisions
of Circuit Courts to the Supreme Court of the United
States.

Section 1. [Enlarging act of 1836, § 17.] Beitetjacted
hy the Senate and House of Rejyresentatives of the United

190 PATENT LAWS.

Df rOnCE. ACT OF 1861, CHAP. 8S, § 1.

Sfaf^'fi of America in Congress assembled, That from all
judfjmonts and decrees of any Circuit Court rendered in
any aetion, suit, controversy, or case, at law or in equity,
arising under any law of the United States granting or
confirming to authors the exclusive right to their respec-
tive writings, or to inventors tlie exclusive right to their
inventions or discoveries, a writ of error or appeal, as
the case may require, shall lie, at the instance of either
party, to the Supreme Court of the United States, in the
same manner, and under the same circumstances as is
now provided by law in other judgments and decrees of
t^uch Ciri-uit Courts, without regard to the sum or value
in controversy in the action.
Approved February 18th, 1861.

The provision as to writs of error or njipeals from judgments and
decrees rendered in actions arising under the patent laws, previous to
the passage of this act, is contained in the act of 1836, section 17.

ACT OF 18G1, CHAPTER 88.
12 Statutes at Largk, 246.

[This Act still in Force.]

An Act in addition to "An act to promote the progress
of the useful arts."

SEf-nox 1. [P^nlarging act of 1830, § 12. J Jie it en-
acted hy the ScJiale and Ilouae of Representatives of the
United States of Ameriea in Cone/ress asseml)lrd, That
the Commissioner of Patents may establish rules for
taking aflidavits anrl depositions required in cases pend-
ing in the Patent Office (a), and such affidavits and deposi-
tions may be taken before any justice of the peace, or

PATENT LAWS. 197

ACT OP 1861, CHAP. 83, § 1.

Other officer authorized, by law to take depositions to be
used in tlie courts of the United States, or in the State
courts of any State where such officer shall reside ; and
in any contested case (b) pending in the Patent Office it
shall be lawful for the clerk of any court of the United
States for any District or Territory, and he is hereby
required, upon the application of any party to such con-
tested case, or the agent or attorney of such party, to
issue subpoenas for any witnesses residing or being within
the said district or territory, commanding such witnesses
to appear and testify before any justice of the peace, or
other officer as aforesaid, residing within tlie said district
or territory, at any time and place in the subpoena to be
stated ; and if any witness, after being duly served with
such subpoena, shall refuse or neglect to appear, or, after
appearing, shall refuse to testify (not being privileged.
from giving testimony), such refusal or neglect being
proved to the satisfaction of any judge of the court whose
clerk shall have issued such subpoena, said judge may
thereupon proceed to enforce obedience to the process,
or to punish the disobedience in like manner as any court
of the United States may do in case of disobedience to
process of subpcf^na ad testificandum issued by such
court ; and witnesses in such cases shall be allowed the
same compensation as is allowed to witnesses attending
the courts of the United States ('•) : Provided, That no
witness shall be required to attend at any place more
than forty miles from the place where the subpoena shall
be served upon him to give a deposition under this law:
JProvided, also, That no witness shall be deemed guilty
of contempt for refusing to disclose any secret invention
made or owned by him : And 2)rovided, further. That

198 PATENT LAWS.

IN FOBCB. ACT OF 18G1, CUAP. 83, §§ 1, 2.

no witness shall be deemed guilty of contempt for dis-
obeying any subpoena directed to him by virtue of this
act, unless his foes for going to, returning from, and one
day's attendance at the place of examination, shall be
paid or tendered to him at the time of the service of the
Bubpa'na.

(a) Ijy the act of 1839, section 12, the Commissioner was empowered
to make regulations as to taking evidence in contested cases. This act
extends to all cases pending in llie Patent OiBce.

(b) Whether, under this act, the power to compel the attendance of
witnesses is not conlined to "contested cases" — as cases of iuterforence
— query.

(c) Witnesses are allowed one dollar and fifty cents per day, and five
cents per mile travelling from their places of residence to the place of
trial or hearing, and five cents per mile for returning. Act of 185.1,
ch;ip. 107, g '^.

Section 2. A/ul he it further enacted, That for the pur-
poses of securing greater uniformity of action in the grant
and refusal of letters patent, there shall l>e appointed by
the President, by and with the advice and consent of the
Senate, three examiners-in-chief, at an annual salary of
three ihousaml dollars each, to be composed of persons
of competent legal knowledge and scientific ability, whose
duty it shall he, on the written petition of the a|)plicant
for tliat purpose being filed, to revise and determine upon
the validity of decisions made by examiners when adverse
to the grant of letters patent ; and also to revise and de-
termine in like manner upon the validity of the decisions
of examiners in interference cases, and when recpiired by
the Commissioner in applications for the extension of pat-
ents, and to perform such other duties as may be assigned
to them by tlie Commissioner; that from their decisions
appeals may be taken to the Commissioner of Patents in
person, upon payment of the fee hereinafter prescribed ;
that the said eiaminers-in-cbief shall be governed in their

PATENT LAWS. 199

ACT OP 1861, CHAP. 88, §§ 3, 4. IN FORCE.

action by the rules to be prescribed by the Commissioner
of Patents. («)

Sectiox 3. And be it further enacted, That no appeal
shall be allowed to the examiners-in-chief from the deci-
sions of the primary examiners, except in interference
cases, until after the application shall have been twice re-
jected (a) ; and the second examination of the application
by the primary examiner shall not be had until the appli-
cant, in view of the references given on the first rejection,
shall have renewed the oath of invention (/>), as provided
for in the seventh section of the act entitled " An act to
promote the progress of the useful arts, and to repeal all
acts and parts of acts heretofore made for that purpose,"
approved July fourth, eighteen hundred and thirty-six.
Notes to §§ 2 axd 3.

(a) 1. Previous to this act, all judicial acts done in the Patent OfiBce
by the primary examiners or the board of appeals were, in intendment
of law, the judicial acts of the ('ommissioner, and had no legal validity
until sanctioned by him. They were the organs of the Commissioner
to inquire and enlijhten his judgment, and till the Commissioner gave
validity to their judicial acts, by his fiat, they had no legal evidence as
judgment. Snowden v. Pierce, MS. (App. Cas.) — Dunlop, J.; D. C.,
18G1.

2. Under the act of 1861, the primary examiners and examiners-in-
chief are recognized a^ judicial officers, acting independently of tlie Com-
missioner, who can only control them, when their judgment in due course
comes before tlie Commissioner, on appeal. Ibid.

3. Their acts are not tiie acts of the Commissioner, but their owu
acts. They are no longer mere organs of the Commissioner, but inde-
pendent officers. He can only reacli and overrule them, when their
judgments come regularly before him, on appeal. Ibid.

4. Ti:e Commissioner can give no judgment till the appeal reaches
h'm, and this cannot be done till the judgment of the primary exam-
iners has been submitted to the exaniiners-in-ciiief. Jbid.

(o) The renewal oath dispensed with in all cases by act of 1SG3, § 1.

Sectiok 4. And be it further enacted, That the salary
of the Commissioner of Patents, from and after the pas-
sage of this act, shall be four thousand five hundred dol-

200 PATENT LAWS.

Df FOBCK. ACT OF 18G1, CHAP. 88, §§ 4 •?.

lars per annum, and the salary of the chief clerk of the

Patent Office shall be two thousand five hundred dollars,

and the salary of the librarian of the Patent Office shall

be eighteen hundred dollars.

Previous to tliis act, the salary of the Commissiouor had been three
thou.saud dollars per aunum (act of ls;{6, section 1); that of tlie cliief
clerk, seventeen Inindred dollars per atiniira (act of 183(5, section 2);
and the compensation of the librarian, one thousand five hundred dol-
lars jjer annum (act of 1803 ; act of 1S55, section 25).

Section' 5. And be it further enacted, That the Com-
missioner of Patents is authorized to restore to the re-
spective aj)plicants, or when not removed by them, to
otherwise dispose of sucli of the models belonj^ing to
rejected applications as he shall not think necessary to be
jircserved. The 8an)e aiitliority is also t^ivon in relation
to all models ac'coni|)aiiyin<^ applications tor desiijns. He
is further autliuiizcd to dispense in future w ith models of
designs when the design can be sufficiently represented
by a drawing.

Skction 6. [Repealing act of 1837, § 10.] And be it
further enacted, That the tenth section of the act aj>-
proved the third of March, eighteiii hundred and thirty-
seven, authorizing the appointment of agents for the
transportation of models and 8i)ecimens to the Patent
Office, is hereby repealed.

SEcrno.v 7. And he it further enartrd, That the Com-
missioner is further'anthorized, from time to time, to
a{)point, in the manner already ]»rovide<l for by law, such
an adijitional num])i'r of principal examiners, first assist-
ant examiners, and second assistant examiners as may bo
required to transact the current business of the office
with dispateli, provided the whole nund)er of additional
examiners shall not exceed four of each class, and tliat

PATENT LAWS. 201

ACT OF 1861, CHAP. 88, §§ 8, 9. IN FORCE.

the total annual expenses of the Patent Office shall not
exceed the annual receipts.

Section 8. And be it further enacted. That the Com-
missioner may require all papers filed in the Patent Oftice,
if not correctly, legibly, and clearly written, to be printed
at the cost of the parties filing such papers ; and for gross
misconduct he may refuse to recognize any person as a
patent agent, either generally or in any 2>articular case ;
but the reasons of the Commissioner for such refusal shall
be duly recorded, and be subject to the approval of the
President of the United States.

Sectiox 9. [Amending act of 1836, §§ 7, 12; and re-
pealing in part § 13 of same act.] And be it fwrther
enacted. That no money paid as a fee on any application
for a patent after the passage of this act shall be with-
drawn or refunded (a), 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, {h) That the three months' notice
given to any caveator, in pursuance of the requirements
of the twelfth section of the act of July fourth, eighteen
hundred and thirty-six, 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
to the same added thereto, which time shall be indorsed
on the notice ; and that so much of the thirteenth section
of the act of Congress, approved July fourth, eighteen
hundred and thirty-six, as authorizes the annexing to let-
ters patent of the description and specification of addi-
tional improvements is hereby repealed, and in all cases
where additional improvements would now be admissible,
independent patents must be applied for.

202 PATENT LAWS.

IX FORCE. ACT OP 1861, CHAP. 83, § 10.

(a) Tlie riglit of withdrawal was given to American applicants by
the act of IS.Mi, section 7 ; and was extended to foreigners by the act
of 1837, section 12.

(b) The rijrht of having a caveat fee applied as part of the sum to be
paid upon a subsequent ap[ilication, wa.s given by the act of 1836, sec-
tion 12.

Section' 10. A/id be it furtlier enacted, That all laws
now in force fixing the rates of the Patent Office fees to
be paid, and discriminating between the inhabitants of
the United States and those of other countries, which
shall not discriminate against the inhabitants of the
United States, arc hereby repealed, and in their stead
the following rates are established :

On filing each caveat, ten dollars.

On filing each original application for a patent, except
for a design, fil'teeu dollars.

On issuing each original patent, twenty dollars.

On every appeal from the examiner-in-chief to the Com-
missioner, twenty dollars.

On every application for the reissue of a patent, thirty
dollars.

On every application for the extension of a patent, fifty
dollars; and fifty dollar.s in addition, on the granting of
every extensicjn.

On filing each disclaimer, ten dollars.

For certifie(l copies f)f patents and other papers, ten
cents per hundred words.

'' For recording every assignment, agreement, power of
f attorney, and f)ther j»apers of three hundred words or
under, one dollar.

For recording every as8igiif»icnt, and other papers, over
three hundred and under one thousand words, two dollars.

For recording every assignment or other writing, if
over one thousand words, three dollars.

PATENT LAWS. 208^^

ACT OF 1861, CHAP. 88, § 11.

For copies of drawings, the reasonable cost of making
the same.

Section 11. [Superseding act of 1842, § 3.] And be
it further enacted, That any citizen or citizens, or alien
or aliens, having resided one year in the United States,
and taken the oath of his or their intention to become a
citizen or citizens, who, by his, her, or their own industry,
genius, eftbrts, and expense, may have invented or pro-
duced any new and original design, or a manufacture,
whether of metal or other material or materials, and
original design for a bust, statue or bas-relief, or compo-
sition in alto or basso relievo, or any new and original
impression or ornament, or to be placed on any article of
manufacture, the same being formed in marble or other
material, or any new and useful pattern or print, or pic-
ture, to be either worked into or worked on, or printed,"
or painted, or cast, or otherwise fixed on any article of
manufacture, or any new and original shape or configura-
tion of any article of manufacture, not known or used by
others before his, her, or their invention or production
thereof, and prior to the time of his, her, or their applica-
tion for a patent therefor, and Avho shall desire to obtain
an exclusive property or right therein to make, use, and
sell, and vend the same, or copies of the same, to others,
by them to be made, used, and sold, may make applica-
tion, in writing, to the Commissioner of Patents, express-
ing such desire ; and the Commissioner, on due proceed-
ings had, may grant a patent therefor, as in the case now
of application for a patent, for the term of three and one-
half years, or for the term of seven years, or for the term
of fourteen years, as the said applicant may elect in his
application: Provided.Th'xt the fee to be paid in such

204 PATENT LAWS.

rx FORCE. ACT OP 1861, CHAP. 88, §§ 11, 12.

application shall be for the term of three years and six
momh.s, ten dollars, for seven years, fiftcciv. dollars, and
for fourteen years, thirty dollars: A/iJ, provided. That
the patentees of designs under this act shall be entitled to
the extension of their respective patents for the term of
seven years, from the day on which said patent shall ex-
pire, upon the same terms and restrictions as are now
provided for the extension of letters patent.

1. This act does not require ufUiti/ in order to seriire the benefits of
its provisions. WoosUrr \. Crane, MS. — Bkxkuict, J.; N. Y., 18G6.

2. But it floe? require that the shajic produced shall be the result of
iodustry, effort, peiiius, and i-ipcnffe. llnd.

3. SenibU. That the sliapo or i-ontlpiiration souf^ht to be secured
pho\ild be new and original, ns npplicd to articles of manutucture.
Ibid.

4. W. obtained a patent for 'the design and confijfurntion of a reel"
for containinfT ruffles, Ac and which consisted of two parallel disks of
pasteboard, cut in the form of a rhombus, with the corners rounded,
and connected by four wood cross pieces, on wliicli the rulllcs wore
wound. Held, the sliape being a well-known mallieinntical figure,
and a commfin one in many articles of manufacture, that its application
to a reel could not l>e said to bo the result of industry, genius, efforts,
and ex|>ense. Ibid.

6. Under the present practiee of the Patent omce, names, titles, hill-
heads, and other matters inlcndo<l for use as circulars or trade-marks,
if printed in the ordinary iiiuvalilu ty|>e. arc not held to l)e pateiitabla
■8 designs.

6. But when any such matter is the special wnrk of an arti.-^t for a
specillod i)urp<jse, as when engravecl, it may be |»atented as a design.
itencc, when n patent is desire<l for a c|c!*ign to Ik? used as a trade-
mark, it \b recommcndod that it siiould l)e engraved.

