T
L4lKc

UNIVERSITY

or CAI IFORNIA

LOS ANGELES

SCHOOL Ol- LAW
LIBRARY

LAW'S AMEIUCAN DIGEST:

BEING A DIGEST OF AMERICAN CASES RELATING TO
P.VTEt^TS FOR INVE^JTIJNS AND COPYRIGHTS,
FROM 1789 TO 1862.
Iiicliulini; numerous Muiiu^criiit I'lisi-s, Decision- on Appenis from Coinini-
siontTs of Patents, iind the Opinions of tlr Attorne\8-(teneriil of lU#
UniU'd SUU'3, under the Pntont nud Copyri-^ht Liiws ; and einbraiinK.
also, tlie American Cases in respect to Trade- Marks. Arranged in
Chronological order, with the year in which, and the name of the
Judge bj' whom, decided.

By STEPHEN D. LAW, Esq.,

Author (pf " Liiw's L'nlli-il StaU» Courts," Ac.
Larirc royal octavo voL, V26 pages. Hound In Law Sheep. I'rice 1^7.50.
r^ Tliis work has been before the public and the Courts since 181)2, and i
alrcaJv rcco.;ni7.ed as a standard volume- and authority. Th',' number of eases
di 'ostod U over Kight H ;iulred, of wliith over Seven' Hundred Itavc reference
lo^fatents. The volumes from which the eases dig.sted have been taken are
very numerous, and would cost many hundreds <>f dollars. The volume also
includes some Two Hundnd Manuscript ea.ses which have never belorc been
published.

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

New York.

COPYiilU IIT

AM)

PATENT LAWS

OK THE '

UNITED STATES,
1790 To 1866.

WITH

NOTES OF JlimCLVLDECLSMSTllEUEUNDER

AND

FORMS AND INDEXES.
By stephp:n d. law,

COL'N8KLLOR AT LAW,

AWTUOR vF "law's UMTBD 6TATK8 COURTS," "LAW's AMERICAN DIGEST OP PATBNT,

NP:W YORK:
riJIUSIIED BY THE AUTIIOIl,

AND BY

BAKER, V O O R U I S & COUF AN Y

No. 6G NA6SA0 Street.
18G6.

tnUrod accorjin:; to Act of Consross, in the ysar 1S60

By STEPHEN D. LAW,

111 tho CkTk's OUlcc of tlic District Court of the United Bt^ites for the Eaeleni Distritt

of New York.

L 4 1 1 5'c

\S6G

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.
Previous 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 authors 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 sui>erior
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 sccnring tlio copies of maps, diarts, and

7608^

4 PREFACE.

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

The Copyright act of 1Y90 remained unchanged
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, 1846, 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 nntil 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 cop}Tight 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 right 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 terms 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 tliiit which requires all a|)|tlica-
tions for patents to be subjected to a preliminary
examination, as to originality and novelty of inven-
tion, before a patent can issue, and which 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 difficulties, and
the exercise of such power of rejection may some-
times work injustice to the deserving inventor, it can
scarcely be questioned that it is highly useful, as
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 trifling 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 beneiicial to the community, as well as rewards
to ingenious men for the advantages derived by the
public from their exertions.

The copyright and patent sj'^stems 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 w^hich 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.

J^otes 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 niEFACE.

being a Dip:e8ted 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, 18G6.

PROVISION

CONSTITUTION OF THE UNITED STATES

AUTHOmZING THE GRANT OP

EXCLUSIVE RIGHTS TO AUTHORS A.\D 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 Congress, under this article and section, is limited
to authors and inventors only, and does nut embrace introducers, who
are not authors and inventors. Livingston v. Va)i Ingen, 9 Johns., 560,
566, 582.— Yates, Thompson, and Kent, JJ.; (Ct. Errors ;) N. Y., 1812.

2. But such clause does not prevent the several States from eiercis-
ing the power of securing to introducers of useful inventions (without
being the authors or inventors) the exclusive benelit of such inventions
for a limited period. Ibid., 500, 566, 5S2.

10 CONSTITUTIONAL PROVISION.

POWBB OP OONORESS, AND OT TUB 8TATB8 VKDBB.

3. Nor does it tnko n\v;iy from the Stales tltc power to etilarpe,
witliin tlieir jurisdirlion, tlic privilc^je, by extending the term of tho
patent or nioii(>|K»h-, beyond the term ullo\ve<i by tlie actn of t'uii(frc»H;
nor oi>erate as an exchi»ion of all State lejnslation to aid and protec-t
tho riphts olitaini-d under tho ptnoral ^overnnient, if the power is
exen-isod in liarnuiny willi, and in suborUinatiuu to, the superior power
of Con^'re^s. Jhitl., 5t>7, iisl.

4. 'llioiigh a State oaniK)t take away from an individual lii? patent,
yet if an nuihor or inventor, instead of resorlinjj to the act of Conjn'veH,
pliould apply to tho lo;.'islature of n State for an exchiMive rijrht to iiia
priKiuetion. tlicre is nothinp to hinder a State grantin^r il, though the
oiHTation of the grant would be conlined to tlic limits of tlio btatc.
Jtid.. :.«1.

5. The power of Conpiess is only to nseertain and define the rights
of property in tiie invention ; it d(xs not extend to regulating tlio use
of it. Tliis is exelusively of local eognizanee; sueh pro|>erty, like every
other species, must be used and enjoyed witliin eacii State, occordipg
to the laws of such State. Jh.d., S.sl.

0. The laws of any Slate, granting exelnsivo riglits and privilej^s in
resjiect to patents and inventions, are iiioiKiralive as against the laws
of tlie United States, witli wliicli they may come in collision. GtUkna
F. Og>lm, 9 Wheat, ISO— .Majwhalu Cli.'j. ; Snp. Ct, 1824.

7. If the aiillior's bc«ik or print contains niatlor injurious to tho
public morals or jioace, or if tho inventor's machine or other produc-
tion will have a pernicious clleit upon the public lualth or safety, a
c<jm|)Ctent authority retnains with the States to restrain tlieir u.se.
LiiingsUm v. Van Iiujen. 9 .Johns., 582. — Kknt, J.; N. Y , 1812.

8. Such spo<ies of proi>erty ia likewise suliject to Uixation, and to tho
payment of del>ts, as other persoual pro|)criy. Ibid, 1182.

y. The fact that a parly has a patent giving him tho exclusive right
to make, use, and sell a particular nicdiciiie. does not confer upon him
the right to practi.xe as a physii-ian, and u.se such medicine, jn anv par-
ticular State, except in c<.nforniity w ith the laws of such State. Jordan
V. Oiersrert «/ Poor, 1 Ohio. .MU. — Lank, J.; Ohio, 1831. Thomjtgon v.
i^'taaU, 1.". Wend., 305.— Xei.SOX, J.; N. Y., 18:{rt.

10. A i)arty has not netvs.'jnrily a right to use an invention in any
State, merely because he has u patent for it. Vannani v. T'uine, 1
Harrington, <".8. — ItoiiIssON, .1.; l)el., I.s33.

11. Wli< re V. h;iii invented a plan for txinstructing and drawing lot-
teri" s, and liad obtained a patent then for, luit there was a Stale law
jirohibiting lotteries, except under eiTtain conditions, which V. and his
as.woeiates had not ivmphed will), //-/</, that V. was not entitled to any
relief, by way <<f injunction or otherwi.se, for any alleged use of his
invention within such Slulv. Jbtd., CD.

I'.'. The i-ower o( Congress, an lo patents, is general, and it rests in
its sound discreion to say, when and for what length of time, and
under NOiat circumhti.uccii, B |>atent for au invention shall be granted.

coNsTiTnioNAi, ruovisiox.

rOWER OF C0N0KE.S8, AND OF THE STATES UNDER,

There is r.o reatrietion wliich limits its power to ennct, to cases wliere
the invention has not liccn known or used by the jjublic. All tlint is
rcqiiiriii is, that iIk- p;itonleo slioulil bo tlio inventor. Blanchard v.
S]>ra.jfM\ 3 Sumn.. '>ii. — 8r(JUY, .1.; Mass., 1839.

i;!. Tiio power of (.'onpre.'*8 to Ic ^rislale upon the subjcot of patents
is plenary; and as there is no restraint upon its exercise, there can be
uo liniitaiion to ti:e right to niodify at pleasure the laws resj.eetiDg
patents, so that tliey do not take away the ri^'lits of projicrty in exisl-
iup: patents. MVlnrg v. Kiivjaknid, 1 How., 200. — I3aldwi.\, J.; Sup.
Ct., \> ■[■:,.

1 \. It i? no obj etinn to the validity of the laws respcctinpr patents,
that such laws ar,- ri'trosiicclivo in ihcir oi)eration. Ibid., liOO.

15. Coi gress may j'nss an act wliicb shidl ad retrns]cctively. Such
an act is not necessarily unconstilntional. Though no State can impair
the ol'lifiations of a contract, this inhibition does not apply to the gen-
eral government. Bloomer v. StoUey, 5 McLean, 165. — McLean. J.;
Ohio, 18.^0.

II). A reservation in favor of assignees, in an act extending a patent,
will not make the act unconstitutional on the ground that Conj;ress can
only coi.fer privileges on inventors. The power to reserve rights and
]>rivilcgis to a.ssgnces is incidental to the geneial power conferred to
promote the pro,.;rcss of the useful arts. Blanchard Gun- Stock Turniinj
J-ac. v Warner, 1 Blatchf., 271, 2H\. — Nelson, J.; C'l., 184G.

IT. Congress has the constitutional right to conlcr a new and further
term on the pat ntec, and that even after the expiration of tlie first.
Banchard v. Ilayucs, i; West. Law Jour., 83. — Woodbury, J.; N. H.,
1848.

18. Alleged fraud and misrepresentation, in the passage of aif act of
Congress extending a patent, will not be presumed; but such an act
will be regarded by the courts as the law of the land, until it is re-
pealed. Gibson V. afford. 1 Blatchf.. o.'.l. — Nei..sox, J.; N. Y., 1850.

10. Under the lifih ame- dnient of the Constitution, declaring that
no person shall be deprived of life, lilicrty, or property, without due
process of law. Congress would have no right to pass an act depriving
purchasers of a patented anicle of tlie rigiit to use such article. Such
an act would not be rcgarde I as due process of law. Blooiuer v.
McQucuan., 11 How., 55.!. — Taney, Ch. J.; Sup. Ct., 1852.

20. Under the authority conferred by section 8th, article Ist, of the
Constitution, it does not follow that Congress may authorize an inventor
to recall rights which he has granted to others, or reinvest hiui with
rights of property, 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 projwrty. Evans
V. Eatoii, Pet. C. C, o3T. — AVasiiingiO-N', J.: Penn., IblG.

12 CONSTITUTIONAL PROVISION.

POWKH OF C0K0RBS8, AND OF TIUI STATU UNDER.

22. Congress has tho constitutionftl power to prant an extonsioD of
n patent oven after it has been onr« extended iinili-r section 18 of tho act
of 1><3(J. Bloomer v. Stolky, 5 Mclycan, 1C0-1G2.— McLean, J. ; Ohio,
lv-,0.

':.'. The |X)wer of Conpross was not exhausted in this respect by the
nr'i of 183G. A legislative act does not bind a subsequent lc(^8lalurc.
Jhi.l, ICl.

■J4. Coiig-resB may exercise its constitutional power, as to granting
riirlit^ to inventors, either bj special acts, or bj a general system.
J bid., ICl.

25. A private act of ronfrrcss, authorizing the issue of a patent to
an inventor, is to bo considered as enjrrafted on tlie general acts fur tho
promotion of the useful arts, and such a patent is i.ssued in pursuance
of Jx)th. Evans v. Eaton, 3 "Wheat., 518.— JIarshall, Ch. J. ; Sup.
Ct., 1818.