SKtTlON 12. [Amending' act of 1H.10, § 18.] A)t<l l» U
fitrtlicr cnuittd. That all applicationK for patents shall bo
completed an<l prepared for examination within two
ycara after the filinj^ of the petition, and in <lefault there-
of, they shall be rcgarcUd aa abamloned by the parties
thereto ; uidess it be shown to the satisfaction of the Com-
missioner of Patents that such del.ay was unavoidable ;

PATENT LAWS. 205

ACT OP 1861, CHAP. 88, §§ 12, i;{.

and all applications now pendint; shall he treated as if

filed after the passage of this act, and all ap])lications for

the extension of patents, shall be filed at least ninety

days before the expiration thereof; and notice of the

day set for the hearing of the case shall be published, as

now required by law, for at least sixty days.

The previous provisions as to the extension of patents are contained
in section 18 of the act of 1830, and section 1 of the act of 184S,
amending the former act of 1836.

Section 13. [Repealing act of 1842, § C] And be it
further enacted^ That in all cases where an article is
made or vended by any person under the })rotection of
letters patent, it shall be the duty of such person to give
sufficient notice to the public that said article is so patent-
ed, L'ither by fixing thereon the word patented, together
with tlie day and year the patent was granted ; or when,
from the character of the article patented, that may be
im|)racticable, by enveloping one or more of the said
articles, and affixing a label to the package or otherwise
attaching thereto a label on which the notice, with the
date, is printed ; on failure of which, in any suit for
the infiingenient of letters patent by the party failing so
to mark tlic article the right to wliich is infringed upon,
no damage shall be recovered by the plaintiff*, except on
proof that the defendant was duly notified of the infringe-
ment, and continued after such notice to make or vend
the article patented. And the sixth -section of the act
entitled "An act in addit'on to an act to promote the
progress of the ustful arts," and so forth, approved the
iwenty-nintli day of August, eighteen hundred and forty-
two, be, and the same is hereby, repealed.

The act of 1842 imposed « penalty of one liimdrcd dollars on eac?

206 PATENT LAWS.

ACT or 1861, cnAP. 88, §8 14-16.

article vended or ofTered for sale, not having the date of the patent
stamped or marked upon it ; but the neglect to do so did not a(Tect the
right of tlie patentee in any action of infringement brought by him un-
der his patent.

Section 14, [Obsolete: Kepcalcd by act of 18G2.]
Atid be it further enacted, That the Commissioner of
Patents be, and lie is hereby, authorized to print, or in
his discretion to cause to be printed, ten copies of the
description and claims of all patents which may hereafter
be granted, and ten copies of the drawincrs of the same,
when drawings shall accompany the patents : Prnvidtil,
The costs of printing the text of said descriptions and
claims shall not exceed, exclusive of stationery, the sura
of two cents per himdred words for each of said copies,
and the cost of the drawing shall not exceed fifty cents
per copy ; one copy of the above number slial! be printed
on parchment to be affixed to the letters patent; the
work shall be under the direction, and subject to the
approval, of the Commissioner of Patents, ;ind the ex-
pense of the said copies shall be paid for out of the
Patent fund.

Section 15. And be it further enacted, That printed
copies of the letters patent of the United Siat<'s, with the
seal of the l*atent Office affixed thereto and certified and
signed by the Commissioner of I'atents, shall be legal
evidence of the contents of said letters patent in all
cases.

Skction 10. [M(Hlifying act of 1830, § 5 ; Sujjerseding
act of 1 836, § 1 8]. And be it further enacted, That all
patenn hereafter granted shall remain in force for the
term of seventeen years from the date of issue; and all
exteueion of such patents is hereby prohibited.

PATENT LAWS. 207

ACT OP 1862, CHAP. 182.

Sectiox 17. And be it further enacted, That all acts
and parts of acts lieretofore passed, which are inconsist-
ent with the provisions of this act, be, and the same are
hereby, repealed.

Approved March 2d, 1861.

ACT OF 1862, CHAPTER 182.

12 Statutes at Large, 583.
» [Thi3 Act still in Force.]

An Act making supplemental appropriations for sundry

civil expenses.

[Repealing act of 1861, § 14.] For the fund of the
Patent Office, fifty thousand eight hundred and fifty-five
dollars and forty-nine cents, to supply a deficiency exist-
ing under the act of March second, eighteen hundred and
sixty-one, entitled "An act in addition to an act to pro-
mote the progress of the useful arts:'' Provided, That
the fourteenth section of said act be, and the same is
hereby, repealed.

Approved July 16th, 1862.

ACT OF 1863, CHAPTER 102.

12 Statutes at Large, 796.

[TTiis Act still in Force.]

An Act to amend an act entitled "An act to promote the

progress of the useful arts."

Section 1. [Repealing act of 1836, § 7, in part.] Be it
enacted by the Senate and House of Hepresentatives of

208 PATENT LAWS.

VX FORCE. ACT OP 18G3, CHAP. 102, §§ 2, 3.

t/^ie United Sfates of America in Congress assemUed,
That so mucli of section seven of the act entitled "Au
not to promote the progress of the useful arts," approved
July f'lurth, eighteen hundred and thirty-six, as requires a
renewal of the oath, be, and the same is hereby, repealed.

Section 2. And be it further enacted^ That, whereas
the falling off of the revenue of the Patent Office re-
quired a reduction of the conij)ensa(ion of the examiners
and clerks, or other einphn'ees in the office, after the
thirty-first day of August, eighteen hundred and sixty-
one, that the Commissioner of Patcr)t8 be, and he is
hereby, authorized, whenever the revenue of the office
will justify him in so doing, to pay them such suras, in
addition to what they shall already have received, as will
make their compensation the same as it wa?^ at that time.

Sectio.n 3. [Extended by acts of 18G4 and 18G5.J And
be it further enacted^ That every patent shall be dated as
of a day not later than six months after the time at which
it was passed and allowed, and notice thereof sent to the
applicant or his agent. And if tht final fi-e for such
patent be not paid within the said six months, the patent
shall be withheld, and the invention therein described
shall bec(jme j)ublic property as against the applicant
therefor : Providrdy That in all cases where patents have
been allowed previous to the passage of tiiis act, the
said six months shall bo reckoned from the date of such
passage.

Approved March 3d, 1863.

PATENT LAWS. 209

ACT OF 1864, CHAP. 159.

ACT OF 1864, CHAPTER 159.
13 Statutes at Large, 194,

[This Act still in Force.]

An Act amendatory of "An act to amend an act enti-
tled an act to promote the progress of the useful arts,"
approved March third, eighteen hundred and. sixty-
three.

[Enlarging act of 1863, § 3.] He it enacted by the Se}i-
ate and House of litpresentatives of the United States
of America in Congress assembled. That any person
having an interest in an invention, whether as the in-
ventor or assignee, for which a patent was ordered to
issue upon the payment of the final fee, as provided in
section three of an act approved March third, eighteen
hundred and sixty-three, but who has failed to make pay-
ment of the final fee, as provided by said act, sh:dl have
the right to make the payment of such fee, and receive
the patent withheld on account of the non-payment of
said fee, provided such payment be made within six
months from the date of the passage of this act : /V^-
vided, That nothing herein shall be so construed as to
hold responsible in damages any persons who have man i-
factured or used any article or thing for which a patent
as aforesaid was ordered to be issued.
Approved June 25th, 1864.

210 PATENT LAWS.

ACT or 18C5, CHAP. 112.

ACT OF 18G5, CHAPTER 112.

13 Statutes at Large, 533.

[7%M Act stitl in Force.}

An Act amendatory of "An act to amend an act entitled
an act to promote the j)ron:rePs of the useful arts," ap-
proved ]\I:irc'h third, t-ightet'ii hunilreil and sixty-three.
[Enlarging: act of 18G3, § 3.] Be it enacted by the
Senate and House of litjtresentatives i>f the United
States of Anitrira in Co/i;/rtss atinend/lid, That any per-
son havini^ an interest in an inventiun, whether as in-
ventor or assignee, for which a patent was ordered to
issue upon the payment of the linal f«.'e, as proviiled in
section three of an act approved March third, eighteen
hunilred and si.\ty-three, but who has failed to make pay-
ment <»f the tin:il fee, as provided in said act, shall have
the right to make an application f\)r a patent for his in-
vention, the same as in the case of an original ap])lic:i-
tion, provided such application be made within two years
after the date of the allowance of the original applica-
tion: I*rov ided, Th'.it nothing herein shall be so construed
M to hold responsible in damages any persons who have
niimtifacturcd or use<l any article or tiling for which a
j)ateNt aforesaid was onli-red to issue. This .act shall
.ipply to all cases now in the Patent Office, and also to
such as shall hereafter be filed. And all a<'ts or parts of
atts inconsistent with this act are hereby repealed.
Approved March I'.d, 1805.

F O R M S'

UNDER THE PATENT LAWS.

1. Caveat.

2. Applicatiov for Patent, by ijrvEXTOR.

3. Applicatiox for Patent, by executor or admixistratob.

4. Application* for Patent for a design.

6. Application for reissue, by patentee.

0. Application for reissue, bt assignee or executor.

7. Application for extension, by patentee.

8. Disclaimer.

9 Appeal to examiners in chief.

10. Appeal to Commissioner of Patents.

11. Appeal to justices Supreme Court District Columbia.

1 2. Depositions.

13. Assignment op invention before Patent: Patekt to issue

to assignee.

14. Assignment of invention before Patent: P.*.tent to issue

TO inventor and another.

15. Assignment of entire or partial interest in a Patent.

16. Assignment of undivided interest in Patent.

17. Exclusive license to make and use an invention.

18. LiCKNSB to use an INVENTION ON PAYMENT OF ROYALTY.

1. Caveat.

Petition.
To THE Commissioner of Patents :

The petition of John Fitch, of Philadelphia, in the county of
Philadelphia and State of Pennsylvania,

Respectfully represents :

That he has invented a new and improved mode of prevent-
ing steam boilers from burstinjr, and that he is now engaged in
making experiments for the purpose of perfecting the same, pre-

216 FORMS rXDER THE TATENT LAWS.

pjirntory to his applying for letters patent therefor. He there-
fore |)rfty8 tliat tlie .siihjoincd tles(:rij)tioii of his invention may
be filed as a caveat -in the confidential archives of the Patent
Ofllce, apreeably to the ])rovisi(>ns of the act of Congress in that
case made and provided; he liaving paid ten dollars iutt) the
treasury of the I'nited States, and otherwise complied with the
requirements of the said act.

JOHN FITCn.
PuiLADKLPiiiA, March 1, 1856.

Description of Invention.

To ALL WHOM IT MAT COXCKKN :

Be it known that I, John Fitch, of Philadelphia, in the county
of Philadeli>hia, and State of Pennsylvania, have invented ft new
and improved mode of previ-nting steam boiUrs from bursting,
an<l that the following is a general description thereof.

My invention consists in making in the upper part of a steam
boiler an aperture similar to lliat made for the safety-valve; and
in filling or dosing such aperture with a plug or disk of some
alloy, which will fuse at any given degree of heat, and i)erinit
the steam to escape, should the salety-valve fail to j)erlorm its
functions.

Tlie steam boiler is constructed in any of the known forms,
an<l may have applied to it gauge-cocks, a salety-valvc. and other
usual ap|iendages. To obviate any danger that may arise froju
the adhesion of the safety-valve or from any other cause, 1 make
in the top of the boiler an opening similar to that made for the
■afety-valve, and I fill such opening with a ping or disk of fusi-
ble alloy, secured in any suthrietit manner. Su<'h fusible plug
may be made so as to melt at a given temperature, which will
be that to w hich it is desired to limit the pressure of the steam.

When the temperature f)f the steam in the boiler rises to such
liuiit, the alloy will melt and allow the steam to escape, tliua
prevenliug all danger of cx|>loHion.

JOHN FITCH.

Witnesses —

KoiiEirr FiLTQN,
Oliveu Evanh.

The description in a cnvout need not be as pnrticui.nr n« is refpiisito
in a Mpixitlctttion; but chould \xi HulTlcioully prociso to enable the Pat-
ent OISoc to judge aa to any probable interference when a Bubaequent
application ia filed.

FORMS UNDER THE PATENT LAWS. 217

APPUOATIO.V rOR PATENT, BY INVENTOR.

Oath.

OlTT AND CorXTT OF PlIlI.ADBI.PniA, \

State of Pen'nsylvania, ^ **'

On this first day of March, 1856, before me, tlie subscriber, a
justice of the peace, personally appeared the within-named John
Fitch, and made solemn oath [or affirmation] that he verily
believes liimself to be the original and first inventor of tlie mode
herein described for preventinji steam boilers from bursting, and
tliat he does not know or believe the same was ever before
known or used ; and that he is a citizen of the United States [or
in the case of an alien, and that he is a native of (naming the
country), that he has resided in the United States for the year
last past, and has made oath of his intention to become a citizen
thereof J.

: BENJAMIN FRANKLIN,

6 CENT Justice of the Peace.

: vat. REV.
STAMP.

2. Application fok Patent, by intkntor.

Petition.

To THE Commissioner of Patents:

The petition of John Fitch, of Philadelphia, in the county of
Philadelphia and State of Pennsylvania,

RESPECTFtlLLY REPRESENTS :

That your petitioner has invented a new and improved mode
of preventing steam boilers from bursting, which he verily be-
lieves has not been known or used prior to the invention thereof
by your petitioner. He therefore prays that letters patent of
the United States may be granted to him therefor, vesting in
him and his legal representatives the exclusive right to the same,
upon the terms and conditions expressed in the act of Congress
in that case made and provided ; he having paid fifteen dollars
into the treasury, and complied with the other provisions of the
said act.

JOHN FITCH.

Philadelphia, January 1, 1857.
10

218 FORMS UNDER THE TATEXT LAWS.

APPLICATION FOR PATENT, HT IXVEXTOR.

Speci/icatioJi.

To ALL ■wnOM IT MAY CONCEBN :

Be it known tliat I, John Fitch, of Philadelphia, in the county
of IMiil;i(kI|)hi;i, in the t^tate of Pciins\ jvaniix, have invented a
new and improved mode of preventinj; uteam boilers from bnrst-
iiiir |or, a m-w and useful mariii'ie for (statinji the use and title
of the machine); or, a new and useful improvement on a, or on
tiie, machine, iVc.]; and I do hereby declare that the following
is a full and exact ilescription thereof, reference bein;; had to the
accompaiiyiii;; drawin^xs, and to the letters of reference marked
thereon, uuiking a part of this specification.

Tlie nature of my invention consists in providinj: the upper
part of a steam boiler witii an aperture in addition to that for
tlie safety-valve ; whicii aperture is to be closed by a pUiji or
di>k of iiiloy, which will fuse at any given dejrree of heat, and
Ii.-rn.it the steam to escape, should the safety-valve fail to per-
i'nrm its functions.