2fi. They are all statutes in jxtn materia, and all relate to the same
subject, and are to bo construed together. Bloomer r. AfcQuewan, 14
now., 5-19, 631.— Taney, Ch. J.; Sup. Ct., 1852.

.See also Diqest Pat. Cases, titles Congress; SfATtrrE* B. 1, 4.

ACTS OF COXGRESS

IS OrSPBCT TO

COPYRIGHTS.

>-><»><^

ACTS IN FORCE.

Act of 1819, Chap. 19.

" 1831, " 16.

" 1834, " 157.

" 1866, " 169.

Act of 1859, Chap. 2f
» 1861, " 37

" 1865, " iro

OBSOLETE ACTS.

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

Act of 1846, Chap. 178.

COPVninTTT LAWS.

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

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

An Act for the ciuNHiiMLTi'tiU'iit of li-urninir, l»y st-curitig
the cojties of in;i]»s, charts, ami l)ooks, to the authors
and propriftors of sucli coi>ies, during llie times there-
in mentioned :

Se<tion 1. Jic it eiuu'tt'd Inj the Senate and Ilou.<te of
Jl' j'Ti.sentiitiveii of tlir Zliit< d Sf(if> ••< <f Anien'ra hi Con-
ijnss assembled^ That from and after the i»:is>inLC (tf this
act, tlie author and authors of any map, eliart, hook or
books alrea<ly printt-d within tliese Unite<l States, heini;
a citizen or citizens thereof or resident within tl>e same,
liis or their executors, administrators or assiorns, who
liath or have not tran>-ferred to any otluT person tlic
copyrijjht of such map, diart, l)ook or hooks, share or
phares thereof; and any other ]» rson or persons, beii\g a
«iti/.(ii or cilizeiiH «»f these I'nited States, or residents
thcrtin, his or their executors, a<hninistrators or assigns,
who hath or have purchased or legally acquired the copy-
ii.:ht (*/) of any sucli map, chart, hook or books, in order
to print, reprint, publish, or vnul th^' sanu-, shall have the
Hole right and lihi-ity of printing, ri'j>rinting, puMishing,
and vending suth immj), chart, book or books, for the

COrVniCillT LAWS. 15

ACT OF 1700, CHAP. ITi, §§ 1, 2. OBSOLETE.

term of fourteen years from the recording the title there-
of in the clerk's office, as is hereinafter directed: Au<\
that (lie author and authors of any map, chart, book or
books already made and composc'l, and not printed or
published, or that shall liereafter be made and composed,
being a citizen or citizens of these United States, or resi-
dent therein, and his or their executors, administrators or
as>igns, shall have the solo right and liberty of printing,
rej)rinting, publishing and vending such map, chart,
book or books, for the like term of fourteen years from
the time of recording tlie title thereof in the 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
therein, the same exclusive right shall be continued to
him or them, his or their executors, administrators or
assigns, for thi' 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
tlte expiration of the first term of fourteen years afore-
said.

(a) The "copvriglit" recognized by tliis act, and which is intended
to bo protected, is presumed to be the right of property wliich an
anthor lias at common law, in his manuscript. Such protection is
ffiven as well to hooi<3 jiublished. as to manuscript copies. Whealun v.
Fctcis, 8 PeL, 061.— McLean, J.; Sup. Ct., 18:51.

Section 2. Aiid be it finiJicr exartcd, That if any
other person or ]>ersons, from and after the recording
the title of any map, chart, book or books, and publish-
ing the same as aforesaid, and w ithin the times limited
and granted by this act, shall ]>rint, reprint, pidilish, or
import, or cause to be printed, reprinted, published, or

K, COrYKIGIlT I,AWS.

OBSOLETE. ACT OF 1700, OBAP. 15, §g 2, 3,

i:i)pnrtcd from any foreign kingdom or state, any copy
or copies of such map, chart, book or books, without the
ronsiont of the author or i)roprictor thereof, first had and
obtained in writing, siijiiod in the presence of two or
in ire crcilil)lo witnesses; or, knowiiii; the same to be so
)>rintcd, reprinted, or imported, shall publish, sell, or ex-
pose to sale, or cause to be published, sold, or exposed
to sale, any copy of sueli map, chart, book or books,
without such consent first had and olitained in writiiii^
a-; aforesaid, then such offender or oflenders shall forfeit
all and every copy and copies of such map, chart, book
or books, anil all and every sheet and sheets, bein<jj part
cf the same, or either of them, to the author or proprietor
of such map, chart, book or books, who shall forthwith
• lestroy the same: And every such offemlcr and oflenders
sliall also forfeit and pay the sum of fifiy cents for every
sheet which shall be found in his or their jiosscssion,
either printed or printiuij, published, imported, or ex-
))osed to sale, contrary to the true inteut and meaning of
this act, the one mctiety 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 thcreot' to and for the use
of the I'liited States, to ])e recovered by action of debt
in any court of record in the United Slates, wherein the
same is cognizable. Pruvhled (ilirni/s. That sncli action
be commenced witliin one year after the cause of action
shall arise, ami not afterward.

Skctiox y, Aiiif l>e it fitrtlirr eniir(>d, That no person
shall be entitled to the benelil of this act, in cases where
any nuip, chart, book or books, hath or have been already
printe<l and published, unless he sh dl first deposit, an<l in
all other cases, unless he shall before publication deposit

ACT OP 1790, CHAP. 15, § 3. • OBSOLETE.

a print I'd copy of ihc title of such iimi), chart, Ixtok or
books, in tlic clerk's ollicc of the <listrict court where the
author or proprietor shall rcsidt? {'t) : And the clerk of
such court is hereby directed and required to record the
same forthwith, in a book to be kept by him for that
l)urp<)sc, in the words following (giving a copy thereof to
the saifl author or proprietor, under the seal of the court,
if he shall require the same.) "District of to

wit: JJe it reinenibcrcd, That on the day of

in the 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] iu con-
formity to the act of the Congress of the United States,
intituled, 'An act for the encouragement of learning, by
securing the coi)ies 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 pub-
lished 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 otBce, as directed bv this section. Ewer v. Com,
4 Wash., 490 — WASinNOTOX, J. ; Pa., 1824.

(i) 1. The provision of tliis section requiring the author to pubUph

13 COPYIilGIlT r AWa

ODSOLRTB. ACT OP 1790, CHAP. 15, §g 8-6.

t!.c tillo of his book, in n nowspiipor, is nurcly dirortorv. nnd consti-
tutes no pnrl <if the ospcntinl roqtiisiti-s for securing the cojivrigljt.
yuhoLs V. Eug'jks, 3 Day, 15S. — ("fUlAM; Ct., 1808.

2. TIk' piililicalioii in tlie iievv.-paixT is intended as lepal notice of
the ri>:lii.H scrureci to (lie nnlhnr; but is not nccossarj' wlicro actual
notice is bron>:ht liome to the party. J bid, 158.

3. The comiiticjn upon whieii the proprietor is to be entitled to the
benefit of the net cannot be extendeii to llie ivqni.«ilion contained ia
the la.«t sentence of that section, to pubh.><h a copy of tlie record of llio
ti;le. as preserilied therein. Etvcr v. Cuxe, 4 Wash., 490. — Wasuixq-
lO.v. J.; To.. 18-Jl.

4. Tne publication of a copy of such notice ia only necessary to
enable him to sue for tlio fortliturcs created by that section. Ibi±,
4J0.

Section 4. Ami he i( j'l/rt/ier c/uictcd. That the author
or proiirietor of any such iiiap, chart, book or books,
shall, wiiliiii .six nioiitlis after tlie piiblishinjr thereof,
deliver, or cause to be delivered to the Secretary of State
a copy of the same, to be pre.scrved in his office.

1. The requirement of this section, ns to delivering a copy of the
book to the Secretary of State, is merely directory, and constitutes no
part of the essentiiil requisites for securing a copyright. Tiio copy to
be delivered to the Secretary of State appears to be designed fi>r public
purposes, and has no connection with the copyright. Xicluila v, Jiiig-
gkf, 3 I>ay, loS.— ('cui.Vii ; Ct., iSiiS.

■J. Under this section a copy of a book may bo deposited w ith the
Department of SUite, after the expiration of six months from the time
of its publication if not done before, and will avail from the time of its
being deiwsiled. DaLoWs Case, 1 Opin , 0;!J. — Winr, Atty. (.Jon.;
18 •-'-'.

3. Where a work c>on8isted of a number of volumes, the delirery to
the S<'cretary of Stnte of the first volume of the work witliin six
months after its publication and of the ro«t of the volume.", before the
ofienco complained of is conimillod, or the action brought, is a suffl-
ciiiit compliance witli the law. I)uH>jht v. ApyUloita, 1 N. Y. Leg.
Obs., 191i.— TiioMrso.v, J.; N. Y., 1843.

Section .'5. AikI In i( further cnactol. That nothing in
this act shall be construed to extend to iirohiliii the im-
]>ortation or vending, reprint ini; or publi.shinjr, within the
L'nited Slates, of any map, chart, book or books, writ-

COPVUKiMT LAWS. 10

ACT or 1802, CHAP. 36. OBSOLETE.

ten, printed, or pnljlishcd by any person not n. citizen of
the Ignited States, in foreif;n parts or places without tlie
juris>liction of the United States.

Siccriox 0. A/id be it further enacted, Th:it any pcr.son
or persons who shall print or publish any manuscript,
without the consent and approbation of the author or
l)roprietor thereof, first liad and obtained as aforesaid (if
such author or proprietor be a citizen of, or resident of
these United Slates), shall be liable to sufll-r and \kx\ to
the said author or proprietor all damages occasioned by
such injury, to be recovered by a special acticm on the
case founded upon this act, in any court having cogni-
zance thereof

Section 7. And be it further enacted. That if any per-
son or persons shall be sue<l 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 Statutes at Large, ITl.

[Obsolete : Repealed by Act of 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 COPYRIGHT LAWS.

OBSOLETE. ACT Of 1802, CHAP. 36, § 1.

Section 1. Be it enacted b;/ the Senate and House of

Representatives of the Unit>'d StntvK of Annrira in Con-
gress asftf^nihlid. That every person who shall, from and
after tlie first day of January next, chiim to bt- the author
or proprietor of any maps, charts, hook or books, :ind
shall tlu'rcaftcr seek to obt.ain a copyright of the same
agreeable to the rules prescribed by law, before ho shall
be entiilcMl to the benefit of the act, intituled "An act
for the encouragement uf learning, by securing the copies
of maps, charts, and books, to the authors and proprie-
tors of such CO] lies, during the time therein mentiontMl,"
he shall, in addition {n) to the recjuisites enjoined in the
third an«l fourth sections of said act, if a book or books,
give information by causing the copy of the record,
which, by said act, he is required to publish in one or
more of the newspapers, to be inserted at full length in-
the title-page, or in the page immediately following the
title of every such book or l«x>ks; and if a map or chart
shall cause the following words to be impressed on the
face thereof, viz. : " Entered according to act of Con-
gress, the day <>f 18 [licre insert the date
when the same was deposited in the office] />y -1. /?. (f
the Stute of [here insert the author's or j>roprietor's
name and the State in which he resides].

(n) 1. By this s<*clion no pfTson c.in be entitlod to the bonoflt of tho
»ct of 1790. unlo:;!) ho sliall. in atltiillon to tlio rpqui-sitos oiijoiiioti in
Boctionn 3 and 4 of tliat act, cnuso a ropy of iho rcwrd, roquirod by
that net to 1)0 piibhshi'd, to Ikj iu.sortcd at full lonpth in tho titlc-p.ip'',
or on tli«? page imincli.iloly following tho title of llio Iwok. Ener v.
Coxf, A \Vu«h, 4I«t.— WASiiiXfiTov, J.; IV, IH'.M.

2. Tho jRTHon, tljcrcfMn', clainiinfr a copyright, bcfuro ho c.in be en-
titled to tho »>onc'lit^4 of tho net of 179(1, must jvorfTin tho roqiii.sites
requirc-d by tliis act. in additinn to ihoso pro»cribc<l iti v>ctions 3 and 4
of tho act of 1700, and must ixTform llio whole. Tijo act adiniu of no
otbor cooalructiun. Ibid., 491.

COPYHKWIT LAWS. 21

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

3. The mcnniiifr of the net is ns if it read, " tlie proprietor, before he
sliiill bo entitled lo tlie bcuelit of tlio net of 1790. shall cause a copy of
tlio record of the title to Ijc puhliHliod, and shall deliver a copy of Iho
book to the Secretary of Slate, as directed by the third and fourth sec-
tions of that act ; and shiill also cause a cojty of the .«aid record to bo
inserted at full len^rih in the titlo-papo." &c. Ibid., 401.

4. The act of I'-it'J rc(iuircs the ro<iuisile.'< enjnine(l in sections ?> and
•1 of tlio act of 1790, as to notice and the depo.^it of the book in the
State Department, to bo performed " in addition " to the one required
by this act of 1S02, before an author " shall be entitled to the benefit
of the lirst act." Wheaton v. Pckrs, 8 Pet., GG5. — McLean, J. ; Sup. Ct.,
1834.

Section 2. And he it further enacted^ That from and
after the first day of Jaimary.next, every person, being
a citizen of the United States or resident witiiin the same,
who shall invent and design, engrave, etch or work, or
from his own works and inventions, shall cause to he
designed and engraved, etched or worked, any historical
or other ))rint or prints, sliall have the sole right and
liberty of printing, reprinting, publishing, and vending
such print or prints, for the term of fourteen years from
the recording the title tiieieof in the clerk's office, as
prescribed by law lor maps, charts, book or books : Pro-
vided, he shall perform all the requisites, in relation to
such print or prints, as are directed in relation to ma|>s,
charts, bouk 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 duly engraved on such 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 design, but who shall also engrave, etch, or work the print
to which the right is claimed; or, who, ;ro/n his own works and inrtrn-
tions. sliall cause the print to be designed and engraved, etched, or
worked. Binns v. Woodruff, 4 Wash., 51. — WASin.M;ro\, .1.; Pa., IS.'l.

22 COPYRIGHT LAWS.

OB.soLKT^L Acr or 1802, cnxp. 3C, §g 2,3.

2. In tho first case, the inventor and dcaiprner is identified with the
enirravcr, or, in otlior words, llio entire wori<, or sulijoct of the copy-
riglit, ia exi-oiitcd by llip s;»rao pi.'rson. In the l;vtu-r, the inventiuu \h
designed or cmbodieil by tlie person in wliom tho rijrht is vestod.
nnd the form and completion of the work arc executed by anoilicr.
JbiiL, Jl.

3. Uut in neither case can a person claim a copyright for a niero in-
vention, tlio work of Ills imagination lockeil np in liis own mii:d. or
existing in a form not visible to otliers. Neitlior is lie so entitled, nn-
less lie lias not only invented, bnt also designed or represented tho
subject in some visiLilo form. Ibid, 61.

4. Where neither the design nor tlie general arrangement of a priii',
nor the part.s whicli coni|>osed it. was the invention of the pUiintilf,
but lie hail eniployid and p.iid tin.- artists who had composed and exe-
cuted it, /AW, that under this ecction )!<• ua- lu.t jniitlid to a copy-
right. J bid.. 53.

Section 3. And he it j'nrt/nr eiuicteih That if ai)y
print.silU'r or othrr i)Oi-.son wliatsoovi-r, iVum ami alU-r
tho said lirst day of January luxt, witliiii iIk- time lim-
ited by this act, shall eugfave, etch or work, as alore.'^aitl,
or in any other manner eo|»y or sell, or eaiise to be en-
graved, etched, eojtiL'd or sold, in tlie whole or in ]>art,
by varung, aiidiiig to, or diminishing from the m:iin
design, or sliall jjrint, reprint, or import for sale, or catiso
to be printed, reprinteil, or imported for s.ile, any siieh
print or printB, or any parts thereof, without the consent
of tho pr<»i)rietor or proprietors thereof, lirst had and
obtained, in writing, signetl by him or them respectively,
in the presence of two or ntore erediljle witnesses; or
knowing the same to bo so printed or reprinteil, without
the consi-nt of the proprietor or |)roprietors, shall publish,
sell, or expose to sale or otherwise, or in any other man-
ner dispose of any sneh print or prints, withotit such
consent first had nn<I obtained, ns aforesaid, then such
oir<"ii<ler or oOeuilers sliall forfeit the plate or plates on
which such print or prints are or shall be cojtied, and all

COPYRTGllT LAWS. 23

ACT OF 1802, CHAP. 3G, g§ 3, 4.

and every sheet or sheets (heiiiLT p:ii"t of or wheicoii such
print or prints are or sliall he eo])ie<l or printed) to the
])ro|>rietor or ])roprictors of sucli original print or print?,
who sliall lortliwith destroy the same; and fnrtlicr, that
every such oiVcn-ler or ofll-nders sliall forfeit one dollar
for every jirint which shall he found in his, her, or their
custody ; either printed, puhlished, or exj)Osed to sale, or
otherwise 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
to and for the use of the United States, to be recovered
in any court liaving competent jurisdiction thereof

Skitiox 4. Jud be it further enacted, 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 not legally acquired the copyright of
such m:ii>, chart, book or books, print or prints, and shall,
contrary to tlie true intent and meaning of this act, insert
therein or impress thereon that the same has bei-n en-
tei"ed according to act of Congress, or words jiurporting
the same, or purporting that the copyright thereof has
been acquired; every person so offending shall forfeit
and pay the sum of one hun<lred dollars, one moiety
thereof to the person who shall sue for the same, 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, having cognizance thereof.
Provided alirai/s, that in every case for forfeitures here-
inbefore given, the action be commenced within two
years from the time the cause of action may have arisen.

Approved April 29th, 1802.

2i copy RIGHT LWVS.

ACT or 1819, CIIAP. 10.

ACT OF 1810, CIIAPTEU 19.
3 Statltks at Large, 481

[ ThU Act at ill in Force.]

An act to extoiid the jurisdiction of tbe Circuit Courts

of the United Statt's to cases arising under the law

relaliug to patents [and copyrights].

Be it enacted^ bif the Senate and House of Ii»'present-
ativcs of the United States of America, in Congress
asscnibltd. That tlie Circuit Courts of the United States
sliall have ori'^inal 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 confirm-
ing to authors or inventors the exclusive right to their
respective writings, inventions, ami discoveries; and
upon any bill in e<pnty, tiled hy any party aggrieved
in any si:ch ra<es, shall have antlmrity to grant injuuc-
titjMs, according to the course and principles of courts of
equity, to prevent the vi"lation o(" tlie rights of any
authors or inventors, securecl to them by any laws of the
United States, on such terms an<l con<litiuns as the said
courts may deem fit an<l reasonable ('/) ; I'rovidtd, hoir-
ever. That from all jmlgments and decrees of any Circuit
Courts, reiideri'd in the premises, a writ of error or
appeal, as the cise may require, shall lie to the Su|)remo
Court of the United States, in the same manner, and
under the sanie rircumsiances, as is now provided by
law in other judgments and decrees of such Circuit
C jurts. {b)

(a) 1. Tlio Oct c( isll*, 8o far as it gnrc cognizance lo ih? courts of

ACT OF 1819, CHAP. 10. IS FOECK.

the Unitoil Statos in cases of copyrights, still remains in force, and is
the only law conferring equitable jurisdiction on these courts in Fuch
c;>ses; the ninth section of the act of 1831 protects nianuscrii)t3 only.
Stephens V. Gladding, 17 How.. 4.'):).— Cruris, J.; Sup. Ct.. 18.')4.

2. The equity jurisdiction of such courts, as to cop\'rij!;hts, does not,
extend to the adjudication of forfeitures: a decree, therefore, canuo*
ho entered for the jicnalties incurred for a violation of a copvrigh*.
Ibid., 45.''>.

3. Under the acts of 1700 and 1819, as to patents and copyrights,
the owners of cop_yright3 and patents do not have redress or relief ir
any cases where they could not before have had relief in some court,
either of equity or law. Pierponl v. Fmvle, 2 Wood. & Min., 27. —
WoODDURT, J.; Mass, 1840.

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

5. The jurisdiction of the Federal courts, under the acts of Congress
respecting copyrights, has not taken away or diminished the original
jurisdiction, which, before such act.'*, tho State courts 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.— Dueu, J.; N. Y., 1855.

6. Under the act of Congress, giving to the Circuit Courts cognizance
of cases arising under the laws of the United States, granting to au-
thors the exclusive right to their writings, the citizenship of the parties
litigant is immaterial. Keen^. v. WhenUey, 9 Amer. Law Reg., 44, 45. —
Cadwai.ladeu, J. ; Pa., 1860.

7. The act of 1819 concerns remedies, and not rights. Fbid., 45.

8. Where a wrong lias been committed in respect to a literary work,
but the bill does not ask for an injunction to protect the common law
rights of the 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.,
Il0,"lll.— McCoCN-, V. Chan.; N. Y., 1837.

See also Digest Pat. Cases, titles Actions, A; Eqnri', A.

(&) 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 copyrigiits. Act of 1861, chap. 37.
2

26 CUPYKIGIIT LAWS.

1.N rORCK. ACT or 1831, CHAP. 16, § 1.

A C T O F 1 8 :i 1 , C" II A V T E U 10.

4 Statitks at Large, 430.

[This Act still in Force.]

An Act to amend the several acts respecting copyrights.

Sectiox 1. Se it enacted by the Senate ai^d House of
Itcpresentativea of the United States of America in Con-
grexs assembled, That from and aller the passing of this
act, any person or persons, being a citizen or citizens of
the United States, or resident therein, who sliall 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 nhall invent, design, 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 (rt), shall have the solo right and liberty of
printing, rcjirinting, publishing, and vending [!>) such
book or books, map, chart, musical composition, print,
cut, or engraving, in whole or in j)art, for the term of
twenty-<?ight years from the time of recording the title
thereof, in the manner hereinafter directed, ('•)

(a) Who mat jiave, and What StajECT or PorTRioirr.

1. Undor ihin not n pcriton, to bo a " resident " «o na to l>o entitled
to a rop_vri|^ht, niUBt !«• a [>ertnancnt resident of tlio (Miintry. A |K>r-
Bon tfnipornnly renidinj^ hero, even tliou^'i lio 1>»h <iecinred his inten-
tion of beooniinj^ a citizen, mrinut tnko or hold a opvriiflit. Carey v.
Collier, 50 NiI.-h'h llej? , 2t;'.;.— Urrrs, J. ; N. Y., 18.J9.

2. Tho legal a<iNignvo of the author naay tnko out the copyright, and
it will make no dilTereooo whctlior ho bolda it as tnistco fur the benefit

ACT OP 1831, CriAP. 1(5, § 1. m FORCE.

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

3. Under this act no person cm obtain a copyright except authors
who are citizens or rcsiiionts of the United Slates, and proprietors un-
der derivations of title from such authors. Kcene v. WheatUij, 9 Amcr.
Law Uep., 45. — Cadwai.i.adku, J.; Pa, 18G0.