To enable others skilled in the art to make and use my inven-
tion, 1 will jiroceed to describe its construction ami operation.
I c )n>truet my steam boiler in any of the known forms, and a|)-
piy thereto piuge-cocks, a s.ifety-valvc, and the other appenda};<9
<if such boilers; but in onler to obviate the dan^'er arisiufi from
the ailiiesion of the safety-valve, and from other causes, I mako
a second opening in the top of the boiler, similar to that made tor
t'le safety-valve, lus shown at .\, in the accom|>anyin^; drawing;
and in this opening,' 1 insert a pluj; or disk of fusible alloy, so-
eur.n,' it in its place by a metal rin^; and screws, or otherwise.
This fusible metal 1, in ^'^'Ueral, compose of a mi.xture of lead,
till, and bismuth, in such pro|)ortions as will insure its melting
at a niveu teiil]ierature, which must be that to which it is in-
teiide<l to limit the steam; and will, of cour.ne, vary with the
pressure the boiler is intended to sustain.

I surround the opening contaiiiin;; the fusible alloy by a tube
H, intende<l to conduct olf any steam wluch may be discharged
therefrom. Wjieii tlie temperature of the steam in such a boiler
rises to its assi>:ned limit, the fusible alloy will melt, ami allow
the steam to e»<ape freely, thereby securing it from all danger
of explosinn.

Wbat I claim as my invention, and desire to secure by letters
pttt»'nt, is the application to steam-boilers of a fusible alloy
which will melt at a given temperature, and allow the steam to
escape, an herein described, using for that purpose the aforesaid

FORMS UNDER THE PATENT LAWS. 219

APPLICATION FOR PATENT, BY INVENTOR.

metallic compound, or any other substantially the same, and
which will produce the intended effect.

JOHN FITCH.

Witnesses —

ROBEKT FlI.TON,

Oliver Evans.

Oath.

ClTT AND CorNTT OF PuiLAnELPniA, )

State of Pennsylvania, \

On this first day of January, 1857, beft)re me, the subscriber,
a Justice of the peace, personally appeared the within-named
John Fitcli, and made sok-mn oatli [or attirmationj that he verily
believes himself to be the ori<:cinal and first inventor of the modo
herein described for preventing steam boilers from bursting, and
that he does not know or believe tiie same was ever before
known or used; and that he is a citizen of the United States [or
citizen or subject of other country, as the case may be].

: BENJAMIN FRANKLIN,

: 6 OEJ.T : Justice of the Peace.

: 1ST. EEv. :

: BTA>lr.

If the application is made through a solicitor or other person, there
will be required a Power of Attorney, which may be as follows

Poxner of Attorney.

Know all Men by these Presents, That I, John Fitch,
hereby constitute and ai)|i()int Robert Morris, of tlie city of
Philadelphi;!, or his accroditod a;;ent, my Attorney, to prosecute,
beft>re the Patent Ofiice of the United States, the accompanying
application ; to alter or modify the Specification and Claim
therein as may be necessary, and as he may deem expedient; to
receive any Letters Patent which may be granted therefor; and
to do all things proper and necessary in the premises, witii full
power of substitution and revocatiiin.

Witness my baud, this first day of January, a. d. 1857.

: WcRNT i JOHN FITCH.

: I>T. BKV.

BTAMP. :

220 FORMS UNDER THE PATENT LAWS.

ATPUCATION TOR PATENT, BT KIECCTOR OR AD«rsI8T!tAT0R.
— ■ ^>

.3. ^Vppucation fob Patent, by executor or admin-
istrator OF INTENTOR.

J*etitio?i.
To THE Commissioner of Patents :

The petition of Pwobort Morris, of Pliiladolpbiii, in the county of
Phiimlflpliia, and State of Pennsylvania, executor of John
Fitch, of the same place,

Respectfully represents:

Tliat, as your petitioner is informed and believes, John Fitch,
late of said city, was, during his lifetime, the IJrst and original
inventor of a new and impr()Ve<l mode of preventing steam
boilers from bursting, which your petitioner believes had not
been known or used i>rior to the invention thereof by said
Joiin Fitch.

.That said John Fitch died, at the said city of Philadelphia, on
or about the first day of January, 1857, and tiiat your petitioner,
upon due ami projier jfroceeilings being had, and having com-
]ilied with all tlie reqiiirenieiits of the law in such capcs made
and provided, was appointed executor [or administrator of the
goods and ellectsj of liiin, said Fitch.

Your petitioner theret'ore prays that letters patent of the
I'nited States may be granted to him therefor, vesting in him,
in trust for the lieirs at law [or devisees] of said Fitch, the exclu-
sive right to tiie said invention, upon the terms and condition
expressed in the act of Congress in that <"»ise made and pro-
vided ; he having paid Jifteen dollars into the treasury, and
complied with the other provisions of the said act.

KOIJKKT MOliKlS,

Executor of John Fitch.

PaiLADBLrniA, July 1, 1857.

Specification.

To ALL WnOM IT MAT CONrERN :

Ho it known that John Fitcli, of Philade]|)hia, in tlie connty
of Philatleipliia, and State of Pennsylvania, invented a now and
improved mode of preventing steam boilers from bursting, and
that the following is a full and exact description thereof, refer-

FORMS UNDER THE PATENT LAWS. 821

APPUCAnOK FOR PATENT FOE A DESIGN.

ence being liad to tlie acodinpanying drawiiifrs and to the letters

of reference niarke<l thereon, inakinjr a part of this specification.

Tlie nature of tiio said invention, &,c. [Tlie speciiication will

be the same as before, except that it will be in tlie tliird person.]

' KOBERT MORRIS,

Witnesses — Executor of John Fitch.

Robert FcLTON,
Olivkk Evans.

Oath.

City and Covxtt of PniLADELPniA, )

State of Penxstlvaxia, \ **'

On this first day of July, 1857, before me, the subscriber, a
justice of the peace, personally appeared the within-nained
Robert Morris, and made solemn oath [or atfirmationj that ho
is the e.xeeutor [or administrator] of John Fitch, deceased, late
of said city and State, tliat he verily believes the said John
Fitch was the ori).'inal and first inventor of the mode herein de-
scribed for preventin;.,' steam boilers from burstinj^; and that he
does not know or believe the same was ever known or used be-
fore the invention thereof by said John Fitch : and that the said
John Fitch was, and the said Robert Morris is, a citizen of the
United States.

: BENJAMIN FRANKLIN,

: 5 CKNT Justice of the Peace.

. INT. BKV. :
: STAMP.

4. Application for Patext for a design.
Petition.

To THE COMMISSIOXER OF PaTENTS :

The petition of Benjamin West, of the city and county of Phila-
delphia and State of Pennsylvania,

Re3PE0TFULI,Y REPRESENTS :

That your petitioner has invented or produced a new and
original design or pattern for carpets [or design for a trade-
mark], which he verily believes has not been known prior to

222 FORMS UNDER TEIE PATENT LAWS.

APPLICATION FOB PATENT FOB A DESIGN.

tlie production tliereof by your petitioner. He therefore prays
tliat let'ers |)aten^of tlie United States may he pranted to liiin
therefor, for the term of three and a liaif [or seven, or fourteen]
years, vestinj;^ in liim and his lejral representatives the exehisivo
ripht to the same, upon the terms and conditions e.\[)ressed in •
the act of C'onj;ress in that case made and provided, lie having
paid ten [or fifteen, or thirty] doHars into tlie treasury and com-
plied with the other provisions of the said act.

BENJAMIN WEST.
PiiiLADKLPiiiA, January 1, 18G6.

Sj^eciji cation.

To ALL WnOM IT MAY CONCERN :

Be it known that I, Benjamin West, of the city of Philadel-
phia, in the county of Philadelphia and State of Pennsylvania,
Lave originated and designed a new j)attern for carpets or other
fabrics [or desij^n for a trade-mark], of which the fullowin;; is a
full, clear, and exact description, reference beinjr had to the ac-
companying specimens or drawings, making i)art of this speciti-
cati(m.

[Here follows a descripti(jn of the design, with reference to
the Kpecimeu or drawing, the !»pecifiealion to conclude aa fol-
lows :J

Claim.

"What I claim as my invention and desire to secure by letters
patent, is the design or pattern for carpets or other fabrics [or
design for a trade- mark] herein set forth.

J5ENJAMIN WEST.
Witnesses —

NoAii Wehstku,
Natiianiei. HowniTCH.

Oa(/i.

City and Cuinty of Pjiii.ADEi.rniA, )

State of Pennsylvania, ( *

On this rir»<t day of January, IKfif;, before the subscriber, a jus-
tice of t lie ])i-ace. I'crsonally appeared the within-named Henjamin
West, and made solemn oath [or allirmation, as the case may he]
that ho verily believes himself to be the original and lirst inven-

FOPwMS UNDER THE PATENT LAWS. 223

APPLICATION FOR RKISSUE, BY OniOINAL PATENTEE.
V

tor, or producer, of the design or pattern for carpets [or desifjn
for a tradc-inurk] heroin described, and that he does not know
or believe that the same was ever before known or used, and
that lie is a citizen of the United States.

'• BENJAMIN FRANKLIN,

: 6 CENT : Justice of the Peace.

: INT. RKV. ;

: BTAMP. :

5. Appucation por reissue, by the original
patentee.

Petition.

To THE Commissioner of Patents:

The petition of Samuel Morey, of Philadelphia, in the county
of Philadelphia and State of Pennsylvania,

Respectfully bepuesents :

That he did obtain letters patent of the United States for an
improvement in the boilers of steam-engines, which letters
patent are dated on the tirst day of March, 1850 ; that he nov,-
believes that the same are inoperative and invalid by reason of
a defective specitication, which defect has arisen from inadvert-
ence and mistake, lie therefore prays that he may be allowed
to surrender the same, and re(iuests that new letters patent may
issue to him, for the same invention, for the residue of the
period for which the original patent was granted, under the
amended specitication herewith presented, he having paid tliirty
dollars into the treasury of the United States, agreeably to the
requirements of the act of Congress in that case made and pro-
vided.

SAMUEL MOREY.

PniLADELPniA, January 1, 1860,

Specification.

To ALL WHOM it MAY CONCEKN :

Be it known that I, Samuel Morey, of Philadelphia, in the
county of Philadelphia, in the State of Pennsylvania, have in-
vented a new and useful improvement in the boilers of steam-

224 FORMS UNDER THE PATENT LAWS.

APPLICATIOK FOB REISSUE, BT A8SI0KEB OE EXECUTOR.

engines; and I do hereby declare tliat the followin'r is a full
and exact description thereof, reference bein;; ha»l to the accoin-
panying drawinga, and to the letters of reference marked
thereon.

[Tlie si)ecification will conform substantially to that in tho
original application, with such changes in the description and
claims thereof as shall embrace what is sought to be covered by
the reissue.]

[But as a reissued patent must be for the "same invention for
which the original patent was granted" (act 1836, sJ 13), care
should be taken not to make any such alterations or changes
as will expand the invention beyond that originally described
or represented, as such enlargement of tiie invention will vitiate
the patent, even if granted.]

Oath.

City and Cointy ok PniLADEi.riiiA, )
State of Penxsvlvaxia, \

On this first day of January, 18C0, before tho subscriber, a
justice of tiie j^'ace, personally appeared tho above-named /
Samuel Morey, and made solemn oatli [or aflirmation] that he
verily believes that, by reason of an insufhcieiit or defective
specification, his aforesai<l patent is not fully valid and available
to him; and tiiat the said error has arisen from inadvertence,
accident, or mistake, and without any fraudulent or deceptive
inteDtion, U) the best of his knovvk-dge or tu-lief.

JAMES DALL.VS,

B ritNT Justice of the Peace.

: irr. »ET.

■TAMr.

6. Al'PUCATION FOK KKI8SUE HY THE ASSIGNKB^ Oil
EXECUTOU, OF TUli OKHU.NAL PATEVIEE.

Pctidoii.

To THE Co.MMISSIoNKR OK PATEXTS :

The petition of James C. Fisher, of Philadelpliia, in the county
of Philadelphia and State of Pennsylvania,

FORMS UNDER THE PATENT LAWS. 225

application for reissite, by assign8b or executor.

Rkspectfullt represents :

That Saimicl Morey, of said city, did obtain letters patent of
the United fStates for an iniproveiucnt in the boilers of steam-
engines, which letters patent are dated on the first day of March,
1850; that your petitioner, by an assij^'nnient duly made and
executed, bearini^ date the first day of January, 1«55 [or by
mesne assignments duly made and executed], and recorded in
the Patent Office of tiie United States, has become the owner
and holder of said letters patent [or that the sai<l Samuel Morey
departed this life on the tenth day of May, 1858, and that your
petitioner has been duly appointed his executor]; and your
l)etitioner now believes that the said letters patent are inopera-
tive and invalid, by reason of a defective specification, which
defect has arisen from inadvertence and mistake. lie therefore
prays that he may be allowed to surrender the same, and re-
quests that new letters patent may issue to him, for the same
invention, for the residue of the period for which the original
patent was granted, under the amended specification herewith
presented, he having paid thirty dollars into the Treasury of the
United States, agreeably to the requirements of the act of Con-
gress in that case made and provided.

JAMES C. FISHER.

PniLADKLPHiA, January 1, 1860.

Specification.

To ALL WHOM IT MAY CONCERN:

Be it known that Samuel Morey, of Philadelphia, State of
Pennsylvania, invented a new and useful improvement in steam
boilers,^ and that the following is a full and exact description
thereof, reference being had to the accompanying drawings and
to the letters of reference marked thereon, and making a part
of this specification.

[The rest of the specification will be as in No. 5, except that it
will be expressed in the third person.]

Oath.

City and County of PniLADELPniA, )

State of Pennsylvania, ( ***

On this first day of January, 18G0, before the subscriber, a
justice of the peace, personally appeared the abore-named
10*

226 FORMS UXDEll THE PATENT LAWS.

APPLICATION FOB EXTENSION, BY PATKNTEE.

James C. Fisher, and made solemn oatli [or atVirmation] that he
verilv believes that, hy reason of an instiflieient or detective
specification, the af"oresai<l jiateiit is not fully valid and available
to him; and that the said error has arisen from inadvertence,
accident, or mistake, and without any fraudulent or deceptive
intention, to the best of his knowledge or belief.

BENJAMIN FRANKLIN,

• Scent ! Justice of the Poace.

INT. REV.
STAMP.

1. Application for extension, by Patentee.
JPetition.

To THE COMMISSIOXEK OF PATENTS:

The Petition of Sebastian Cabot, of Cabotsville, in the countj
of Harnpden and State of Massachusetts,

Respectfully represents :

That your petitioner, on the tenth day of April, 1849, duly
obtained letters jiateiit of the United States, for improvements
in machines for manufacturing weavers' heddles; that said
letters ])atent were issued in the name of your i)etitioner |and
■were duly reissued to him on tlie first day of August, 1800, if
such was the fact • : that your petitioner verily believes himself
to bo the original and first inventor of said improvement; that
he has maile diligent exertions to put said invention into general
use, and to realize compensation from tlie public therefor, but
that, without negh-ct or fault on his i)art, he has failed to obtain
from the use ancl sale of said invention a reasonable remunera-
tion for the time, ingenuity, and expense bestowed upon the
same, and the introduction thereof into use.