4. Tiie assi(rneo of a work composed by a non-resident alien cannot
obtain a copyright for it. Ibid, 45.

5. To constitute one an auliior, he mu.st, by liis own intellectual
labor applied to the materials of his composition, produce an arran;^e-
ment or compilation new in itself. Atwill v. Ferrett, 2 Blatchf, 46. —
Betts, J.; N. Y., 184(5.

G. One who gets others to compile a work or engrave a print is not
entitled to a copvright. Fierp/ynf v. Fowh\ 2 Wood, k Min., 4t). — Wood-
bury, J. ; Mass.", 1S46. Atwill V. Ferrett. 2 Blatchf. 4G.— Bktts, J.;
N. Y., 184G. Bfintt v. Brooks, MS.— Nei.sox, J. ; N. Y., IS61.

7. A book, witiiin the statute, need not i)e a volume made up of
many sheets bound together; it may be a single sheet, as the word.s
of a song, or tlio music accompanying it. dayton v. Stone, 2 Paine,
333, 391 — Thomi-son, .T. ; N. Y., 1828.

8. A nesvs])apor or price current cannot be considered a book within
the sense and meaning of the act of Congress. Ibid., 385.

9. A label used in the sale of any article is not a book, within tho
provisions of the statute rc.<5pL'cting copyrights. Coffeen v. Drunton, 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 bo re-
strained from copving it. Blunt v. Fatten, 2 Paine, 400, 401. — TaoMf-
60X, J. ; N. Y., 1828.

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.xjjense, or skill, or labor, or money. Emerson v. Da-
vies, :\ Story, "81.— -Story, J.; Mass., 1845.

12. Another may publish anotlier 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. Tlie author or compiler of a musical composition, made up of
dififerent parts copied from older compositions, without material change,
and put together into one tune with only slight alterations or addition!*,
is not entitled to a copvright for such therefor. Reed v. Carusi, 8 Law
Rep., 411.— Taney, 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 parts, the eflfort of his own mind. Ibid., 41 1.

28 COrYRlGIlT LAW?.

IS roucE. ACT or 1831, cuap. 16, § 1.

1 5. A musical composition, to be the subject of a copyriprbt, must be
pubstanliallv n new and orifjinnl wnrk, and not a copy of a piec«» nlrcndy
pPKluctil, with lulilitions and variutions, which a writer of music with
experience ami skill could readily make. JvUie v. Jaqua>, 1 lilatihf.,
C26.— Nki.'^ox, J.; N. Y., 1850.

IG The phrase ikai-jn, when used as a term of >»rt, means the giving
of a visible form to the conceptions of tiio mind ; or. in other wordn,
t.j the invention. Binn.^ v. U Vxx/ri//, 4 Wash., [.2.— Wasuisgtox, J. ;
Pa., 1821. . . . -

n. A reporter cannot have any copyripht in the written opinions or
the juilgea of a court; nor can th<' judges confer any such ri^'ht on the
rc|H.rter. Whctton v. Vtkrs. 8 I'et.. t;68.— McLeax, J. ; Sup. Ct., 18^4.
Litle V. GouUl, 2 Blatchf., 170.— Co.nkliso, J.; N. Y., 1851.

18. Suih decisions are the property of the public, and are not tho
subject of copyright. Little v. Gould, 2 Blatchf, 3G2.— Nei^OX, J. ;
N. v., 1H;)2.

19. But a reporter may have a copyright in his own marginal notes,
and in the nrgumenta of counsel, us arranged and prepared by him.
Gray v. lius.'-dl. 1 Story, 21.— Sronv, J.; Mass., lJ<3'.i.

20. A work m:iy be the subject of a copyright, if llie plan, arrange-
ment, and conil.iu-ition of its materials are mw, though the materials
may be drawn from many .•'ources, but are for tho lir^it time brought
together in such jilan, arrangement, aud combination. Gray v. i:u-'<seily
1 Story, n. — .Stokv, J.; Mass., 1^39. Einersony. Daviea, 3 Story, 7"8.
St<jUY, J. ; Ma.«8., 1S45.

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 word.s in whirh an
idc-A is eipres.scd, are a subject of projicrty ; and so is the ila.'^sillfation
of the subject (li,sou.«scd. :<(ory'a Ezra. v. Uolcoinbt; 4 McLean, 31G. —
McLkan, J.; Uhi.., 18-17.

S<^o aUo PiGKST I'AT. Cask-s titles Author; CorvRtOHT, P., C. ;
AuriiDcjMEXT; CuAttTS; Compilations; Dictioxaiues ; Reviews;

TRANbUATIuX.

(h) CoPTRifiiiT, What i.s.

1. The privilege of an author to an exclusive sale of his works, for a ^
limited num^jcr of years, nltliough a nionojHily. is not .so in llic o<lious
meaning of the term ; but is but a pn)|>or reward fur his lalxtr, niid to
whieh ho is a.s much entitled as to tho en-lusive enjoyment of any
other kind of property, lilunt v. I'atlen, 2 I'aino, 393.— TiioMitiOX, J. ;
N. v., 1828.

3. (^pyright Is an exclusive right to the multiplication of copies, for
the benellt of tho aulhor or his as!<i^ns. ili«c<inn<'<led from the plate, or
any other physicid existence. Strphcns v. CWy, li Mow., ;<;iO. — Nel-
son, J ; Sup. Ct., l«52.

3. Ik'fore publication, an author has the exclusive possession of tho
Idea* conlAiuo<l in his bo<jk, and the combination of words to represent

ACT OF 1831, CHAP. 10, §g 1, 2. IK FORCE.

them. But when ho ha."? publialicd hia book, and given his thouglit?,
sentiiuent."*, kiiowlciige, or information to the world, he can liavo no
lon^rcr an c.\clusivo possession in them. Stowe v. T/iomai, 5 Amor.
Law Keg., -JJS.— (".riku, J.; I'.i., IS.1.1.

4. AVlicn an antlior has sold iiia work, tlio only property which he
reserves to himself, or whicli tho law gives to him, is tlie e.Tclusivo
right to midiiiily the copies of that particular coml^iuation of ciiaracler
which o-xhibits to the eyes of anotiicr ihe ideas intended to be con-
veyed. This is what tlio law terin.s copy, or copyrigiit. IbiJ., 'J28.

6. An author's exclusive 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 an exchisivo right to hia conceptions.
Ibui., 228.

G. The case of MiUnr v. Taylor. 4 Burr, 311, has finally settled tho
question as to the nature of tho property wliioh an author has in his
works ; and it is, that, after publication, his pro^ierty consists in tho
"right of copy," which signilies "the solo right of printing, publish-
ing, and selling his literary composition or book ;" not that he baa
such a property in his original conceptions, that he alono can use them
in the composition of a new work, or clotho them in a different dress
by translation. Ibid., 230.

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

1. Congress, in passing tho copjTi^lit act, did not le^'islate in
reference to existing rights. Instead of sanctioning an existing right,
it created it. Whcaton v. Pders, S Pet., GCl. — McLea.V, 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, 6r,'2.

3. The author of a literary composition has, at common law, no ex-
clusive right to print and publish it. Dudley v. Mayhtw, 3 Corns., 12.
— Stkonu, J. ; N. Y., 1849.

4. Copyright, though formerly considered to bo founded on common
law. can now only be viewed as part of the statute law. Clayton v.
Stow, 2 Paine, 383.— Tuomi'SON, J.; N. Y., 182S.

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

See also Dhjkst Pat. Casl.s, title Copyright, A.

Sectiox 2. And he it farther enacted., That if, .tt the
expiration of tho a}uro>aiJ term of years, such author,
inventor, tlesigner, engraver, or any of them, wliere tho
work had been originally composed and made by mora

80 COPYRIGHT LAWS.

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

than one person, be still li\ inir, anti a citizen or citizens
of tlic United States, or resident therein, or, bein^j dead,
shall have left a widow, or child, or children, either or
all then liviiicr, the same exclusive riuht, shall be con-
tinued to such author, desipier, or ent^raver, or, if dead,
then to such widow and child, or children, for tlie I'ur-
ther term of fourteen years: Proi'Uhil, That the title of
the work so secured sliall be a second time recorded, and
all such other regulations as are herein required, in regard
to original copyrights, be complied with in respect to
Btich renewed copyright, and that within six months
before the expiration of the first term.

1. The extension under this act looks entirely to the nuthor and
his family. anJ not to assij,'neos. Pier}>ont v. J-'oulc, 2 Wood. &, Miu.,
42. — Wo iDiilRY, J. ; Mass.. 1S40.

2. An assignment of a "CMpyriK'lit" should not, by construction, bo
extended beyond the first terui, unless it seems to bo actually meant
by the uutljor to bo Irausferred forever, and including any future con-
tingency. Ibid., 44.

3. But where it is clear that the author intended to transfer all hia
interest in the co])yri^'iit, ut well in the extended us in the original
term, and Die assignmciii is not, in its terms, broad ouoiigh to cover
the second term, n court of equity will direct tho contract to be re-
formed, so as to eir.bruco all tho interest, Couen v. Iiank3, MS. — Xki.-
BO.v. J.; K. Y., lsti2.

4. .\n assignee ulono cannot take out tlio secoml or extended terra,
unless he has paid for it, clearly i-ontracKid f>>r it, and. in equity, rather
than by any technicid law, is to be protoctid in it. J'icrpiit v. Fault,
2 Wood. A Miu., 44. — WooUBfKY, J.; Mass., Is4'>.

6. Tlio taking out a second term of a copyright is not like the
strengthening of a defective title, but rather like a new interest cb-
lained uflor tlio general interest hu<l expired. Jbi'L, 40.

See also Diunsr 1'at. Ca-SIW; title Coi-vuKillT, K.

Section 3. And bi: it furtlunnactnl^ That in all cases
of renewal of copyright under this act, such author or
proprietor hhall, wilhiu two months from tho date of said
renewal, cause a copy of the record thereof to be pub-

ACT OP 1831, CUAP. IC, § 4. IS roiuK.

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

Sectiox 4. And be it further enacted. That no person
shall be entitled to the benefit of this act, unless he shall,
bi'tbrc publication, deposit a printed copy of the title of
8uch book, or books, map, chart, musical composition,
])! int, cut, or engraving, in the clerk's office of the Dis-
tiict Court of the district whert-in the author 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 words
following (giving a copy of the title, under the seal of
the court, to the said author or proprietor, whenever he
shall require the same) : "District of to wit: Be

it remembereJ, 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 author, (or proprietor, as the case may be,)
in confortnity with an act of Congress, entitled ' An act
to amend the several acts respecting copyrights,' C. D.,
C'erk 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, charts musical cotni)Osition, print, cut, or engraving,
shall, within three months fn;m 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 rOBCE. ACT OF 1831, CHAP. IC, §§ i, 6.

duty of the clerk of each District Court, at least once in
every year, to tninsiiiit a certified list of all such records
««f fupyriglit, irit'hurm;;; the titles so recordi-d, and the
«l:it«.'S of record, and also all the several copies of books
or other works deposited in his office according to this
:ict, to the Secretary of Slate, to be preserve^l in his
ortice. ((/)

Section 5. And be it further enacted^ That no j)er8on
phall be entitled to the benefit of this act, unless he shall
^ivc information of eoj)\riijht being secured, by causing
to be inserted in the several copies of eaeh ami every
edition published during the temi secured on the title-
page, or the page iniuiediately following, if it l>e a book,
«>r, if a map, ehart, musical conjposition, print, cut, or
engraving, by causing to be impressed on the face there-
of, or if a voliwne of maps, charts, music, or engravings,
upon the title or frontispiece thereof, the following words,
^ iz. : "Kntered according to act of Congress, in the year
, by A. B., in the clerk's office of the District
Court of ," (as the case may be.) (*/)

(a) Notes to §§4 and 5.

1. Tho not of If-.ll emhodit's the provisions of the nets of 1790 and
1802, mid in)jx>si's on ti>o imtsoiih i-l;iiiiiin|^ the |>rivilcf{i' of copyright
the K.-iinc (ltiiie'< and li.thilitic!* which nttoudcd tho ri^lit umiur thu prior
Matut.'M. Iktkiry. TayU-r, 2 UlnU-hf., 8.I.— Hetts, J.; N. Y, lS-18.

2. I'lidcr K<>r(ii>n.<< 4 (iml 5 of tliin net, tho doporiting tho titlc-p.ige
ill tho pr<i|K-r i-lorli'M oflii-o, ptilih>)iin^ u nulico accorilmir to tho net,
mi'l dohviriiig a (•*)py of tlio lxK)k. nro i-onditionH, tho jK'rforinanco of
\\hi<h i» <M*»nlinl lo tho titlo. Ibid, 84.

::. And li.o uoticv iuiihI \mi publixheil in the nuinnor H(>ccifled iu tho
act. Ili't., S4.

4. All Uio tiiinir* ro<piirod \>y iIicmo Fpctiunn nivist Ik? doiio to Heoure
a cojiyrivlit. JoLxf v. ././'/u^', l UlaUhf, Cio.— Nklson, J.; N. Y.,
ISjO. Siruir V. S,hurdl.r, 4 Hl.il( hf.— Nkij«)S-. J.; N. Y., lM.i7.

.'. I'ntil a\\ tho IhinjfH nqtiind hy thoMo norlionH nro don**, tlio copy,
right iH not "I- iin .1 Kilt )>y Uthin^ tho incipient Hlop, a right is ao>

ACT OF 1831, CHAP. 16, §g 5, G.

quired which chancery will protect, iintil the other acts may be done.
7WV V. Di-rhy, 5 McLean, ua'i — Mrl.KAN, J., Ohio, lf<r.2.

G. Where a work consists of a iiunilxT of volumes, the insertion of
the record on tlie pa^'p next following; the tille-p;igc of the_/frs< lohniie
of tlio work is a siillirienl cimipliance with tlie stat\Ue. Dtvcyht v.
-l;)p^to)i.v, 1 N. Y. Lcp. Obs., 198.— Thomi-son, J.; N. Y., IS-J.S.

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

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

9. After such titlc-pape has been deposited, the author can maintain
on action for an infringement or violation of his rijrht, even though the
work may not have been published, or tliC printed copy deposited.
Roberts \'. Mryers, 13 Mo Law Rep., 398.— Si'UAGUE, J.; 'Mas.«., 1860.
Contra, Kttne v. Whtatley, 1 Amer. Law Reg., 44. — Cadwalladeu, J.;
Pa., 1800.

1 0. The record from the clerk's office, made in the form prescribed
by section 4, or of the depositing of a title-page, is prima facie evidence
that a printed title was deposited. lioberis v. Meyers, 13 Mo. Law Rep.,
398.— tJpii.vGUE, J.; Mass., ISOO.

11. Where the title-page of a book was deposited in 1846, and tho
notice of tiio entry, inserted in the book, stated it to have been dcjiosit-
ed iu 1847, Ilebl. that tliC error created a fatal defect in the plaintiff's
title. linJcr V. Taylor, 2 Blatciif, 84.— Betts, J.; N. Y., 1848.

12. Even if the error arose from mistake, it will make no difference
as to tho result. Ibid., 84.

13. Under section 4 a person is not entitled to any benefit, under the
act, unless he deposits the tiile-pago before 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
iu the clerk's ollice, at the same time the title-page was deposited, IJttd,
that these facts warranted an inference of an actual publication of the
book prior to tlie date of such deposit. Ibid., i<r>

See also Dioest Pat. ("a.ses, title Copyhigiit, D. ; and notes to sec-
tion 3 of the act of 1790, and to .section 1 of the act of 1802.

Sbctiox 6. And be it furtJn^r enacted, Th.it if any
other person or jiersons, I'roin and after the rcrording
the title of any book or books, according to this act,
shall, within the term or terms herein liniite 1, print ((/),
piib!ish, or import, or oaii.se to he printed, published, or

84 COrYKir.HT LAWS.

ACT or 1631, CUAP. IC, g 6.

imported, any copy of such book or books (6), without the
consent of the p.Tson Icgiilly entitled to the copyright
thereof, first had and obtained in writinjj, signed in
presence of two or more credible witnesses, or shall,
knowing the same tT> be so printed or imported, puhlish,
sell, or expose to sale, or cause to be published, 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 Ins possession, either jirintdl, or printing, pub-
lished, imported, or exposed to sale, contrary to the
i;jtent of this act, the one moiety thereof to such legal
«>wniT of the copyright as aforesaid, and the other to the
use of the United States, to be recovered by action of
debt in any court having competent jurisdiction there-
of', (r)

(n) 1. The intent with wliicli a work is rcprintc<l cannot be taken
into consideration ; it in the not of reprinting that i.x prohibited by tlio
Miitule. SichoU V. JiugjU.i, 3 Day, 158. — Cluiam ; Ct., 1808. Story's
Kj.'rt V. H.-iimtbt, 4 Mclx-nn, 30'j' alO— McLean, .T. : Oliio, IfltT.

'i. It is f>f no consefiuoncv in wliat form the works of nnothi-r ore
used, whether it Ijo a simple rej>rint or by inC'>r|H)nttinK it in cotno
other work. If his co|iyn>{ht is viohited, ho i-.in maintain an nctioa
Ihorefor. Cray v. IluMrU. I .^tory, 19.— Stokv. J.; Mns.s . 1S39.

3. To cntitiu a piirly to an action for tlio inrrinjremcnt of a copyright,
it la not oecfssary tiiat the wliole or a greater part of liis work Hliotild
be t-iken. If so mucli is taken as to impair the vahie of the original,
or so that the bbors of the original aiitlior are siibsUintially nppropri-
ntcd, that \n oudloient in point of law to coii'-titutc u piracy. J-Utom v.
Marth, 2 Story, 115 — SroiiT, J.; Ma-H.. 1>H\.

A. The entirely of the copyright is tiie projwrty of tlio niithor; nnd
it Is DO defence tliat another \v.in nppro])riatcd only a part of 8i:ch prop*
ertj and not the wholo. IbiiL. IIO.

6 Nor do<-8 it neci-sHurily depend n{)on the quantity taken, whether
it is nn infringemont of a copyright or not. Jbid , 11 G Sloi-y'i Ex'rs
T. Ui-tcvmle, i McLean, 303, 310.— McJJtvs, J.; Ohio, 1847.

COPYUIGliT LAWS. 35

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

G. Intention Ciinnot bo taken into account in reference to an infrlnpc-
mciit. If a copyriplit hsis been invaded, wlietlier tlic parly know the
work was copyrighted or not, he is liable to the penaltj' for vi< lation.
MUMi V. Snoii'dei, 1 West. L. Jour., 240.— Betts, J.; N. Y., 1S43.

(b) ]. A book may in one jiart of it infrin^'o the copyright of another
work, and in other parts be no infringement ; in such a case, the
remedy will not be extended beyv)nd the injury. Story's Exrs. v. Holr
combe, 4 MeLean, .'{15 — .MtLKAN, J., Ohio, 1847.

2. A book, wi'.hin the meaning of the statute, does not include a
translation of a work. Siowe v. T/ioitias, 2 Amcr. Law Reg , 230. —
GuiKii, J.; Pa.. 1853.

3. A translation may be called a transcript or copy of the author's
thought or conception, but in no correct sense can it bo called a coi)y
of his book. Ibid., 231.

See also DuiKsx Pat. C.vses, title Inkui.vokme.vt. A.

(c) 1. An action on the case is the projx?r form of action to recover
damages for a violation of a cop^-right; treA-pats will not lie. Atwili v.
J-'errdi, 2 Blatchf, 48.— Betts. .J.; N. V., 1840.

2. The penalty of fifty cents per sheet imposed by this section is
incurred for every sheet found to liave been in the defendants' posses-
sion, or which thev had sold, or lield for side. Divight v. Ajypletons, 1
N. Y. Leg. Obs., 198.— Tuomi-son, J.; N. Y., 1843.

3. The penalty declared by this section can be adjudged onl.v for the
sheets found in the posses-ion of the defendant. Backus v. Gould, 7
How., 811.— McLean, J.; Sup. Ct., isiS.

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, liogers v. Jewett, 12 Mo. Law Hep., 340. — Cl'Ktis, J.;
Mass.. fsss.

5. The words "a copy of a book." found in section fi of tlie 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 7. And be it further enacted, That if any yx^r-
son or persons, after tlie recording of the title of any
print, cut, or engraving, map, chart (a), or musical com-
position, according to the provisions of this act, shall,
within the term or terms limited hy this act, engrave,
etcli, or work, sell, or copy, or caused to be engraved,
etched, worked, or sold, or copied, either on the whole,
or by varying, adding to, or diminisliing the main design,
with intent to evade the law ; or shall print or import

38 COPYRIGHT LAWS.

IN' rORCI. ACT OF 1831, CUAP. Itt, § 1.

fur sal*', or cause t«> bf print od or import od for sale, any
Hiu-h map, chart, musical comi»ositioii, print, cut, or cn-
Ljraving, or any parts thereof, without tlie consent of the
proprietor or proprietors of the copyright thereof, first
obtained in writing, eignud in the presence of two cred-
ilile witnesses ; or knowing the same to be printed or
imported without such consent, shall publish, sell, or
expose to sale, or in any manner dispose of any such
map, chart, musical composition, engraving, cut, or print
without 8u<h consent, as aforesaid; then such oUV-nder
or offenders shall forfeit the plate or plates on which such
map, chart, musical composition, engraving, cut, or print,
shall be copied, an<l al>o all and every sheet thereof so
copied or printed as aforesaid, to the proprietor or pro-
jirietors of the copyright thereof; and shall further for-
I'eit one <lollar for every sheet of such map, chart, musical
composition, print, cut, or engraving, which may be fixuul
in his or their possession, printed or jiublished, or ex-
posi'd to sale, contrary to the true intent and meaning
of this act; the one moiety thereof to the jtroprietor or
proprietors, and the other moiety to the use of the United
SUites, to be recovered in any court having competent
jurisdiction thereof. (A)

(a) 1. Thoug^h n party caiinot huvo n (x>j)yripht in tlio ori^iml cle-
metitH or tnMti'riuli* of IiIh cliiirt, ho linH u ri^^lit to tho rcsiill of his
ln>)orH and Hurvoyii in mnkiu(f it. Anotlier party m;iy rcoort to tho
oriK'inal luuloriulH of tho chvl, and Burvcy fur liimwlf, but lio cannot
•viiil liimm.lf, citliiT in whole or in jmrt, of the HiirvoyH of the formor.
Uinta V. I'atUn, 2 Piiinc. 3!i5, 300— THnyrsoN. J.; N. V., 1S28.

'2. Tho natural ohjc<tM from wiiith ciiart!* nro made, b«.in;r. however,
open to all, a copyn^rlil cannot huI>»i«1 in a chart, hh n j^i laral Hiihjcc-t,
but it inoy in nn indiviiluul work. unJ othora may Ijo restrained from
copyinx loich work. /'<«/., 4W, 401.

3. Hut n t\i(ht in nmh u Huhj<-ct it violated ouly when aoothcr uopies
from tho ihart of hini who has Kociirod tiio oitinriyht, and thereby
availvd hironclf of lii^ UIku and ikill. Ibid., 402.