Your petitioner therefore prays, that the said letters patent
may bo dulv extended, according to law.

SEBASTIAN CABOT.

Oabotbtille, January 1, 1803.

FORMS UNDER THE PATENT LAWS.

227

APPLICATION FOR EXTENSIOX, BY PATENTEE.

Statement.

la the matter of the application of
Sebastian Cabot, for the exten-
sion of letters patent of tlie
United States granted to him
on the 10th day of April, 1849,
for improvements in machines
for manufaoturinp wire hcddles.

Before the Commissioner
of Patents.

Statement and Account, prepared and submitted wider the provisions of

§ 18, of the act of l^^Q.

The Statement of. Sebastian Cabot, of Cabotsville, county of
Hampden and State of Massachusetts, the above-named appli-
cant, respectfully shows:

[Such statement should set forth clearly and intelligibly the
facts and circumstances connected with the original invention,
and its development; the time and money spent in perfecting
the same; the efforts that have been made to effect its introduc-
tion into use; and such facts as go to show or prove tiie ascer-
tained value of the invention; and all receipts derived from and
expenditures paid out in connection witli such invention, which
receipts and expenditures siiould be sufficiently in detail to ex-
hibit a true and faithful account of loss and profit, in any man-
ner accruing from and by reason of the invention.

Such statement sliould also be accompanied by an account,
showing in debit and credit tlie expenditures and receipts con-
nected with the invention, and set out in the statement.]

SEBASTIAN CABOT.

Cabotsville, January 1, 1863.

Oath.

State of MASSAcarsETTS,
County of IIampdkn.

On this first day of January, 1863, before me, the subscriber,
a justice of the peace, personally appeared the above-named
Sebastian Cabot, and made solemn oath [or affirmation] that he
verily believes that the foregoing statement and account, signed
by him, is a true and correct account of the receipts and ex-
penditures derived from and paid out in connection with hie be-

S28 FORMS UNDER THE PATENT LAWS.

DISCLAIUER.

fore-incntioncfl invention and k-tters i)atent, and of the ascer-
tained value uf such invention, and that he lias, without neglect
or fault on his part, failed to obtain from the use and sale of his
said invention a reasonable remuneration for the time, ingenui-
ty, and expense bestowed upou the same, and its introduction
into use.

JAMES NEWBOLD.

6 CKNT : Justice of the Peace.

: I.MT. REV. •.

: STAMP. :

An application for an extension, made by an eiecutor or administra-
tor of the patentee, will be substantially like the above, except that
changes will be made in the jietition and oath similar to such as are
set forth and contained in Form :t.

8. Disclaimer.

To THE Commissioner ok Patents :

The petition of Sebastian Cabot, of Cabotsville, in the county
of Hampden and State of Massachusetts,

Respectfi'lly represents :

That letters patent of the United States, bearing date the first
day of March, 1850, were granted to your jietitioner for certain
improvement."* in the steam-engine [(»r, "that he has, by assign-
rnent, duly recorded in the Patent Othce, become the owner of
a right f<)r the several States of Massachusetts, Connecticut, and
Rhode Island, to certain improvements in tlio stoam-engine, for
which letters patent of the United States were granted to John
Doe, of Boston, in the State of Massacjuisetts, dated on the first
day of March, 185U"J; that lie has rea.son to believe that,
through inadvertence and mistake, the claim made in the speci-
fication of said letters patent is too broad, including that of
which your petitioner [or the Baid patentee) was not tlie first in-
ventor. Vour [letitioner, therefore, hereby enters his disclaimer
to that part of tlie claim in the aforenamed specification which
is in the following wt.rds, to wit: "I also claim the i)articular
manner in which tiiu piston of the above-described engine is
constructed 80 as to insure the close fitting of the packing

FORMS UNDER THE PATENT LAWS. 2''j

APPEAL TO EXAMINERS IX CHIEF: TO COMMISSIONER OP PATENTa

thereof to the cylinder, as set forth ;"■ which disclaimer is to
operate to the extent of the interest in said letters patent vested
in your i)etitioner, who lias ])aid ten dollars into tiie TreasiTry of
tlie United States, agreeably to tlie requirements of the act of
Congress in that case made and provided.
Cabotsvii.le, January 1, 1860. SEBASTIAN CABOT.
Witnesses —
John Doe,
Richard Roe.

9. Appeal to examiners in chief.

To THE Commissioner of Patents :

Sir : In conformity with section third of the act of Congress
dated 2(1 Marcli, 18(11, I hereby make application for an appeal
from tlie decision of the principal examiner in the matter of my
application for a patent for an improvement in the manner of
tripping the valves of steam-engines, rejected a second time on
tenth day of December, 1863, and request that the same may be
heard by the examiners in chief, tlie renewed oath required in
such cases having been taken.

Dated, January 1, 186-1-. Respectfully,

JOUX ERRICSON.

10. Appeal to the Commissioner of Patents.

To THE Commissioner of Patents :

Sir : In conformity with section second of the act of Congress
dated 2d March, 1801, I hereby make application for an appeal,
in the matter of my application for a patent for an improvement
in tlie manner of tripping the vjilves of steam-engine;;, from tiie
decision of tiie examiners in ciiief, made tlierein, on the third
day of February, 1864, and request that the same may be lieard
byyou, in ])erson, the fee required by said act having' been duly
paid by your peiiiiuu«r.

JOHN ERRICSON.

Dated, March 1, 1864.

230 fORMS UNDEPw THE PATENT LAWS.

APPEAL TO JUSTICES SCPREME COUKT, DISTRICT OF COLUMBIA.

11. Appeals to tiie/lstices of the Supreme Court
OF THE District of Columbia.

1. In case of refusal of Patent.

To THE IIox. Judges of the Supreme Court of the District
OF Columbia :

The petition of Charles Marshall, of New York, in the county
of New York and State of New York, respectfully slioweth, that
he has heretofore invented a new and useful improvement ia
machines for crushing ore, and has ajiplied to the Patent Office
of the United States for a patent for tlie same, and has complied
with the re(piirements of the several acts of Congress, and with
the rules of the Patent Ufiice prescribed in sucli cases; that his
said ai»])lication has heen rejected by the Commissioner of Pat-
ents; tiiat he lias filed in said oflice his i)rayer for an apiieal
from said decision, and notice thereof to said Commissioner, and
his reasons of appeal, and paid into tiie same the sum of twenty-
five dollars u])ou said appeal; all which will appear from the
certificate of said Commissioner of Patents hereto annexed.

And tlie said Charles Marshall prays tiiat his said appeal may
be heard and determined by your Honors, at such time as may
he apjjointed for that purpose; and that the Commissioner of
Patents may be duly notified <)f tlie same, and directed in what
manner to give notice thereof to the parties interested.

Patent Office, "Wasiiinctok, D. C, )
January luth, ISGf). \
I liereby certify that the above-named Charles Marshall has
complieil witii the requisites of the law necessary to perfect liia
aforesaid ajjpeal.

T. C. TIIEAKEP,

Commissioner of Patents.

To THE Hon. T. C. Tiieakrr, Commissioner of Patents:

Cliarles Marsliall, of New York, in the county of New York
and State of New Y<)rk, prays tliat an ap])eal may be .allowed him
froTii the decision rif your Department, rejecting his ap|)Iicatioii
for a paieiit for im|)rovements in machines for crushing ore, and
of this you are respectfully requested to take notice.

FORMS UXDER THE PATENT LAWS. 231

APPEAL TO JUSTICES SUPREME CX)UKT, DISTRICT OF COLUMBIA.

And the suid Charles Marshall assigns the following reasons
for appealing from tlie said decision of the Coinmissioner of Pat-
ents, viz.:

2. In case of rejection on Interference.

To THE IIox. Judges of the Supreme Court of the Disteict

OF Columbia:

The petition of Cliarles Marshall, of New York, in tlie county
of New York and State of New York, respectfully showeth,
that he has heretofore invented a new and useful machine fur
desulphurizing ores, and has applied to the Patent Office of tlie
United States for a patent for the same, and has complied with
tlie requirements of the several acts of Congress, and witli tlie
rules of the Patent Office prescribed in such cases; that after-
wards it was declared by the Commissioner of Patents that your
petitioner's claims interfered with those of James King, of Aus-
bnrn, in the county ot Monroe and State of New York, an appli-
cant for a patent for a similar invention, and the question of
priority of invention was determined by him in favor of tlie
said James King; that your petitioner has filed in said office his
prayer for an appeal from said decision, and notice thert-of to
said Commissioner, and his reasons of appeal, and paid into the
same the sum of twenty-live dollars upon said appeal; all which
will appear from the certificate of said Commissioner of Patents
hereto annexed.

And the said Charles Marshall prays that his said appeal may
be heard and determined by your Honors, at such time as may
be appointed for that purpose ; and that the Commissioner of
Patents may be duly notified of tlie same, and directed in what
manner to give notice thereof to the parties interested.

CHARLES MARSHALL.

New York, Feb. 1, 1866.

Patent Office, "Wasiiingtox, D. C, \
February 4th, 1860. \
I hereby certify that the above-uamod Charles Marshall has
complied with the requisites of the law necessary to perfect his
aforesaid appeal.

T. C. TUEAKER,

Commissioner of Patents.

S82 FORMS UNDER THE PATENT LAWS.

DEPOSITIONS.

To THE Hon. T. C. Tiikakeii, Coinnii93ioner of Patents :

Charles Marshall, of Ne\^' York, in the county of New York
and State of New York, prays that an aiJpcal may ho allowed
him from tlie decision of your Department upon the interference
deilareii between the said Charles Marshall and James Kin;.', and
determining the question of priority in favor of the said .lames
Kinji, and of this you are respectfully retjuesled to take notice.
And the said Charles Marsiiall assij^ns tiie following reasons
for appealing from the said decision of the Commissioner of
Patents, viz. :

12. Depositions.
1. Hot ice of taking.

In the matter of the Interference
between the application of
E. F. for a Patent for Im-
provement in Skirts, and the
application of 1. K. for a Pat-
ent for the same invention.

Before the Commissioner
of Patents.

Sir: Please take notice that an examination of witnesses in
the above matter, on the part of the said E. F., will be liad in
the city of New York, at the otlice of K. S. ."^tillwell, Xos. 41 and
43 Chambers .'street, in said city, before li. S. Stilwell, I nited
States Commissioner, or some person authorized to take dopo-
bitious, and tiiat said examination will coinmonce on tiie tirst
day of January, isdO, at ten ii'dock in the forenoon, ni.d that
the same will he adjourned from time to time, if iieuessary, un-
til the witnosseH i)ro(luced shall be examined. -r.

You can attend, and cross-oxainino the witnesses produced,
if you »lesire. Yours, Arc,

J»ate.l, Nkw York, Dec. 21, IHCO. RUFUS CII( ».\ IK,

Coun.sel for E. F.

'lo CHAHI.KH Hll. I.IVAN. Esi].,

Counsel for I. K., 'J.") Wall Street, New York.
Such notice in required only in iiitoiforence aud other cv.Mitostod casos.
It mum be served a reasonuhle time beluro the time ot Ujking the
depoHition, t>y deliverinj; a copy to the adverse party; or, if he can-
n')l he ("umJ, mvk'Ii Hervic*- may !«• nia<le upon liia ugciit or attorney, or
by leavin« a cojiy at his usii.d place of rcsuJencc, witli Boinc member
of hill family arrived at years of discretion.

FORMS UNDEIi THE rATEXT LAWS. 238

DEPOSITIONS.

2. B.'position^form of.
1

In the matter of tlie Interference
between the api)Iioation of
E. F. for a patent for Ini«
proveinent in Skirts, and the
application of I. K. for a pat-
ent for the same invention.

I Before the Commissioner
of Patents.

Depositions of witnesses, produced, sworn, and examined in
the above matter, on tlie part of E. F., before me, R. S. Stil
well, Lnited States Commissioner, at my office, Nos 41 and 4:f
Chambers Street, in the city of New York, on the first dav of
January, I8fi6 pursuant to the foregoing notice hereto annexed,
marked Exhibit A.

Present : RUFUS CIIOATE, Esq.,

Counsel for E. F., and
OUARLES SULLIVAN, E.^^q.,
Counsel for I. K.

A. B., a witness produced on the part of said E. F.. being
duly sworn, doth depose and say, in answer to intcrro^'atorie^
propounded to him by Rufus Choate, counsel for e" F. as
tollows : '

1. Interrogatory. What is your name, age, residence, and
occupation ?

1. Answer. My name is A. B. ; my nge is 45: I am a car-
pentcr, and reside in Boston, Massachusetts.

And in answer to cross-interrogatories proposed to him by
George Sullivan, counsel for L K., as follows, viz. :

1. Cross-Interrogatory, &c.

(feigned) A. B.

State of New York, )

City axd Cocxty of New Youk. ( **'

-lo^V V'^- ^'""^ *^'^-' "^"^ ^-""nty. on the 1st day of Januarv, a d.
lb()(., before me personally appeared the above-named' A. B..
and made oath that the foregoing deposition, bv him subscribed
contains the whole truth, and nothing but the 'truth.

Ihe said deposition is taken at a:e request of E. F , to b©
used upon the hearing of an interference between the claims of

234 FORMS UNDER THE PATENT LAWS.

ASSIQSMENT OF INTEXTION BEFORE PATENT, TO A8SI0SEE.

the said E. F. and those of I. K., before the Commissioner of
Patents of the United States, at his otlice, on the fir>t Monday
of February next. The said I. K. was duly iiotilifil, as ajipears
by tlie original notice hereto annexed, and attended by George
Sullivan, his counsel.

Certified bv me,

: 5 TEST : K. S. STILWELL,

: 1ST. KEv. : ^' j^^ Commissioner.

Certificale on the envelope contoining the depositions.

I hereby certify that the depo.sitions of A. B., C. D., «tc., re-
lating to the matter of interference between E. F. and G. H.,
were taken, sealed up, and addressed to the Commissioner of

Patents by me.

R. S. STILWELL,

U. S. Commissioner.

13. Assignment of invention before Patent:
Patent to issue to assignee.

Whereas I, Jethro Wood, of Scipio. in tlie county of Cayuga
and State of New York, liave inve-ntod certain new and useful
improvements in Ploughs, for which I am about to make apl>li-
cation for K-ttiTS patent of tin- I'niti-d States ; and wla-reas
David Peuco<k, of Ihirlington. New Jersey, has agreed to pur-
chase from me all tho right, title, and interest which I have, or
may have, in and to the said invention in oonse(iuence of the
grant *>( letters |)atejit therefor, and has j)aid to me, the said
Wood, the sum of five tliousand dollars, the receipt of which is
hereby acknowledged: NtiW this indenture witnesselh, that for
and in consideration of the said sum to me paid, I have assigned
and transferred, and <lo hereky assign and transfer, to the said
David Peacock, the full and exclusive right to all the improve-
Hjentrt made by me, as fully set forth an<l described in the speci-
fication which I have prepared an<l executed prepar.-itory to the
obtaining of letters |)ateMt tlierefor. And I do hereby authorize
and request tne Commissioner of Patents to issue tlie said letters
patent to the said David Peacock, as the assignee of my whole

FORMS" UNDER TUE PATENT LAWS. 235

A88IGNMKKT BEFORE PATENT, TO INVENTOR AND ANOTHER.

right and title, thereto, for the sole use and behoof of the said
David Peacock and liis lejjal representatives.

In testimony wliercof, I have hereunto set my hand and affixed
my seal tins Kith day of February, 1850.

Sealed and delivered ; JETIIRO WOOD, [sbal.]

in the presence of j
George Clymkk,
David RiTTKNnousB.

State of New York,
County of Cayuga.
On this 16th day of February, 1856, before me, a justice of the
peace, within and for said county, i)ersonally appeared Jethro
Wood, to me known to be the individual described in, and who
executed, the foregoing assignment, and acknowledged that he
executed the same for the uses and purposes therein mentioned

: A. B.,

: •? '^^^ ; Justice of the Peace.

An acknowledgment is not required by the statute, but it is most
advisable to have it made.

14. Assignment of invention before Patent : Pat-
ent TO issue to inventor and another.

Whereas I, Jethro Wood, of Scipio, in the county of Cayuga
and State of New York, have invented certain new and useful
improvements in Ploughs, for which I am about to make appli-
cation for letters patent of the United States ; and whereas
David Peacock, of Burlington, New Jersey, is desirous of ob-
taining an interest in the said invention, and in any letters pat-
ent that may be obtained therefor, and has paid to me, the said
Wood, tiie sum of tive thousand doHars, the receipt of which is
hereby acknowledged : Now this indenture witnesseth, that, for
and in consideration of the said sum to me paid, I have assigned
and transferred, and do hereby assign and transfer to the said
David Peacock and to myself, the full and exclusive right to all
the improvements made by me, as fully set forth and described

236 FORMS UNDER THE PATENT LAWS.

AS8I0SMENT OF ENTIRE OU PARTIAL IXTE1U5ST IN A PATIKT.

in the specification ^^liich I have prepared and executed pre-
paratorr to the obtainin<T of letters patent therefor. And I do
horehv autliorize and rcjuest tlie ('Dminissioiu-r of Patents to
issue tlie said letters patent to tlie said l)avi<l Penct)ck and to
niv?elf, as the ussipnees of my whole ritclit and title thereto, for
the sole use and hehoof of the said David Peacock and myself,
and our legal representatives.

In testimony whereof. I have hereunto sot my hand and affixed

my seal, this IGth day of February, IBSfi.
Sealed and delivered { JETIIKO WOOD, [beal.]

in presence of ^ :

Geokoe Clymer, ; 6oE»T :

David Ritteniiousk. : K^Mr.

Acknowledgment, as in No. 13.

15. Assignment of the entire or of a partiai,
inteuest in a tatent.

Whereas I, Jethro Wood, of Scipio, in the county of raynjfft
and State of New York, did obtain letters piiteiit of the T'nitcd
States for certain iini)rovement3 in Pk)u<?hs, whicli letters [latent
bear date the 1st day of Marcli, IHrt."}; and whereas David Pea-
cock, of Hurlirigton, New Jersey, is desirous of ai'<iuiring an
interest therein : Now tliis indenture witnesscth. that for and
in consideration of the sum of two tliousand ihdlars. to me in
han<l [)aid, the receipt of wliich is hereby ackiiowiedgeil [or to
bo paiil a<((»rdiiiK to tiio terms of a certain agreement, of oven
date herewitli, mach- by and between sai<l Peacock and niyselfj,
I have assigned, sold, and set over, ntui do liereliy assign, sell,
and set over, unto the sai<l David Peacock, all the right, title,
and interest which I havo in the said invention, as secured to
me by said letters patent, for, to, and in the entire territory of
the I'nited Stales [or in the several States of .N'ew York, New
Jersey, and I'entiHylvHuia, ami in no other place or ydaces) ; the
same to be held and enjoyed l>y the said Davi<l Peacock, for Ids
own use and behoof, an<l for the use and behoof of his leg.-d rep-
resentatives, to the full end of the term for which said letter*
patent arc granted |if it is inten<led to assign for any extended
term, then add — and for the term of any extension tliereof j, as

FORMS UNDER THE PATENT LAWS. 237

ASSIGNMENT OF AN UNDIVIDED INTEKEST IN A PATENT.

fully and entirely as tlic same would have been held and enjoyed
by rae had tliis assi;.^nmei)t and sale not been made.

In testimony whereof, I hereunto set my hand and afR.x my

seal, this 10th day of February, IftoO.
Sealed and delivered in ) JETIIRO WOOD, [seal.]

the presence (jf ( : •

Jacob Perkins, J5rr.sT

Benjamin Franklin.

INT. KKV.
STAMP.

Acknowledgment, as in No. 13.

16. Assignment op an undivided interest in a
Patent.

Whereas I, Jethro Wood, of Scipio, in the county of Cayupa
and State of New York, did obtain letter? patent of the United
States for certain improvements in I'iouj^hs. which letters j)atent
bear date the 1st day of Marcli, 1855 ; and whereas David Pea-
co'^k, of Burlington, New Jersey, is desirous of acquiring an in-
terest therein : Now this indenture witnesseth, that for and in
consideration of tlie sum of two tiiousand dollars, to me in hand
paid, the receipt of which is hereby acknowledged, I have as-
signed, sold, and set over, and do hereby assign, sell, and set
over, unto the said David Peacock, the full and e(pial undivided
one-half part of all the rieht, title, and interest which I have in
the said invention, as secured to me by said letters patent, for,
to, and in the entire territory of the United States [or within
the several States of New York, New Jersey, and Pennsylvania,
but in no other ])laces], the same to be held and enjoyed by the
said David Peacock, for his own use and behoof, and for the
use and behoof of his legal repre.sentatives, to the full end of
the term for which said letters patent are granted |if it is in-
tended to assign for any extended term, then add — and for the
term of any extension thereof — ] .as fully and entirely as the
same would have been held and enjoyed by me had this assign-
ment and sale not been made.

It is hereby covenanted and agreed,, by and between the par-
ties hereto, that neither of said jiarties, their executors, admin-
istrators, or assigns, will sell or dispose of their interest in said
patent, or grant licenses under the same to make uud use, or

238 FORMS UNDER THE PATENT LAWS.

EXCLUSIVE LICBK8E TO MAKE, USE, IM) SELL AN IXTEXTION.

sell said invention, without the written con-^ent of the other
party first had and obtained.

It is further covenanted and agreed, by and between the par-
ties hereto, and for themselves, their heirs, executors, adminis-
trators, and assigns, tliat in case they, or eitlier of them, shall
manufacture and sell ploughs under said letters patent, and con-
taining the invention tlierein described, that the party so making
and selling such ploughs sliall and will pay to the other party
hereto, or his representatives, as royalty or patent fee, the sum
of one dollar on each and every plough so made and sold by
him, which payment shall be made on the first day of January
in each and every year; and that correct books of account of all
ploughs so made sliall be kept, which shall be open to the in-
spection of the other party or his representatives, at all reason-
able times.

In testimony whereof, the said parties have hereunto set their
hands and affixed their seals, this 16th day of February,
1856.

JETHRO WOOD. [seal.J
Sealed and delivered in ( DAVID PEACOCK, [seal.]

the presence of ^ ; :

Jacob Perkin.s, ^J^':^J„

BKN.rA.Ml.\ FUAXKLIN.

INT. BEV.
BTAMl*.

Acknowledgment, as in No. 13.

17. Exclusive licexsk to make, use, and sell an
invention.

Whereas letters patent of the United States, bearing date the
Ist day of January, ISoO, were granted to Jethro Wood, of
Scipio, in the county of Cayuga and State of New York, for
certain imy>rovements in Ploughs, as by reference to said letters
patent will more t'uily appear;

And whereas, John lirown, of Boston, State of Massachusetts,
J9 di'sir<Mi9 of obtaining tlie right to make, ust", and sell the said
invention within and for tlie States of Massaciin-;otts. Connecti-
cut, and Rhode Inland, and has agreed to pay therefor tiio sum
of tliree thousan<l ilolbirs.:

Now this iniienture witncssetii, that the said Jethro Wood,
for and in consideration of the Bum of ono tliousand dollars ia
hand paid by the said John Brown, and of the two promissory

FORMS UNDER THE PATENT LAWS. 239

EXCLUSIVE LICENSE TO MAKE, USE, AND SELL AN INVENTION'.

notes of tlie said Jolin Brown, each bein.? for tlic sum of one
thousand dollars, and bearint; even date with tiiese presents, and
])ayable in one and two years from the date thereof, with in-
terest, the receipt of which money and notes is hereby acknowl-
edged, hath given and granted, and by these presents does give
and grant unto the said John Brown, his executors, administra-
tors, and assigns, during the residue of the unexpired term of
said letters patent, full and free liberty, license, power, and
authority to make, use, and sell, or vend to others to be sold,
either wholesale or retail, within and for the several States of
Massachusetts, Connecticut, and Rhode Island, the said inven-
tion, or ploughs employing and using the invention described and
set forth in said letters patent, and to receive to his and their
own use any and all profits and advantages which shall or can
be made by the making, use, and selling of said inventiim within
said territory, and that without any let, suit, trouble, or hin-
derance of him, said Jethro Wood, his executors, or administra-
tors, or any other person or persons claiming to hold and use
said invention, from, by, or under him or them, by virtue of
said letters patent, or otherwise.

Provided, however, that if at any time the said party of the
second part or his representatives shall make default in the pay-
ment of the said promissory notes or either of them, it shall and
may be lawful for the said party of the first part, or his repre-
sentatives, to revoke and annul this license, upon giving written
notice to such efi'ect to said party of the second part, or his rep-
resentatives, and which notice may be served by leaving the
same at the ordinary place of business of said party of the second
part, or his representatives, and if such note shall not be paid
within ten days after such notice, then this license shall be and
become null and void, and all rights and privileges under the
same shall cease and determine; and thereupon it shall and may
be lawful for any court of equity, having jurisdiction, to per-
petually enjoin and restrain the said party of the second part, and
his representatives, and all persons claiming under them, from
making, using, or selling said invention or any part thereof.

The said party of the first part, for himself, his executors, ad-
ministrators, and assigns, hereby covenants and agrees with the
said party of the second part, that he or they will not license
and empower any person or persons whatever to make, use, or
sell the said invention within the territory before named, during
the existence of this license ; but nothing herein contained shall
be construed to hinder or prevent the said party of the first
part, or his representatives, from constructing or licensing the

240 FORMS UNDER THE PATENT LAWS.

EXCLUSIVE UCKN8B TO MARE, USE, AXD SKLL AX INVENTION.

construction of tlie said invention to be made and used else-
wIktc tiian in the tcriitory aforesaid.

Sliould it be decided, before tlie .Huid notes or either of them
sliall become due as aforesaid, by any court havinjj Jurisdiction
to pass upon the validity of letters patent, that tlic said letters
patent so ^(ranted to said Jethro Wood, are invalid and null and
void, the said party of the second part shall be thereby released
and discharged of and from the ])ayn)ent of such of the said
promissory notes as then remain unpaid; and if either of said
notes shall then i)e paid, said party of the first part covenants
with said party of the second part to rei)ay the one-half of what-
ever sums shall liave been so paid : Proiideil, hoxcerer, that if
such adjudication, as to the varulitji^of such letters i>atent, shall
not have been made by the court of last resort, and tiie said
Wood or his representatives shall determine to carry sifch
decision to such court of last resort, t.iat then the payment of
any note so remaining unpaid shall bo suspended until the
determination of such court of last resort as to the valrility of
such i)atent, and such note shall be payable or (Otherwise, ac-
cording as said letters patent shall be finally held to be Valid, or
null and void.

It is further agreed botwoon the parties hereto, that in case
any jjcrson or i»ersons shall infringe tlie said letters patent within
the said territory, the said John Hrown, his executors, adminis-
trators, and assigns, may and shall luive the right, for his and
their benefit, in tiie name of the said Jethro Wood, his execu-
tors, administrators, and assigns, to commence, sue. and prose-
cute all such suits and actions, as shall be deemed exjiedient,
against any i)ers<)n or persons who sliall be guilty of any such
infringement; and for this |)urpose the said Jethro Wood con-
stitutes the said John Brown, his executors, administrators, and
assigns, the l.awtiil attorney or attorneys irrovocalile of him, the
«aiii Jetiiro Wood, at tlie costs and'to the use of the said J<jhn
Jirown. ills executors, administrators, and assigns, to commence
and [trosfciite, in the name of the said Jethro Wood, all such
suits and actions aforesaid.

in witnesH whereof, the [tarties to these presents have hereunto
set their hamls and seals the dav and vear first above
written. JKriiliiJ W'ool). [skai,.J

Sealed an>l delivered ) JUllN IfliOW N. |skai,.J
ill presence of \

: 6 CKWT

Ackiiowiedgment, as in No. 13. • "*■•■• ■"^•

" ^ STAMP.

FORMS UNDER THE PATENT LAWS. 241

license to use an invention on payment of royalty.

18. License to use an invention on payment of

ROYALTY.

"Whereas certain letters {)atent of the United States, bearing
(lute the lOtii day of May, IHOO, wore issued to Kufus Dutton, uf
tlie city and State of New York, for inijirovenients in Harvest-
ing Mai'liiiies, whicli said letters i)atent were afterwards surren-
dered, and new and reissued letters patent, for the same inven-
tion, issued to said Rufus Dutton, on tlie 1st day of June, 1863,
as by reference to said letters patent will more fully appear;

And whereas, Robert Brown, of Providence, Rhode Island, is
desirous of obtaining a license to use the improvements so pat-
ented to said Dutton in and upon mowing aiul reaping machines,
to be manufactured and sold by him, said Hrown:

Now this indenture witnesseth, that the said Rufus Dutton,
for and in consideration of one dollar, to him in hand paid by
said Robert Brown, and of the covenants hereinafter contained,
and to be kept and performed by said Brown, has given and
granted, and by these presents does give and grant, unto the
said Robert Brown, his executors, administrators, and assigns,
the liberty, license, power, and authority to make, use, and sell,
within and for the State of Rhode Island, for and during the
unexpired term of said i>atent, the said improvements so patented
under and by said letters patent, upon the terms and ct)ndition9
herein contained, and upon tlie payment of the sums of money
as herein provided, and not otherwise.

1st. The said Robert Brown, for himself, his executors, ad-
ministrators, and assigns, covenants and agrees to pay to said
Rufus Dutton, his executors, administrators, and assigns, as
patent fee or roy.alty, the following sums of money upon all
mowing and reaping machines manufactured and sold by him,
containing and using said improvements, or either of them, or
any substantial part thereof, as follows, that is to say : npoa
each and every one-horse machine, the sum of five dollars;
upon each and every two-horse machine, six dollars; and upon
each mowing and reaping machine combined, the sura of seven
dollars and fifty cents.