COPYRIGnT LAWS. 87

ACT OP 1831, CtlAP. 16, g§ 7-9. ly FORCB.

4. Ill all .ouch cases, it is a proper question for a jury, whollier tho
one i-i n co|>y of the oilier or not ; if tliere was some small variance, it
wouM bo a proper subject tif iiicpiiry whedier tlio alteration was not
merely colorable. Ibid., tie.'.

'). Diit a subsequent compiler has a riplit to avail liimsclf of all prior
publications which are not cupyrij,'litod, and if his chart is compiled
from such publications, it is no iufringemeut, although it may agree
with another's chart. Ibid., \Q.\.

(■>. One person may publish a map of the same State or country for
which another has a copyri;:lit, by using the like means or materials,
ami tho like skill, labor, and expense, in its preparation. But he has
no right to pul»li.>;h a map, taken substantially an<i de.signedlv from tho
map of such other person, without any such exercise of skill, labor, or
e.ipcnse. h'merson v. Baiiei, '.i Story, 781. — Si'OUY, J.; lia.ss., 1845.

Sec also IUck.st Pat. C.\si;s, title Charts.

(b) 1. The 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 l)een sold, or olTercd for
salo (not tho number printed), and return a verdict for ono dollar for
each sheet so sold, or ofTored to be sold. Milkti v. Siwwden, 1 West.
Law Jour., 240.— Bkttj, J. ; N. Y., 184.1.

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

3. The engraving or preparation of plates, where the work is printed
from plates, may iiave been more than two years, but every priming
for salo would bo a new infraction of the right, and, if such printing
was within two years before suit brought, tho defendant is hable.
Ibid., 412.

4. The penalty is at the rate of one dollar for each sheet the 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.

Sectiox 8. Afid be it furthtr aiacted. That nothing
ill this act shall be construed to extend to prohibit the
iraport:itioti, or vending, printin<x, or publishing of any
map, chart, book, !iiu>io:il composition, print, or cnirra-
vitig, written, composed, or made by any per.son not
being a citizen of the United States, nor resident within
the jurisdiction thereof.

Skctiox 3. And be it further enacted, Tb ;t any pjr-

88 COPYRIGHT LAWS.

ACT Qr 1831, CUKP. 16, § 9.

son or persons who shall print or publish any manuscript
whatever without the consent of the author or le<^al
proprietor first ohtaine*! as aforcs:ii»l, (if such author or
jiroprictor be a citizen of the United States, or resi.Ient
therein), shall be liable to suflVr and pay to the author or
])roprietor all damages occasioned by such injury, to be
recovered bv 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
injunctions 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 publication of any manuscript
as aforesaid.

1. An aulljor, at common Inw, has a property in his manuscript, and
mnv olHain rcJress upainst any ono who dt'privea him of it, or by im-
properly obtaining a copy endeavors to realize a profit by its pul)lica-
tion. 'WhraUm v. Prtt-rf. 8 Pet, 057.— McLean', J.; Sup. Ct., I8:t4.

2. Notwithstaniiing the copyright by «tiitute, there remains in nn
author a common law title to liis works before publication. Jones v.
Th<>rue, 1 N. Y. Leg. < )b8 , 409.— M<-^'(JUN, V. Ch.; N. Y., 1SJ3.

3. At c-onimon law, indt<|>enduntly of the statute, the author of a
manii-Acript might obt.iin rcdresn iig;unst ono who had Hurrcptitiously
gained iK>«.HosHi<>n of it. liartlfUe v. Crittenden, 4 McLean, 301. —
M< Lkan, J.; Ohio, 1H17.

4. On general equiuiblo principle*, relief may also bo given, under
like circumntancc*, by a court of cliancery. ILul., 301.

b. Tlio uHe, by an author, of his manuscript for the purpo.io of in-
iitniction, is not an abandonment of it to the public. Nor is it an
•bnndonmet.t, to allow his pupils to take copies. Jbui.. 303.

G. Tliose hUo who have btvii i)crmiited to tako c)i)ics, have no right
to a UNO which wn* not in conU-mplation when the consent to tako
cojilcs was given. II'itL, 3(i3.

7. An author has a common law rij^ht in hi.'* manuscript until ho
relinquishes it by contract i>r Momo equivocal net. iiartUlle v. VritUn-
den, i McU.m. 3-'., 38 — McLk.vn, J.; Ohio, 1841*.

H. t^ucli right is nbo proUcU-d by seclioD 9 of tho copyright act of
1«3|. J bid, :tl

j». A •urrepllliou* publication of an Important part of a manuscript

ACT or 1831, CHAP. 16, §§ 9-11. IX KOK( B.

is equally within tho statute as if the manuscript was complete ; and
the whole of a niatiii.<icript need not bo printed. Ibid., 39, 40.

10. Tl)is section protects nianiiscripl.s .onl}'. Stephens v. Gladding,
17 How., -J.-i.^.— Clutis, .1.; Siij). Ct., 18:)4.

11. At common law an author lias a ri^'ht to his unpublislied manu-
scripts the same ns to any other property ho ma\' po.^^ses-? ; and this
act of tlio Hd of Kebniarv, 18:! I. gives him a remedy by injimction to
protect this right. LilUe v. Hall, 18 How., 170.— McLean, J.; Sup.
Ct. 1855.

12. Tho common law right of an author in his manuscript lias not
been taken away or abridcod by tiie statutes which have been passed
for tho protection of copyright. lis existence is prior to those statutes,
and independent of their provisions. Wvol'sey v. Judd, 4 Ducr, 385. —
Dler, J.; N. y., 1855.

13. Tlio act of 1831, section 9, giving redress for the unauthorized
printing or publi-<hing of manuscripts, operates in favor of a resident of
the United .States wlio has acquired tho proprietorship of an unp^ inted
literary composition from a non-resident alien author. Kcme v. Wheat-
ley, 9 Amer. Law Rep., 45. — C.vdwali-.vdkr, 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. Ibil., 45.

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

SfiCtioN 10. And he it further enacted, That, if any
person or persons sli.ill bo sued or pro.sccutc<l, 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 /urt/ier enacted, 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 wlio shall sue for the same,
and the other to the use of the United States, to be re-

40 COrYRir.IIT LAWS.

IN- roncK. ACT OP 1831, chap. 1G, g§ 11-15.

covered by action of debt, in any court of record having
cognizance thereof.

1. Tl»e pf^nalty imposed by lliis section, and ffiven "to the person
w l:o pIkiII ruc for llic j-amc," cannot be recovered in llic name of more
than one |)orson. Fcrrttt v. AtuiU, 1 IMalclif., 15-1, 155.— DKrrs, J. ;
N. Y., 1S4<;.

2. A (iccl:iration for such penalty in llic name of two persons is bad,
oil general domurrer. Ibid., ir>4.

.'i. Tiicrc i.s a inunifest differenco between pivinp o jwnalty to a com-
mon infoniKT, and iraix>siiig one for the )>fcuelit of the person agffrieved:
iji lliO latter case, the term person ma}' be regarded aa comprehending
every one aQo'-ted by the injury. Ibid, loO.

See al.so Ijioest Pat. C.\8K.s, title rKXALTiES, A.

Sectiox 12. Anif be it furthir cndcfrj, That, in all
recoveries under this act, either for damages, forfeitures,
or penalties, full costs shall be allowed thurcoii, any thing
in any f«irnu'r act to the contrary not wit list and in<^.

Sfxtion 13. And he it further ennrtedy That no action
<>T prosecution shall be maintained, in any case of for-
fuiture or penally luider this act, unless the same shall
have been coninicnccd within two years atUT the cause
of action sliall have arisen.

Skction 14. And bt it further enarteil, Tliit the "act
for tlu' cncouraLTcnu'iit of IrarniiiLT, by seourinLC the copies
of maps, chaitH, and books, to the authors and proprietors
of such copies during the times therein mi-ntioned,"
passed May thiitytir>t, one thous:ind hcven hundred and
ninety, and tlu; art Huitplcnu-ntary (liiMcto, jcisscd April
twenty-ninth, one tiiousand eight hundred .ind two, sliall
In', ainl the sanje are hereby, repealed: s:i\inLr, always,
huth rights as niuy have been obi.dned in ojnronnity to
their provisions.

Sk<tio.v 15. And l>f it fnrthir cnactnf, Th:it all and
several the provisions of this act, intended for the prolcc-

ACT OP 1831, CnAP. IG, § 16 IS rORCS.

tion and security of copyrights, and providing remedies,
penalties, and forfeitures, in cases of violation thereof,
shall he IicM and construed to extend to the hencfit of
the legal j)roprietor or projjiietors of each and eveiy
copyright heretofore obtained, according to law, during
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. And be it further (futc/ed, Tliat when-
ever a copyright lias 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 tiiem, such inventor, engraver,
or designer, shall continue to have the same exclusive
right to his book, chart, map, print, cut, or engraving,
with the benefit of eaclj and all the provisions of this act,
for the security thereof, for such additi<jnal period of
time as will, together with tlie time which shall have
elapsed from the first entry of such copyright, make up
the term of twenty-eight years, with tlie same right to
his wi(h)\v, child, or cliildren, to renew the copyright, at
the exjiiration 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 passage of this act, then his or
their heirs, executors and administrators, shall be entitled
to the like exclusive enjoyment of said cojiyright, wi:h
the benefit of each and all the provisions of this act for
the security thereof, for the period of twenty-e'ght years

42 COPYRIGHT LAWS.

ur roBCK. ACT or 1834, chap. 157, § l.

from the f\r>i entry of said copyrijjht, with the like privi-
lege of renewal to the widow, child, or children, of
author or authors, designer, inventor, or engraver, as is
provitled in relation to copyrights originally secured
under this act : Provkhnly 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 167.
4 Statutes at Labge, 728.

[This Act at ill in Forct.]

An Act supplementary to the act to amend the several
acts respecting copyrights.

Section 1. He it enacted htj the Saiate and House of
Jiepresentdtii'f.i oj' t/c Unittd Statin of A/m /•!< a in Con-
gress asseniUid, That all deeds or instruments in writing
for the transfer or assignment of copyrights, being proved
or acknowledged in sui-li manner as deeds for the convey-
ance of land are required 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 ; and every such deed or instru-
ment that hhall in any time hereafter be made and exe-
cuted, and wliich hhall not be proved or acknowledged
an«l reconled as aforesaid, wiihin sixty days after its exe-
cution, shall !»<• judgeil fraudulent and void against any
Bubsequenl pureliaser or mortgagee for valuable cousider-
atioQ wiibout notice.

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

1. An nssig^nmcnt of an interest in a copyrij^lit must bo in writinp,
to be valiil ami opcr.uivo; but an iigre>'»i>-7it to assign m.iy be by parol.
GouLt V. Bank<, s Woml.. 5t;5.— N'ki.shx, J. ; N. Y., 1832.

2. An a.ssij,'umeut of a " copyright" in general terms is to be referred
to what was then in existence, and not to any future contingency.
It should not be by construction extended beyond the first term, unless
it seems to be so actually meant by the author, and to include a future
contingencv. Piei-jfont v. Fowle, 2 Wood, i Min., 43-45. — Woodbuuy,
J.; Mass.. "l84G.

3. Otherwise, if the contract of sale or assignment uses language
looking beyond the exi.sting copyright, such as referring to all the in-
terest in the matter, or to the i)ianuscript or book itself, or using some
other expression more comprehensive than the word ''copyright."
Ibid, 45.

4. This statute prescribes only the instrument by which they may
bo assigned, and the mode of recording, but does not define what in-
terest may be assigned. Roberta v. Myers, 13 Mo. Law Rep., 401. —
Sl'K.\GL-K, J. ; Mass.. lSt;0.