2d. The said Robert Brown, for himself, his executors, ad-
ministrators, and assigns, also covenants and agrees to keep full
and correct books of account of any and all mowing and reap-
ing machines, and of the several kinds or sizes, which he or
they may manufacture, containing or using the said invention,
which said books of account shall be open, at all rAs()Qable
11

242 FORMS UNDER THE PATENT LAWS.

LICENSE TO USB AN INVENTION ON PATIIENT OF KOYALTT.

times, to the inspection of said RufiisDutton and his representa-
tives, or ins or tiieir attorney, and on tlie first day of September
of each and every year to make a true return, under oath, of all
such machines manufactured and sold by him or tliem during
the i>ast year, and also remaining unsold; and witliin thirty
days tliereafter to pay to said Itufus Dutton, or his rei)resenta-
tives, upon all such machines so manufactured and sold, tiie
patent rent or royalty, as hereinbefore [irovided, and agreeable
to t)ie returns herein recjuired.

3d. Tlie said Robert Brown further covenants and agrees, for
himself, his executors, administrator.-!, and assigns, to mark or
paint on each and every machine made and sold by them under
this license, using or employing said invention or any j)art thereofj
the words and figures, " Patinted. May 10, 18f.O; June 1, 1S63."

4th. The said Uufus Dutton, for himself, his executors, ad-
ministrators, and assigns, covenants and agrees, that he or tliey
will not grant licL-nses to any other parties, to make and sell
machines using or emjjloying said iiiventi«)n, for a less patent
rent or royalty than above sjieciticd, without making correspond-
ing reductions to the said jiarty of the second part.

5th. Upon the failure of said pirty of tiie second part, his
executors, administrators, or assigns, at any time to faithfully
carry out and i)erlorm any or either of the said herein contained
conditions and jjrovisions, the said Rufus Dutton, his exec-
utors, administrators, or assigns, may revoke and annul this
liceJise, first giving said Robert Brown thirty days' notice there-
of, in wliich case this license, and all rights and privileges here-
under, shall forever cease and determine.

In witness whereof, the said Rufus Dutton has hereunto set
liis hand and seal, this tenth day of May, a. d. 18GG.

Sealed and delivered ( RUFl'S DUTTON. [l. s.]

in presence of

I, the Baid Robert Brown above named, hereby accei)t the
above license, ami bind mys.df, my executors, administrators,
and aHsiguH, to observe faithfully all and ea<;h of the obligations,
jonditions, and covenants tiierein contained.

In witness whereof, I have hereunto set my hand and seal,

tliirt tenth day of May, A. n. iHdO.
Sealed and delivered / ROBERT BROWN, [l. b.J
in preuencu of (

Acknowledgment, as in No. 13. : j^t*'*" :

STAMP.

INDEX

patejN't laws

References thus (*) are to sections ; otherwise, to notes.

REF.

ACTION'S RESPFX'TIKG PATENTS — ^^°^

U. S. Circuit Courts have original cognizance of . . . . 147 *17

jurisdiction of such courts exclusive as to 147 1

may be brought at law or in equity 148 4

subject matter of, governs jurisdiction 143 6

citizenship of parties docs not 148 5

amount in controversy does not 148 5

general issue pleadable in 139 *15

special matter given in evidence with 139 *15

special pleas allowed in place of notice 141 2

botli notice and special pleas not permissible 141 3

for inlringcment of patent 137 *14

assigii'jis of exclusive right only can bring 13S-9 c 1-5

assignc'- of a part interest cannot maintain 139 G

cannot be brought by a licensee in his own name. . . 139 7

damages recoverable in such actions 137 *14

when maintainable, when patent loo broad 164 *9

common-law rule as to, moditicd 165 a\

right to in such case lost by not filing disclaimer ... 165 *9

for making articles as patented, when no patent. ... 183 *5

of debt proper in such case 184 6 2

for neglect to stamp articles " patented " 185 *6

to recover penalties, when to be brought 184 c

INDEX TO LAWS PRIOR TO ACT OF 1836.

ACTION'S RESPECTING PATENTS —

on the case, for infringement 82 *4

on the case, for infringement . 89 *5

ou the case, for infringement 100 *3

jurisdiction in equity conferred 101

Circuit Courts U. S. to have original cognizanco. ... 101

244 INDEX -TO PATENT LAWS.

REFERENCES THUS (*) ARE TO SECTIONS ; OTHERWISE, TO NOTES.

>BF.

Actions respecting Patents — continued. y><-

cosLs in, when in discretion of court 110 *16

costs in, wlicn not recoverable ItkS *Q

Addition.\l Isii'rovements —

patent for, maj- be annexed to oripiiial patent 131 ♦IS

to have same efl'ect as if embraced in such original

patent 1.-14 ♦la

fee. in granting 134 •is

original claim subject to re-e.xamination, on applica-
tion for 1G3 *8

new patent may be taken for, if preferred 137 dl

patents of additions no longer allowed 201 *9

Administr.\tohs. see 1''..\ECUT0RS.

Affirm.vtion, see Oath.

Agents, Patent —

Conmjissioner may refuse to recogniee 201 *S

reasons therefor to be recorded and approved 201 *3

Agents to transmit Models —

Commissioner may ai)point not over twenty 167 *10

authority to appoint revoked 200 *6

Aliens —

may receive patent same as citizens 114 *G

fees payable by, on application 128 *D

residents for one year niny secure caveat. ... 131 *\2

must put his invention on sale wiihin 18 months. . . 140 *15

need not tndiavor to force a sale 143 A3

American assignees of, not subject to such condition 143 hi

entitled to return fee on withdrawal 168 *12

residents for one year may patent design 1H2 *3

residents for one year may jiatent design 203 *l I

pay same fee as eiiizeiis, when 202 •lO

Antedating of Patent.s —

allowed, not to exceed six months 126 •S

Appeals in Actions iiEsrECTiNG Patents —

to Sup. f'ourt from Circuit Court 147 *I7

as from other jud^fn)ents and decrees 147 *n

in other cases deemed roasonablo 147 *17

such cases must relate to construction of patent laws 148 ft I

INDEX TO LAWS PRIOR TO ACT OF 1836.

Actions respecting Patents —

citizcnnhip of parties immaterial 102 2

as.Mi^rnee of part of u patent cannot maintain 90 c I

such assignee may join with pntenM-e 90 c 2

when (Circuit Courts may declare patent void 92 e'i

when Circuit Courts hove exclusive jurisdiction .... 92 e 3

INDEX TO PATENT LAWS. 245

RErERENCEa THUS (*) AKE TO SECTIONS ; OTHERWISE, TO NOTES.

Appeals in Actions resi'ectino Patents — continued. '•*<'''• "'•»'•

such appeal takes up the wliole case 143 b 2

from all jud;,Mnent3, without regard to sum or value

in controversy 196

Appeals in Cases of Applications for Patents —

from Examiners to Examincrs-in-Chief 193 *2

not allowed until after second rejection 1 99 *3

from Examiners to Commissioner not permissible . .1 1!'9 3, 4

from Examiners-in-Cliief to Commissioner 198 *2

in cases of rejection of application 121 *7

in cases of interference 125 *8

from Commissioner to Board of Examiners 121 *7

Board of Examiners abolished 1T9 *12

from Commissioner to Chief Justice Cir. Ct, Dist. Col . 1 76 *1 1

from Commissioner to Ass't Justice Cir. Ct., Dist. Col .190 *2

from Commisnioner to Ju.^ticce Sup. Court, Dist. Col. 125 2

may be taken, when no oi)posing party 125 3

may be taken by either interferant 127 7-9

in case of granting as well as refusing a patent .... 127 7

no limitation as to time of 125 5

to be now made within the time fixed 176 *11

if not so made, right of, lost 177 & 2, 4

time for, may be enlarged 177 63

reasons of appeal to be filed 176 *11

fihng such reasons constitutes the appeal 177 61

such reasons not to be vague 177 c 1

reasons must be sufficient for refusal of patent 178 2

reasons must be clearly expressed 178 4

appeals determined on evidence before Commissioner 176 *11

appeals determined on evidence before Commissioner 178 dl-3

when further proof may be taken 178 di

Commissioner to produce original papers and evidence 176 *1I

powers of judges in, to be strictly construed 178 c 2

judges to be confined to points in reasons of appeal. 178 eS

decision of judges to govern Commissioner 177 *11

but only as to what involved in reasons of appeal . . 179 ? 1, 2

Commiss'r or Examin'rs may be examined on appeal 177 *11

examination of, to what extent 179 /I

INDEX TO LAWS PRIOR TO ACT OF 1836.

Actions respecting Patents —

general issue and notice in 83

general issue and notice in 90

objects of notice of special matter 91

*6
*6
12

what defences, not enumerated, allowed 92 d 1, 2

Patent, prima facie evidence in S3 *6

246 INDEX TO PATENT LAWS.

REFERENCES THUS (*) ARE TO SECTIONS ; OTHERWISE, TO NOTES.

Appeals in Cases op ArPi.icATioxs for Patents — PAn* »«'•

are not counsel for Patent 0;lice, or parties 179 /3

foes on appeal from Examiner.s-inChief to I'ommis'r 202 *10

fees on appeal from Commissioner to Justices Sup- Ct. 17G *11

Applioatioxs Foii Patents —

may be made by citizens or aliens 114 *6

dcsciiption of invention, how to bo set forth in 114 *«3

description in, adapted to ordinary comprehension . . 117 hi, 'i

description must be of record 117 /* 3

object of description 117 hi

drawings and model to be furnished with 115 *<j

verification of, what required in 115 *o

two distinct invenli ns cannot be included in 117 g

but dillerent modes of applying invention may be in-
cluded 113 tl

on filing of, examination to be made 120 *7

when patent to issue 120 *7

if (Ufcctive, applicant to have notice 120 *1

apjilicant may amend or withdraw 120 *7

if rejected, applicant may appeal 121 *7

interfering, ai)peal may be taken 125 *8

intt-rfering, remedj- by l^iil in equity 145 *l 6

when, may be placed in secret archives 12G *8

for patents for designs, who may make 182 *3

for patents for designs, who may make 203 *l 1

to be completed within two years 204 *12

when to be regarded as abandoned 204 *13

Art —

patent may be granted for 114 *6

does not mean art in abstract 115 1

means a useful art or manufacture 115 1

can l>e protected only in mode described 115 1

word "art" not used in Knglish patent laws 116 2

ASSIUNKK OK IXVKNTIOV OR PaTENT

patent may issue to ICO ♦G

may surrender and reissue patent I'M *13

when must join with patentee in surrender 136 6 3

benefit of renewal, when extends to 150 ♦IS

INDI':X TO LAWS PRIOR TO ACT OF 1836.

Actions KKSPKCTiMi Patkni

to set aside patent falsely obtained 82 *5

to set aside patent falsely obtained 94 *10

in what lascs may Ijo brought 94 1

objecffl of such aftions 94 2

damngea recovcable in, for infringements 81 *4

INDEX TO TATENT LAWS. 247

REPEREXCE3 THUS (*) ARE TO SECTIONS ; OTHEBTVTSE, TO X0TE8.

Assignee op Invention or Patent — continued. taoe nr.r.

extent of such benefit of renewal 151-2 / 1-6

may maintain action for infrinfrcmeut l-'H *14

but must i)e assignee of an exclusive right 133-9 c 1-5

when cannot maintain such action 139 c 6, 7

when may have action, if patent too broad 164 *9

to put date of patent on articles sold 184 *6

when not compelled so to do 185 2

effect of failure to so mark articles 205 *13

Assignment of Patent —

to be in writing 129 * 1 1

kinds of 130 1

may be made before or after issue 130 4

may cover future improvements 130 5

may include a renewal 130 6

one tenant in common may make 130 7

of expired patent void 130 8

to be recorded in Patent OflDce, and when 130 *11

when subsequent recording sufficient 131 1

of lost patents, when to be recorded anew 154 *1

fees for recording 202 *10

Board of Examiners —

creation of, and who to compose 121 *7

duties of, in case of appeal to 121 *7

repeal of act creating 119 ^12

Chief-Justice Cir. Ct., Dist. CoL, substituted in place of 1 76 *1 1

Caveat —

who may file 131 *12

what to set forth 131 *12

what need not sliow 132 b 3

to be preserved in secrecy 131 'n

rights secured by 132 ♦IJ

INDEX TO LAWS PRIOR TO ACT OF 1836.

Actions respecting Patents —

damages recoverable in, for infringements 89 *5

damages recoverable in, for infringements 99 *3

AUENS-i-

resideut for two years may receive patent 98 *1

right to patent extended to all resident aliens 105

248 INDEX TO PATENT LAWS.

RBFFBREIiCES THL'S (*) ARE TO SBOTIONa ; OTUERWUiE, TO NOTES.

Caveat — continued. '*«■ ■«'•

may be renewed from year to year 1 -12 o 2

is for the bcnelit of llie inventor 132 61

notice to Commissioner as to what l-t2 b'i

power of ( ommissioner as to 133 4

neglect of Commissioner to give notice as to effect of 133 8

purposes effected by 133 5

liow far evidence of invention 133 6

not evidence that invention is not perfected 133 7

■wlien caveator may be required to complete invention 132 ♦ll

time of completion, how computed 201 *0

fee on, original]}' 131 * 1 2

fee on, considered a part of patent fee 131 *1 2

fee on, no longer part of patent fee 201 *3

fee on, reduced 202 •lO

CniEr Clerk of Pat^t Office —

how appointed, and duties of 100 *2

Acting Commissioner in absence of Commissioner . . 109 1

certificate of, as Acting Commissioner, valid 110 3

prohibited from acquiring interest in patents 109 *2

to take oatl), and give bonds 110 *J

salary of, originally 109 *2

salary of, as increased 200 *4

Chief-Justice Ciuciit Covrt, District Columbia —

when appeals may bo made to 17*5 *1 1

compenBation of, on appeals, per year 180 *13

compensation of, on appeals, in each case 190 *2

Justices Sup. Ct., l)ist. CoL, substituted in place of . 125 3

Claim of Specification —

what to s{>erify ami point out 115

conclusive as to riglits of patentee 118 j I

most material part of specification 118 j2

embraces equivalents, though not named 118 jS

too broad, patentee may disclaim ISl *1

too broad, when patent will be held good 161 *0

Clbrks in Patent Office —

how appoiDto<l 1 09 *2

INDEX TO LAWS PRIOR TO ACT OF 1836.

Alicnh —

must introduce patent within one year, not intermit

its use for six months, and become a citizen ... 105
Afpeaij to Siprehe CotuT —

from judjfmentH of Circuit Court 101

ArPLirATioMS roii Patents —

may b« made by any persons who are inventors ... 19 *!

•f

INDEX TO PATENT LAWS. 249

EBFERENCES THUS (*) ARE TO SECTIONS ; OTHERWISE, TO NOTES.

Clerks in Patent Office — continued. '•■*o" *"''•

required to take oath 110 *3

prohibited from acquirin;; interest in patents 109 *2

disbursing clerk to give bonds 191

temporary and other, appointment of 1*53 *1 1

temporary and other, appointment of IT 0 *2

temporary and other, appointment of 187 *3

temporary and other, appointment of 192

COMMISSIONEK OF PATENTS

how appointed lO'j *1

general duties of If^'G *1

prohibited from acquiring interest in patents 109 *2

to take oath, and give bonds 110 *3

to cause seal of Patent Office to be made 110 •4

to furnisli copies of records, when applied to Ill il

to furnish copies to all asking for same Ill 62

to countersign letters patent 112 *5

to make annual report ICO *14

to prepare lists of patents 1 T 1 *3

may frank papers connected with his oflice lf>7 *1

may frank Patent Oflice reports 187 *-t

power of, to restore or dispose of models 200 *5

power of, to appoint examiners 200 *7

may cause letters patent to be printed 206 *l-t

power as to, taken away 207

may direct papers illegibly written to be printed ... 201 *8

when, may refuse to recotinizo patent agents 201 *8

may make rules as to ovidence in contested cases . . 179 ^12

may make rules as to evidence in all cases 196 *1

cannot make new rules of evidence or law 180 1

is liimself bound by such rules ISO 2

duties of, on filinf,' of c iveat 132 *I2

what acts can perform on it liJ.'i •!

neglect to give notice on, effect of 133 10

duties of, on applications for patent for inventions . . 120 *7

duties of, on applications for patent for designs 203 *11

bound to issue patent, when 120 *1

INDEX TO LAWS PRIOR TO ACT OF 1836.

Applications for Patents —

confmed to citizens of United States 84 *1

right to make extended to aliens 97 *1

privileges as to, further extended to aliens 105 *1

what to set forth 87 *1

to be verified 87 *1

to be accompanied by drawings and model 87-8 *1

11*

960 INDEX TO PATENT LAWS.

RIFEBENCES THUS (*) ARE TO SECTIONS : OTHEEWTSE, TO NOTES.

OOJiMissioxER OF Patents — continued. '*«■ ■*'•

when patent issued, power ceases. 124 d 2

power remains, until patent issued 1-4 d 3

duties of, iu cases of interference, on applications . . 125 *S

duties of, in cases of interference, on caveat 133 *12

may allow a second interference 126 4

duties of, as to .surrenders and reissues 133 *\.'.i

must act, has no discretion 135 G

may allow reissues in several parts 158 *5

duties of, as to extensions 149 *1 3

length of notice required in such cases 186 *1

duties of, on withdrawals, to refund part fee I'-O *7

duties of, extended to applications bj' foreigners. . . . 168 *12

duties of, as to patents issued prior to Dec. 16, 1836 154-5 *!, 2

Composition' op m.\ttek —

patent may be granted for lit '6

specimens of ingredients on application for 115 *6

every ingredient need not bo new 116 el

combination only required to be new 116 c 1

difference between it and process 116 c2

CONGRE.SS, I'OWEK OVEIt rATI.NT.S —

can grant privileges only to inventors 9 1

canuot grant jirivileges to introducers 9 1

ascertains and dclines property iu iuwutiona 10 6

does not regulate its use 10 5

euch use regulated by the States 10 5

laws of, superior to those of the States 10 3, 6

may determine wlieu and for how long patent may

issue 10 12

no restriction to its power 11 12

may modify at pleasure laws as to patents 11 13

may pass retrospective laws as to 11 14, 15

may reserve riglits and privileges to assignees 11 16

may confer further term, and oven after expiration

of lirst H 17

may grant a second extension 12 22

fraud in acts of, not presumed 11 18

INDE.X; TO LAWS PRIOR TO ACT OP 1836.

AEUITRATOKS. is CA8E.S OK iNTERriRENCE —

how and by whom appointed 93 9

award of, to be flnal 93 9

refusal to sulmiit to, eflect of 93 ^

AssioNKE or Invektion oil Patent —

Bt.nnds in place of original inventor 89

may maintain action for infringement 81 4

INDEX TO PATENT LAWS. 251

REFEEENCBS THUS (*) ARE TO SECTIONS ; OTUEa\VISE, TO NOTES.

COKGHESS, POSTER OVER PATENTS— Continued. fAOK Ksr.

may renew a patent, or decline so to do 11 21

may grant rights, by general or special laws 12 24

private acts are considered part of the general ones. 12 25

both to be construed together 12 26

Copies of Papeus —

any one may have Ill *4

Commissioner required to give Ill 61,2

certiOetl, evidcnc« when originals would bo Ill *4

originals cannot bo required Ill a I

copies must be received when offered Ill a2

prima facie evidence of correctness of originals Ill a 3, 4

defective, how corrected Ill a5

cannot be taken by third persons Ill c

of restored patents, when evidence 155 *2, 3

of printed patents, when evidence 206 *15

fees on obtaining 202 *10

Courts, Jurisdictio-v is Patent Cases — Supreme Court —

appeals and writ of error ta as in other cases 147 *17

and in other cases deemed reasonable 147 *1 7

what are reasonable cases 148 6 1

whole case goes up in sucli cases 1-18 b 2

from all judgments, without regard to sum or value

in controversy 196

Courts, Jubisdictiov in Patent Cases — Circuit Courts —

have original cognizance of actions as to patents. . . . 147 *17

exclusive as well as original cognizance 147 a 1

as well in equity as at law 147 *17

actions may be brought in equity or at law 143 4

jurisdiction of^ depends only on subject-matter 143 5

may issue injuuctions 147 *17

equity jurisdiction same as in England 147 2

jurisdiction irrespective of right to injunction 148 3

does not extend to bill for specific performance 148 6

nor to enforce covenants of license 143 7

parties to, need not live in district 148 8

defendant must be served in district 148 9

INDEX TO LAWS PRIOR TO ACT OF 1836.

Assignee of Invention or Patent —

may maintain action for infringement 89 *5

of part of patent, cannot bring action . . . .■ 90 c 1

in such case must join with patentee 90 c 2

Copies of Papers —

who may have 81 *3

252 INDEX TO PATENT LAWS.

REFKUENCE3 THUS t*) ARE TO SECTIONS; OTHEEWISK, TO NOTES.

Courts, Jurisdiction in Patent Cases — Circuit Courts — ""aoi «kf.

when may declare patents void 115 *1 G

extended in such cases 175 *10

jurisdiction exohisive in sucli case 147 4

assit^nee may maintain such action 146 3

power to order patent to issue 146 ♦IB

when may treble damages 137 •14

such power discretionary 133 2, 7

may treble damages, though costs not recoverable . . 138 8

Damages in Actions for Infringement —

jury to find actual damages 137 ♦li

actual, those fixed by verdict 138 3

not to bo exemplary or punitory 133 4

only compensatory 138 6

cannot include counsel foes 138 6

court may treble the damages 137 *14

discretionary wliether bo to do 138 2, 7

may be increased, though costs not recoverable .... 138 8

object of increasing 138 9

Defences, see General Issde.

Designs, Patent for —

citizens and aliens may take 182 *3

citizens and aliens may take 203 *1 1

term of, originally, seven years 182 *3

fee of, originally, fifteen dollars 182 *3

term of, 3i, or 7, or 14 years 203 *1 1

term may be extended seven years 1103 *J 1

fees, on issue of 204 *\ 1

utility of, not necessary for a patent 204 1

must bo result of industry, genius, Ac 201 2

titles, trad( marks, Ac, when jialcntablo as 201 6, 6

Diqest ok Patents —

('omraisKioner authorized to publish , 171 *3

INDKX TO LAWS PiUOR TO ACT OF 183G.

CoriEfl OF Pai'kiis —

copy fli>eriflcati()n, how far evidence 81 *2

copy B|KTiUcation, liow far evidence 88 *3

copies not allowi d to every one OG 'i

fees r)n obtniiiing "J5 *]0

CODBTH, JfRisniCTioN OF — Su])romo Court —

opppnl^ on<i writs of error to 101

lie aa from other judgments 101

INDEX TO PATENT LAWS. 253
references thus (*) are to sections ; otherwise, to notes.

Disclaimer op Patent — pack kkf.

who may make IGl *7

to state the interest of disclaimant IGl *1

to be in writing, and witnessed, and recorded 101 *7

to be considered as a part of patent IGl *7

how far affects pending actions 101 *7

if not tiled before action, costs not recoverable 165 *9

effect of unreasonable delay in filing 165 *9

when necessary, on application for reissue 103 *8

law as to, penal and not remedial 101 1

when patentee must disclaim 163 2

what may be disclaimed 102 3

when should set forth what is claimed 162 4

interest of disclaimant, statement of 162 6 1

when does not operate in favor of assignees 162 c 1

when does not affect prior grantee 162 c 2

when ma}' be received in evidence 163 6

disclaimed part may be covered by reissue 1G3 6

should be filed before suit 163 d 2

effect of not so filing 163 d2, 3

when applies to suits pending 163 d 1

when applies to suits brought after 163 d 1

fees on filing 202 ♦lO

Draughtsman of Patent Office —

how appointed, and salary of 109 *2

additional compensation for 191

Drawings of Invention —

to accompany apphcations 115 *6

to be witnessed by two witnesses 115 *6

size of 119 6

may be resorted to, to aid description 118 kl

references on, when not necessary 118 ifc 2, 3

may be signed by inventor, or his attorney 118 k4

duplicate required IGO fi

photographs, when permitted, in place of 119 7

INDEX TO LAWS PRIOR TO ACT OP 1836.

Courts, Jurisdiction of — Circuit Courts —

in actions on the case for infringement 81 *4

in actions on the case for infringement 89 *5

have original cognizance of actions as to patents. . . . 10.1

jurisdiction of all ciises in equity and at law 101

jurisdiction of, not exclusive lOii 3

jurisdiction not enlarged as to subject-matter 102 2

Courts, Jurisdiction of — District Courts —

power to repeal letters patent 82 *5

254 INDEX TO PATENT LAWS.

BEFEBEirCBS THVS (*) ABB TO SECTIONS ; OTHEBWISB, TO K0TS8.

EriDEycE nr Cases before the Patetxt Otkice — ^ao» ««r.
Commissioner, may make rules as to, in contested

cases 179 ♦n

power to make rules extended to all cases 196 *!

new rules of, cannot bo maile 180 1

Buch rules bind Commissioner 180 8

revocation of, afiecta oulj subsequent proceedings . . 180 3

such cases must be just and reasonable 180 4

before whom may be taken 196 1

witnesses may be comi)elled to give 197 *!

how far witnesses privileged from giving 197 *1

fees to be paid to witnesses 193 *1

how far copies of papers are Ill *4

how such defective copies corrected Ill a 5

printed copies of patents, when evidence 20G *15

Ea'amixeus in Patent OrncE —

board of, to determine appeals, created 121 *7

duties of, transferred to Chief-Juslico Cir. Ct., D. C. 176 »ll

duties of, may be j)erformed by Assistant Justices. . 190 *2

now exercised by Justices of Supreme Ct., D. C. ... 177 a 2

m chief, appointment of 198 *2

to revise decisions of primary examiners 198 ♦2

governed by rules of Commiasioner 198 *2

appeals from, to Commissioner 193 *2

appeals to, from primary, when 199 ♦S

are judicial and iudei>eudout officers 199 2

Commissioner can overrule their acts only on appeal. 199 3

salary of 198 *3

principal, appointment of, one 1 09 *2

priuciiJcol, ajipoiutineiit of, two 185 *!

principal, apj)ointmeiit of, two 189 ^2

principal, apiKiiiitmcnt of, four 192 ♦lO

princij);!!, appftinlmout of, two 19;i ♦O

Commissioner may appoint 200 ^7

are judicial and independent ofTli^crs 199 2

Conunissioner can control acta of, only on appeal . . . 199 3

rated as fourth-class clerks 1 93 ^26

INDHX TO LAWS PRIOR TO ACT OF 183«.

CotJBTS, Jt'BiHDKTiOH OF — District Courts —

power to repeal lelU'rn potent 94 *10

extent of jurisdifliun in such cases 94 1

objects of such pnx^edings 91 2

restoratioD of suspoudod suits in 9G-7

INDEX TO PATENT LAWS. 265

REFERENCES THUS (*) ARE TO SECTIONS ; OTHERWISB, TO NOTES.

ExAJfiNEns IN Patent Ofhce — continued. pa'*" R'-'-

salarv of 109 *2

ealary of 191 *3

assistants, appointment of, two 170 ♦l

assistants, appointment of, two 185 *1

assistants, appointment of, two 188 *2

assistants, appointment of, six 191 *3

assistants, appointment of, four 192 *I0

assistants, appointment of, two 193 *9

Commissioner may appoint 200 *7

rated as third-class clerks 193 *25

Balarj- of 170 *l

salary of 191 *3

power of, as to interference 198 *2

power of, in extensions 198 *2

Extension of Patents —

patentee may apply f)r 149 *18

patentee same as inventor 150 a 1

administrator may apply for 150 a 2

.and though patentee had no interest in existing

patent 151 3

application to be made to Commissioner 149 *18

Board appointed to determine as to 149 •IS

Commissioner substituted for Board 185 *1

decision of Commissioner conclusive 151 c3

notice of time and place of hearing to be published . 149 ♦IS
applications for, to be filed ninety days before expi-
ration 205 ♦n

sixty days' notice of hearing to be given 186 *1

notice to be published 205 *12

object of notice of application 151 c 1

application to be referred to examiner 186 *1

report of examiner may be reviewed by examiner in

chief 198 ♦2

on what principles granted or refused 186 *1

effect of extended patent 150 *18

extended patent gives same rights as original 151 «4

original patent becomes one for twenty -one years. . . 151 e5

not to be extended over seven years 186 '1

of patents issued since March 2, 1861, prohibited. . . 206 •le

INDEX TO L^VWS PRIOR TO ACT OF 1836.

Damages in Actions fob Infringement —

such as jury may assess, and forfeiture of thing made 81 ♦■4

equal to three times amount of license price 89 *5

equal to three times actual damage sustained 99 *3

256 INDEX TO PATENT LAWS.

RKFERESCES THUS (*) ABE TO SECTIONS ; OTUEBWISK, TO NOTES.

Extension" of Patents — continued. rxom bv.

.except as to patents for designs 204 *ll

not granted after expiration of patent 150 *18

benclii of in favor of assignees 150 *18

how far inures to assignees 151-2 /1-6

applies to past as well as future patents 151 el

but one extension provided for 151 e2

may be again extended by Congress 151 e 6, 7

fee on application for 202 *10

fee on granting of 202 *1 0

Fees —

on filing caveat 131 *12

to be considered part of patent fee 131 ♦12

no longer to be part of such fee 201 *9

fee reduced 202 *10

on application for patent 128 *9

on filing original application 202 *10

on issuing original patent 202 *10

on application for improvements 134 ♦IS

applications for improvements abolished 201 *9

on ai)plication for reissue 134 ♦IS

fee in such case increased 202 *10

on application for extension 149 *18

. fee increased in such ca.se 202 *1 0

on granting extension 202 *1 0

on iipplication for patent for designs 182 *3

fees in such cases modified 203 *1 1

on filing disclaimer ICl *7

on filing disclaimer 202 *10

on appeals to Commissioner 202 'lO

on ap|)oals to Justices Supremo Court 122 ♦I

for recording assignments 130 *1I

increased in such cases 187 ^2

re-enactment of provision as to 202 ♦lO

for cojiies of papers and drawings Ill *4

re-enactment of provision as to 202 ♦lO

to what persons may bo paid 128 a

INDEX TO LAWS PRIOR TO ACT OP 1836.