5. There is no sufficient reason for preventing an author conveying
a distinct portion of his right. Jbid., 401.

6. "Where an assignment was of the exclusive right of acting and
representing a certain drama, vithin the United States except as to
certain cities, for the term of one year, Iluld, tliat it was valid under the
statute. Ibid., -400, 401.

7. CONTUA. — 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 Amcr. Law Ueg., 4G. — Cadw.vll.vder, J. ; Pa.,
I860.

8. A writing which is in form a transfer by an author of his exclu-
sive right for a designated ])ortion of tiie United Suites operates at Ino
only as a mere license, and is iueflbctual as an assigmnoiit. 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 be
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. &, Min., 510. — Woodbury, J. ;
Mass., 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 sueh
record operates as notice. L.tHe v. Hall, IS How., 171. — McLi:an, J.;
Sup. Ct., 1855.

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

44 COPY UK JUT LAWS.

OBSOLETE. ACT Of 1846, CHAP. 178, § 10.

forminj; the services herein authorized and required, as
he is entitled to for ]»erforming like services under e.\ist-
inij: laws of the United States.
Approved June 30th, 1834.

ACT OF 1840, CII AFTER 17 8.
9 Statutes at Lajcue, IOC.

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

Extract from an Act to establish the "Smithsonian Insti-
tution, fur the Increase and DitVusion of Kiiowledgo
among Mi-n."'

Section- 10. Amllo it furf/n r r/Kicfc, f^Th-.xi the author
or proprietor of any book, jiiap, chart, musical compo.-i-
lion, print, cut, or »iiL,'raving, for which a copyright shall
be secured umler the existing acts of Congress, or those
whifh shall lierf;d\er be enacti-d respecting copyrights^
hliall, within thne months fn»ni the publication of said
book, map, chart, musical composition, print, cut, or en-
graving, di'liver, or cause to be dclivi-red, one copy of
the same to the librarian of the Smithsonian Institution,
and one copy to the lihrarian of Congress Library, for
the use of the said libraries.
Approved August 10, 1846.

1 TliiM nrt iliil not make tlio d livery of oopioB of n work to the
litirnrinn of tlio .^milh».oiil;iii IiiHliltilioii, nnd to tho libnirian of tho
CmiKTOKM Ulirar., n prorcqiiixilo l<i a lillo tu ;i oojiyri^'lil for the work.
JfJli/- V. J(i/u'<, l m.-it-lif.. (;'J0-0J2.— .N'El.sox, J.; N. Y, IS.'.O.

2. Tho duty w;»h oiijoimd only upon lhoH<< who have iUri'a<ly ac-
quired tho ri^lit, and uo furfuilurv) wuii docbrud la como of a noa-com-
pluuicc. JIkL, 021.

COPYRIGni LAWS. 45

ACT OP 1856, CHAP. 169, IX FOnCE.

ACT OF 185G, CHAPTER 189.
11 Statutes at Large, 138.

[ litis Act still in Force]

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

JBe it enacted hy the Sefiate 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 publish the said composi-
tion, the sole right also to act, perform or represent the
san)c, or cause it to be acted, performed or represented,
on any stage or public place, during the whole period for
which the copyright 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, CHAP. 1G9.

Provided ut'vcrthelcsi*^ That nolhing luTcin enacted
Bhrill impair any right to act, perforin or reprt'Si-nt a dra-
matic comp6.siiion as aforesaid, Avhich 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
copyright 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, 18r)G.

1. The act of ISjG wns passed to give to tlic authors of dramatic
compositions the exclusive rijjht of acting and nprcsenlinj^, which thcj
did not enjoy under the previous statutea. Jiobttta v. JJiyers, 13 Mo.
Law Kep., 31)7. — SpnAOUE, J.; Mass., ISiiO.

2. It assumes the docirino that representation is not publication.
Tho prior acts secured to authors the excUisivc right of printing and
puljUcation ; and it \v;is only Ik?oiuso puljlicalion did not embrace act-
ing or representation that this act wan paused, superadding tliat ciclu-
■ivo right to those previmisly enjuyed. JbiJ., 3'.t7.

3. The previous acting or representing n jilay will not deprive tho
author of the right to afterward take out a cojiyright. Jbid., 3'J7.

4. .\n nssigneo of tho exclusive right of acting and representing a
drama in certain phices, may maintain an action in his own name, even
after a rcpn'St-ntation by liim, for an injiinclion to jirevent its being
represented by another within such places. Ibid, 400, lol.

6. And HU<-h action mar be maint:iiiieil although the author or as-
•igne« hnn only lilud his litlo-img<-, and has nut published the work or
play. Jbtd..A(il. (( oxTli A, ;»«'<. «.)

6. A h'gislativc enactment securing generally to literary proprietors
• copyright for n limite<| |«orirHl, but conUtining no spccinl provision as
to theatrical roprciicntalion. doon not, in tlie cuso of u dramatic liti'rarj
eomp-Jhition, in<'ludc tho nolo right of n'|)r«'senling it. Kf-ent v. Wheat-
ley. 'i .\mor Law ll/'g., -it. — C vi»wai.I,\I)KIi, .1.; I'n.. iKiiO.

7. Tho only oi-l which nfTurds reilross for iinauthorired theatrical
rrprc«-nUiliun< ia tin- a^t of IHth August, H.'iG; but this only ap|)liea
to C4MJS in which copyright is effectually secured under the act of 1831.
Jbid.. 4'..

8. But under thia act, an assignee of a dramatic composition cinnot
maintain an action for its unaulliori/«d re|)re.t -ntation by others, unless
ho bna performed <iU the acts rcfpiired by law to secure a copyright,
Including tlic depo.til of n, prinUd copy. Ibid., 40, 40.

ACT OP 1859, CHAP. 22, §§ 6, 8. IN roRCE.

ACT OF 1859, CHAPTER 22.
11 Statutes at Lakge, 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, 1846, is hereby repealed.

Section 8. And be it further enacted, That all books,
maps, charts, and other publications of every nature
whatever, heretofore deposited in the Department of
St.ate, 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 Department of the Interior, which is
licreby 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 COPYRIGHT LAWS.

nr FOBCB. ACT or 1861, chap. 37.

ACT OF 1801, CHAPTER 37.

12 Statutes at Large, 130.

[This Art ftill in Force.]

An Act to cxtpn<l the right of appeal from ihc decivions

of circuit courts to thu iSupri'ine Court of the United

States.

Be it enacted b>/ the Senate and House of Jitpresent-
atives of the United States of Anurica in Comjirss
asstnihltd. That from all judgments and decrees of any
circuit court rendered in any action, suit, controversy,
or case, at law or in equity, arisiuiij 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 case may require, shall lie,
at the instaix-e of cither party, to the Supremo Court of
the United States, in the same manner and under the
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, IHOI.

ACT OF 1 N <•.:,, (11 Al'TKK 120.

13 STATirTKS AT Laiujk, 540.
[Thi» Aft ttill in Forrf.]
An Act Hupplomental t<. an act entitled " An act to amend
the several acts rospecting copyright," apjiroved Feb-
ruary 3d, 1H31, and to the acts in addition thereto and
amendment theret)f.

ACT or 1865, CHAP. 126, §§ 1-4, ix roHCB.

Section 1. Be it ennotrd by the Senate and Ilonse of
Representatives of the United States of Atncrica in Con-
gress assembled. That the provisions of said acts shall ex-
tend to and include photographs and negatives thereof
whicli 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 copyright 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. Ajid 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,
2

80 COPYRIGHT LAWS.

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

together with all maps, prints, or other engravings
belonging thereto ; and sliall include a copy of any
second or subseqrtcnt c<lition which shall be pul)li^hed
■with any addition3, whether the first edition of such
book shall have been published before or after the pa.ss-
ing of this act : J'rovidcdj hoxcever. 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, 1865.

FORMS

UNDER THE COPYRIGHT ACTS.

1. Agreemekt to sell Man'cscript axd Coptrigiit of boob:.

2. AGRKEUEXT to enlarge a second EDITION' OP A BOOK.

3. Assignment of Copyright for original term.

4. Assignment of Copyright for origi.val and renewed teems.
6. License to print one edition of a book.

6. Assignment of right to perform Dbamatic Composition for

SPBCIFEED time AND PLACES.

1. Agreement to sell the Manuscript and Copt-
right OF A BOOK.

Agreement, made and entered into tliis first day of January,
1860, by and between James Sinitli, of Poufjhkeep.sie, State of
New York, of tlie one part, and Cliarles Scribner, of New York
City. State aforesaid, of the otlier part:

W/iereiis, the said James Smitii has composed or compiled a
■work called the '"Flowers of Poesy,"

Now this ajireement witne>seth tliat the said party of the first
part, fur and in consideration of the sum of five hundred dollars,
to be paid as hereinafter mentioned, and other good and valu-
able considerations herein named, has agreed to sell, and does
hereby sell, to the said party of the second part, his heirs, ex-
ecutors, administrators, and assigns, the manuscript copy of the
said book, including a full and complete Iiuk-x thereto. And
the said party of the first part also agrees to examine and cor-
rect the proof-sheets of said work as they shall be furnished by
said party of the second i>art.

The said party of the second part, for himself his heirs, exec-
utors, administrators, and assigns, agrees to pay to the said
party of the first part, his exectitors, 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

66 FORMS UNDER THE COPYRIGHT ACTS.

AOREElfENT TO ENLARGE X SECOND EDITION OF A BOOK.

balance when the proof-sheets shall all have been examined and
corrected and fiirnishod to tlie printer. Paid party of the sec-
ond part also njrroes to liirnisli tlio whole of Niid proof-sheets to
suid j)arty of the tirst part witliin three months after the deliv-
ery of the numuscript ; and further agrees to furnish and deliver
to" said party of the tirst i)art, free of cost, tilU-en bound cojiies
of said work within three months after he, said party of the tirst
part, shall have completed his labors on said work.

Tlie said i)arty of the second part, his heirs and assigns, are
to have the exclusive rit'ht to take out and own the coj.yrijrht
of sucli work, and any renewals of such copyright authorized
by. law.

It is further aprocd, that in case ."^nid book sliall not make
three hundred pajres of the size and style of the pages of a work
known as " I'earls of Poetry," then and in such case said party
of the first part i^i to receive, and the said jtarty of the second
part is to jiay, a sum bearin;,' sudi i)ro|iortioii to the sum of five
hundred dollars as the number of pa^'es furnished bears to three
hundred ; but in case the said work shall contain more than
three hundred pages, the sum to bo paid therefor shall not be
increased.

In witness whereof, the said parties have hereunto set their

hands and seals, the day and year first above written.
Sealed and delivered > JAMICS SMITH. [l. 9.]

in presence of \ CHAKLES SClilBNER. [l. b.]

John Smith,

Jamej Bkow.v. : ** c«" :

: I.NT. «KT.
•Til Mr.

2. AcnEEMEXT TO EXLAROE A SnCO.NU EniTION OF ▲
UOOK, AND COUKECT PKOOK OF TIIK bAME,

This npreemcnt, made the eighth day of January, IWn, by
and between .lames Smith, of Poiighkcepsie, New York, of tiio
firnt part, and Chorles Scribncr, of New York City, of the sec-
ond part, witii<.'H-.('th :

That tin' H.'iiil .lamcH Smith, for and in consi(K'ration of tliree
huntlred dollars, imd otlier consideration herein named, agrees
to examine, correct, and i-rdarge tlio work known as "Flowers
of I'o<j«y." to furnith additional manuscript matter for the sec-
ond edition of the work, and to enlarge the liidex and uiake it
full aud cuinplcto.

FORMS UNDER THE COPYRIGHT ACT3. 57

ASaiONUENT OF COPYRIOUT FOB OEIGIXAL TERM.