EiTEXflios or Patints —

by application to Congress 102 ♦J

refjuiHites of application 103 *2

previous extenaioa only by private acts 103 2

INDEX TO PATENT LAWS. 257

EEFERE.VCES THUS (*) ARE TO SRCTIOXS ; OTHERWISE, TO NOTES.

Fees — continii(?d. paob bef.

paid by mistake, may be refunded 181 *1

of witnesses on examination 198 *1

Foreign Patents —

not to be obtained over six months prior to home

patent 126 *8

such issue of no longer affects home patent, provided

invention not put in public use in U. S 17 1 *i)

home patent to run from date of foreign 171 *6

in what cases this proviso applies 172 3, 4

date of home patent may be altered to correspond . . 172 1

misdating home ])atent not fatal 172 a2, G

Fraxkixg privilege of COMMISSION'ER —

may frank letters, ic. connected with his office. . . . 107 *1

may frank Patent OlDce reports 187 *4

€}.

General Isslt; —

defendant may plead, with notice'special matter. . . . 139 *15

is enlargement of mode of defence 140 a 1

but defendant may plead specially Itl a 1, 2

notice and special pleas not botli permissible 141 a 3

order of court not necessary to file notice ... 141 b 1

defective notice may be corrected 141 b'2

covers depositions taken before notice filed 141 6 3

notice special matter not proper in equity suits .... 141 b 5

object of notice 143-4 tl, 2

how particular notice must be 144 3-6

what defences may be set up by notice 139 *15

Ikfrixgemext of Patent, see Actions and Damages.

Inteufeking ^Vppi.ications —

parlies to, entitled to notice 125 *3

Commissioner to decide upon 125 *S

must be as to patentable matters 126 1

implies substantial identity 12G 3

INDEX TO LAWS PillOR TO ACT OF 183G.

Fees —

on obtaining letters patent 83 *7

on deposit of petition Uo *11

for copies o'" specification and model 81 *3

for copies of papers and drawings Oo *11

258 INDEX TO PATENT LAWS.

RKFERKNCES THUS (*) ARE TO SECTIONS ; OTHERWISE, TO NOTES. '

Interfkriko Ari'LiCATiONS — continued. pao* ««'•

may exi.«t between application and reis.sue 126 3

second may be declared between same parties 12(i 4

Fccond only a rehearing of first 127 5

appeal in cnses of 125 ♦S

remed}' as to, by bill in equity 145 *1(J

assignee tony file such bill 146 c 3

when caveator entitled to notice of 132 *12

Introducer or Invention —

nut protected by acts of Conpres.s 9 1

the several States may grant privileges to 9 2

Invention, wiikv rATKNTAin.K —

must be new and useful 114 *G

not known or used by others than inventor 114 *6

not in use or on sale with inventor's consent 114 *6

not known so as to bo accessible to the public 117 <3

use for two years before application permitted 172 *7

such use extends patent two years 173 2

object and cQect of such provision 173 3-8

L..

Librarian of Patf.nt Office —

appropriation to pay 1 ^0

rated as u clerk of the third class 193 ♦25

salary of, established 1 '.»9 *4

Library ok Patknt Office —

establishment of, and appropriation for I(i2 *19

appropriation for 190-1

in.

tlACinSF., PATENT FOR —

principle and ni'xies of application of to bo stntod ... 1 15 ♦C

includes all niochaiiii-al dcvicoa or coinbinnlions. ... 1 Ifi M, 6

one patent (uiiy include all nioilos conteinplalcd .... 118 t 1

inventor muHt doMcribe the diflbront modes 118 i 2

INDEX TO LAWS PUIOIl To ACT OF 183G.

Gbnrral Irsie —

ploadablo, with notice of special matter 83 'G

pl'-adablo, with notice of B|X)cial matter 90 *r,

object of Huch provision 91 a 2

such notice for security of plaintiflT 91 03

INDEX TO PATENT LAWS. 259

REFEBEJfCES THUS (*) ABE TO SECTIONS ; OTHERWISE, TO NOTES.

Machine, Patent for — continued. paob kkf.

abstract effect or function of, not patentable 116 6 2

is the result of invention 116 6 5

"improved machine" and "improvement on ma-
chine " equivalent ]1G dl

Machinist in Patent Office —

appointment of, and salary 109 *'2

rated as a thinl-class clerk 103 *25

MANrKACrURE, ARTICLE OF —

patent may be pranted for 114 *G

Messencer in Patent Office —

appointment of, and salary 109 *2

Models of Inventions —

required on applications. . , 115 *G

to be classified and arranged 15;} *20

lost or destroyed, duplicates to be procured 167 *4

when may be restored by Commissioner 200 *5

are part of the letters patent 119 1 1

how made, and size of 119 12

may bo dispensed with, in case of design 200 *5

Money Paid bv Mistake —

fees so paid to Patent OflBce may be refunded 181 *1

Notice of Existing Patent —

patentees and assignees to give 20o *13

effect of not doing so 205 *13

Notices of Interferences, see Interfering Applications.

Notices of Special Matter, see General Issue.

Oath in Patent Proceedings —

required on applications for patents 115 *G

not essential to validity of patent 119 t?> 1

INDEX TO LAWS PRIOR TO ACT OF 1836.

Interfering Applications —

submission of, to arlntrators 93 *9

refusal to submit, effect of 93 b

Invention, Patentable —

must be useful, not before known or used 79 *1

must be useful, not known or used before application 84 *1

not known or used by public 85 3

260 INDEX TO PATENT LAWS.

BEFKRENCE8 THUS (*) ARE TO SSCTI0X8 ; OTHEBWISK, TO NOTES.

Oath in Patent PROCEEniNr.s — continued. •"*"« >«'■

extends to vrliolo of specification 119 m'2

" declaration " cannot be substituted for 119 m .1

afiinnation may bo substituted for 108 *1IJ

before whom may be taken 115 *G

before whom taken, out of United States 183 ♦i

renewal oath, enactment as to 121 *1

renewal oath, no longer required 208 *1

Commissioner, and other ofQcora to take 110 *3

Patext Okfice —

establishment of IOC *1

atlaohcd to Dejiartment of State 106 *l

attached to Department of Interior 188 *'2

officers In, to have no interest in patents 109 *2

oflicers in, to take oatli 110 *3

seal of. to bo provided 1 10 *-4

Patents kor Invextion.s, requisites op, 4c. —
applivations for, see Appi.ic.vtions.

to be issued in the name of United States 112 *5

no warrantee in respect to 113 7

does not bind (lovernment more than others 1 l.'J 7

validity of, may be contested by Govornmeut 11-'! 7

issue subjects to all legal objections 113 8

what to contain 112 *5

embraces specifi&ilion, model, and drawings 113 D

when new one^ may issue 1 •"'G *3

to bo signed by Secretary of State 112 *5

now signed by Secretary of Interior 183 *2

countersigned by (.'onunissionor of Patents 112 *!>

recorded in Patent onicc 112 *5

when may be recorded anew 1 Ti t *1

issue to the aj)plicant or applicants 112 ♦S

may issue to assignees of inventor 159 *6

cannot issue to assignee and ioventor together IGO 2

INDEX TO LAWS PIUOR TO ACT OF 183G.

Machines, Patents for —

princi|>les of to bo set forth in specification 87 *3

Bi'veral mndcH of application of stated 87 *3

Models ok I.wkntidn.s —

required on ai)ii!ii;;ition8 80 *2

required on applications 88 *3

INDEX TO PATENT LAWS. 261

RBFERENCES THUS (*) AUG TO SECTIONS ; OTIIERWISK, TO NOTES.

PaTEN'TS FOR ISVENTIOXS, RKQLISITES OF, ctC. — Continued. PAOZ R"''-

must issue to assignees of whole interest 100 . 2

cannot issue to assignee of part interest ICO 3

assignee becomes, in low, party applicant 100 4

may issue to legal representatives of inventor 129 *10

need not issue to them " in trust " 129 2

what granted by 112 *5

grant of, protects thing patented 113 1

does not cover products of patented machine 113 2

no right to at common law 113 3

right to, is the creature of the statute 113 3

use of, regulated by laws of different States 113 4-6

u§e of, regulated by laws of different States 10 5-11

is prima flick evidence of factB stated in it 113 10

term of originally fourteen years 112 *5

extended to seventeen years 206 *16

may be issued for a less term 112 2, 3

patents of addition, provided for 134 *13

patents of addition, no longer granted 201 *9

when invalid, and for what reasons 139 *I5

when courts may declare void, in whole or in part. . 145 *I6

when valid, though claiming too much 164 *9

assignable, in whole or in part 129 *11

for designs, when i.ssued, and term of 182 *3

for designs, term of varied 203 *1 1

Commissioner may cause to be printed 206 *14

prin ing of, no longer allowed 207

reissue of, see Reissue.
extension of see Extension.

classified list of, to be published 171 *3

annual list of^ 169 *14

fee on obtaining, see Fees.

Patented Articles —

to be marked with date of patent 134 *5

to be marked " patented," and with date of patent. . 205 *13

when such mark may be on package 205 *13

penalty for neglecting so to do 205 *13

INDEX TO LAWS PRIOR TO ACT OF 1S36.

Oatii OF Invention —

required on application for patent 87 *3

Patents for Invention.s —

to be tested by President United States 79. 84 *1

to be certified by Attorney-General 80. 85 *1

to be recorded in ofiBce of Secretary of State 80, b5 *1

262 INDEX TO PATENT LAWS.

REFERENCES TUCS (*) ARE TO SECTIONS ; OTHERWISE, TO K0TE8.

rSNALTIES RESPECTING PATENTS — PAOK Mr.

for marking articles patented when not so 1 83 'j

incurred, as to all articles marked with guilt)- intent. 184 a

penalty is just one hundred dollars *. 184 6 1

may be recovered in action of debt 184 6 2

to bo sued for within live years 184 c

for neglecting to stamp date of patent on articles sold 184 *G

Printing Specifications, Drawings, ic. —

Commissioner may direct to be printed 20G *14

cost of, limited 206 *I4

expense of, paid out of patent fund 2015 ♦ 1 4

printed copies to be evidence 20t') * *15

autiiority to print revoked 207

papers illegibly written may be printed 201 *3

cost of, to be paid by parties tiling 201 ♦S

Process —

not eo nomine subject of patent 1 1 G 3

included under term " useful art" 116 3

is the result of discovery 116 6 3

there may be iuvontioa in, irrespective of machinery 116 64

Reissue op Patent —

when may be had, and for what errorfl 1^3 ♦IS

who may apply for ]34 *i;{

who maj' apply for 136 1, 2

reissued jiatent must be for same invention ........ 134 *13

eeveral reissues may be had on same patent 158 *5

original claim subject to revision and restriction. . . . 163 *d
reissued patent to have same effect as if originally

filed 134 *13

reissued patent relates back to original 136 c 1

is a continuation of the original 136 c 2

cannot allect previous grantees 136 c-i

there may be more than one reissue 13.') 3

Only rimedy to correct mistakes in patent 13r> 4

comlition on which allowed 135 6

INDEX TO LAWS PRIOR TO ACT OF 1836.

Patents rou Inventions —

term of fourteen years 7f, 85 *1

in.kv iH.Muo to rejtreseiitatives of inventor OU *2

surreptitiously obtained, how repealed 82 *5

Biineptiliously obtained, how repealed 93 *I0

object of ^ucb proceeding 93 2

INDEX TO PATENT LAWS. 263

REFERENCES TUUS (*) ARE TO SECTIONS ; OTHERWISE, TO NOTES.

*5
*10

*14

Reissue of Patent — conlimied. ^^^^ "''•''

duty uf Commissioner to grant 135 6, 7

may be hail on patent extended by Congress 135 8

cannot embrace a diffurent subject-matter 135 9

when assignee and patentee should join as to 136 6 3

licensee cannot have 136 6 4

as to wliat conclusive 137 5

fees on applications for 134 *13

fees on applications for, increased 153

fees on applications for, confirmed 202

Report op Patent Officf —

annual report to be made 169

mechanical report, drawings of, to be in one volume 194 *4

may be sent by Commissioner free of postage 187 *4

Seal of Patent Office —

Commissioner to provide 110 *4

all patents to be issued under 112 *5

copies of records, &c., verified by, to be evidence. . . 110 *4

printed patents made evidence by 206 *1 5

Specifications of Patents —

what to set forth H-t *6

to bo accompanied by drawings and specimens 114 *G

description in such that ordinary mechanics can im-

derstand it 117 h],2

no description except of record 117 h 3

need not describe operation of known naachinery. . . 118 5

objects of description 117 ^4

illegible, may bo printed at applicant's expense 201 *8

Specimens of Ingredients —

when required, on application 115 *6

States, powers of as to Patents —

may grant privileges to introducer of invention .... 9 2

may extend terra of patent in their jurisdiction 10 3

may grant patent in their jurisdiction 10 4

may regulate the use of patents 10 5-10

INDEX TO LAWS PRIOR TO ACT OF 1836.

Reissue of Patent —

when allowed, and who may apply for 103 *3

Seal of United States —

to bo affixed to letters patent 80 *1

to bo affixed to letters patent 85 *1

264 INDEX TO PATENT LAWS.

BEfERENCES THUS (*) ARE TO SECTIONS ; OTHEBWISB, TO N0TE8.

States, powers of as to Patents— continued. r*^o* »«'•

wlion m.iy restrain n.se of patents 10 7

may tax patent property 10 8

action of, must be iu harmony with power of Congress 10 3
action of, inoperative, if conflicts with power of Con-
gress 10 6

WirnDRAWAi. OF Patevt Fee —

when aUowed. and in what proportion 120 '7

riglit of extended to foreij^ners 163 *12

right of prohibited as to applications subsequent to

March2. 1«01 201 *9

Witnesses in Mapters before Patent Office —

may bo compelled to testify 107 *1

penalty for refusing 107 *1

not required to attend more than forty miles from

where served 1 97 *l

not com{>olled to disclose any invention made or

owned by him 197 •!

entitled to foos for attendance 197 *1

Writ of Kiiror in Patent .\ctions —

lies as from judgmeuis in other cases 147 *17

lies in all cusis, without regard to sum or value in

controvor.ny 196

INDEX TO LAWS PRIOR TO ACT OF 1836.

BPBaricATioN or Patent —

what is set forth PO *2

what ia set f.rth 87 *3

States —

patents granted by, surrender of 92 ^7

Writ or KunoR in Patent Casks — ,

when will lie 101

f £B 1 1 ^''^

LOS AxNGi!:LES

UC SOUTHERN REGIONAL LIBRARY FACILITY

II 11 III III nil II mil III mill III nil

AA 000 760 086 9

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Full text of "Copyright and patent laws of the United States, 1790 to 1866. With notes of judicial decisions thereunder and forms and indexes"

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