It is understood and agreed tliat the new edition of the work
shall be of the same sized pape as the present work, and contain
an eciual amount of matter on each pajre, and that the additional
matter furnished shall enlarge the work not less than one liun-
dred pages, and shall be furnished to the said Charles Scrihner
at not less than twenty pages per day (one hundred and twenty
pages per week), commencing 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 otV, 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.

Tlie saitl Charles Scribner is to take out and secure a copy-
right of said work ; and tlie 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 assigmnent of all hia
right and title and interest in and to the said work.

In witness whereof, the said parties have hereunto set their
bauds and seals, the day and year above written.

JAMES SMITH. [l. s.]

In presence of CHARLES SCRIBNER. [i,. s.j

Joux Smith,
James Brown. : 5 cest

: INT. KBV. 1^

STAMP. :

3, ASSIGXMENT OF COPTRIGHT FOR ORIGIX.Vi TERM,

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

Whereds, the said James Smith has written and compiled a
»)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. 1S59 :
3*

58 FORMS UNDER THE COPYRIGHT ACTS.

ASSiQsuzsr or coptrioht fob oriqinal txbm.

Now this iudenture witnesseth, that the naid James Smith,
for and in consideration of tlie sum of one thousand dollars, to
him in hand jmid by the said Ciiarlos Scribner. tlie receipt
whereof is hereby acknowledged, has bargained, sidd, and as-
pi;:ned, and by these presents does bargain, sell, and assign,
unto tlie said Cliarles SiTibner, all the said book, and all liis
copyrigiit, title, interest. j)roperty, claim, and demand of, in,
and to the same, to have and to h<;ld tlie said book, copyright,
and all tiie jirotit, benetit, and advantage that sIliII or may arise,
by and from iirinting. reprinting, i>ul>Iishiiig, and vending the
same: Provided, nevertheless, and these presents are upon this
express condition, that the number of copies to be printed ou
the first, and each and every other edition or impression of the
said book, shall not exceed one thousand ; and that the said
Charles Scribner shall and will pay unto the said James Smith
tlie further sum and sums of one hundred didlars 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, for and towards a furtlier reward and
satisfaction to the said .James Smith, tor his writing and com-
jiiliiig tiie same. Tlie said ])ayiiients sliall be made bel'ore the
jiublication of the said several impressions or editions (after tlio
lirst) and sale of the same, or any part thereof, by the said
Charles Scribner, or by any otlier person or persons, by, for, or
under him. And the said Charles Scribner doth covenant,
l)romi>«e, and agree, to and with tlie said James Smitli, that he,
tlie said Charles Scribner, shall and will pay, or cause to be
paid, to the said James Smith, the said respective sum and sums
of one liundred dollars, at and u|>on the reprinting, and before
the publication and sale of the saiil second and every other
future atnl further edition and impression th.it shall and m.ay bo
made of the saitl book, according to the proviso aforesaid, and
the true intent and meaning of these presents. And to the ful-
filment of the covenants herein contained, the jiarties bind their
rctpective executors, administrators, and assigns, as well as
thein»elves.

In witncHd whereof, the said parties liave hereunto set their
liands and beals, the day and year first above written.
Sealed and delivered I J.VMES SMITH. [l. b.1

in presence of ( CHARLES SCRIBNER. [l. b.]

JoMS .'^MITIt,

Jamw IJuow.v.

FORMS UNDER THE COPYRIGHT ACTS. 69

▲ssigxuext or copyright fob oqioixal and rekewed terms.

State of New York, }

City and County of New York. ) **"

On this first day of January, I860, personally appearcl James

Smith and Ciiark-s Sciibncr, to me known to be the individnals

described in and who executed the fore;!:oing instrum-enl, and

severally acknowledijed that they executed the same for the

purposes therein mentioned.

JAMES BROWN,

: 5 CBXT : Notary Public.

: INT. RKv. :

BTA>II>.

4. Assignment of Copyright fou original and
renewed terms.

Indenture, mnde tliis first day of May, 1864, between Jainen
Smith, of Pouijhkeepsie, State of New York, of the one part,
and Cliarles S';ribner. of the City and State of New York.

Whereas, tne said James Smith has written and composed a
book, entitled ''Flov ers of Poesy,"

Now this indenture witnesseth, that the said James Smith,
for and in consideration of tlie sum of five hundred dollars, to
him in hand ])aid by said Charles Scribner. the receipt of which
is hereby acknowledged, has bargained, sold, and a^signed, and
by these presents does bargain, sell, and assign unto the said
Charles Soribner, his heirs, e.vecutors, administrators, and as-
signs, all the said book, and the manuscript thereof, and all his
right, 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 liad. or secureu, or taken, in respect to said book or
manuscript, under and by virtue of any acts of Congres.s, with
any and all profit, bent-tit, and advant.ige that sliall or may
arise by or from printing, publishing, or vending the same,
during the original or renewed terms of any sucli copyriglit.
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 .'is they shall be furnished, and
to make and complete a full and correct Index therefor, as soon
as may be after all the signatures of the text shall be furnished
for that purpose.

60 FORMS UNDER THK COPYRIGHT ACTS.

LICENSS TO PRIST OXK EDITIOJI OF A BOOK.

And tlie said Chnrlcs Scribner, for himself, his heirs, ex«>cu-
turs, iKlministrators. and as,sipns, covenants and ai^rces to fur-
nish anil dilivcr, free of cost, to said James Smith, twenty-tive
hound copies of said work, within three inoaths after tlie said
Index sliall (»r may be completed.

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

in presence of \ CHARLES 8CKIBXER. [l. 8.]

John Dok,
RiciiAitD Roe.

Acknowledgment, as in No. 3.

5. LirESSE TO rRI.NT ONE EDITION OF A BOOK.

Indenture, made this first day of January. ISHO, by and be-
tween James Smitli, of I'oup'.ikeeiisie. New York, of the first
pan, and Charles Scribner, of the City of New York, State
ttfores;iid, of the second part.

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

Now this indenture witriesseth, that the said James Smith,
foi the consideration hereinafter expressed, does hereby anthor-
i/e and allow the said Charles Scribner to firint. publish, and
(M?ll au edititin of one thousand coi)ies of said work, the said
JaiiieM .Smith hereby reserving to himself the general co|>yright
in H.iid work.

And the said James Smith, in consideration of the payments
lic'eitrnftfr agreed and covettanted to bo made by said Charles
Scribner, tlotli hereby covenant and agree, to and with the said
Charles .Scribner, that he will furnish to the |)rinter, to be em-
jdoyed by him, fair copy of the »ai<i work, and will superintend
the printing, and correct the i»r<»ofs thereof in the usual man-
ner; and that he will take out of the clerk's otficc of the Dis-
trict Ciiurt of the I'nited .Slates for the Southern District of
New York the usual evidenees of cojiyright, for the protection
of said work, ond will not authorize any person to print, pub-
lish, or sell, and will not print, publish, or sell himself, any
other copies until the whole of said one thousand copies have
been dispotwcl <>( by sai<I (,'harles .Scribner; I'roviiled, said one
thousand copies arc sold within live years from the duto hereof.

FUR.M.S L.NDEli THE COrYIUGHT ACTS. CI

AS8I0NUENT OF RIGHT TO PERFORM DRAMATIC COMPOSITIOIf.

And the said Charles Scribnor. in consideration of tlie afore-
said autliority and a;,'ri'ciiiont, does liert-by c(jvt.'nant and af^roe,
to and witli said Jaiiit-'s Sinitii, tliat lie will i)ay liini, tliu said
James Sinitii, the snm of twenty cents for eacli and every coi)y
of the said one thousand oopic-s, jjayable semi-annually, as fast
as the said copies shall be sold or otherwise disposed ot\ ho
rendering to the said James Smith an account of sales of said
work, at the expiration of six months from the day of the first
publication, until the whole shall be sold, and that he 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 the
aforesaid authority and agreement, does further covenant and
agree, to and with said James Sniith, that he will not print,
publish, or sell any more than tlie said one thousand copies, un-
til autlutrized by said James Smitli, or his legal representatives,
in writing; it being umlc-rstood that the license herein contained
extends oidy to one edition of tlie number above specified.

In witness whereof, the said parties have hereunto set their
hands and seals, the day and year lirst above written.
Sealed and delivered ( JAMES SMITH. [l. e.]

in presence of ] CHAKLES SCKIBNER. [l. s.j

John Smitu,
James Buowx.

Acknowledgment, as in Xo. .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 Bourcicault. of tlie City and County of
New York, have sold, assigned, transferred and set over, and by
these presents do hereby sell, assign, transfer and set over, unto
George Roberts, of the State of Connecticut, for the term of
one year from the date hereof, the right, privilege, and license
of acting, performing and reproj?enting, an<l of jiermitting to be
acted, performed and represented, my play in tive acts entitled

62 FORMS UNDER THE COPYRIGHT ACTS.

ASSiGSMBirr or right to perform dramatic composition.

'The Octoroon, or Life in Lonisinna," in all cities in the United
Slates and Ciiiiadas. oxceptinp, however, the cities of Boston,
New York, I*liilii(k'li»hi;i, Charleston, Mobile, and Now Orleans.
To have and to Ik-UI the same to said Cloor^'o Roberts, his exec-
utors and administrators, together with all the ri^rhts and privi-
Kges pranted and secured to me under the acts of Congress for
the i>rotection of my copyright of said play for the period and
places aforesaid. Said sum of one thousand dollars to be paid
as follow.s, to wit: si.x huiidrod and tifty dollars at the date of
these presents and delivery of the manuscript of said pluy to
Baid Roberts; the further sum of one hundred and tifty dollars
on the llt'teeiith day of February next, and the further sum of
two hundred dollars on tlie 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 eif the license to perform and represent .said 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 tijerefor towards the two payments above mentioned to be
made on the fifteenth day of February and thirtieth day of
March next by said lioberts 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 ami fil'tv-nine.

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

L. Pitkin,
■\Vm. Dixet.

Acknowlodgtnont, aa in No. 3.

This MsignmoDt held \aM in Roberta v. Meytn, 18 Ma Law Bop.,

39C.— SriiAQUE, J.; Mass., 18G0.

INDEX

Beferences thus (*) ar« tu sections ; otherwise, to notes.

Actions i>j respect to Copyuigiits- '•*'=' "'■

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

reilress or relief not extended to new cases 25 3

injunctions allowed in equity suits 24

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

equity jurisdiction does not e-vtend to forfeitures. .. . 25 2

when injunction not a.sked for, redress is at law. ... 25 6

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 39 *10

full costs allowed in 40 *12

for forfeitures and penalties, when to be brought ... 40 *I3

appeals, or writ of error in 48

for printing copy of book 33 *6

forfeiture and penalty in such case 34 *$

penalty, extent of, recoverable 35 2, 3

penalt}', when not incurred 35 c i

in what court such action brought 34 '6

INDEX TO OBSOLETE LAWS.

AoTioxs IN respect to Copyrights —

for printing map, <tc., without consent 16 *2

recovery therein and for whose benefit 16 *2

where 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 *i

where may be recovered 23 *3

for markinj:; hooks, &c., as copyrighted when not so. 23 *t

penalty therefor, and who entitled to 23 *4

04 INDEX TO COPY RIGHT LAWS.

RCrSREKCBS THUS (*) ARB TO BECTIOKS ; OTHERWISE, TO NOTES.

Actions ix respect to ropVRiouTS^-continiied. «"*«■ *»•

on the case, propor form to recover damages 35 c I

for engraving map, Ac 36 *i

forfeiture and peu.ilty in such cases 36 •?

penalty on each slieet sold or oll'erod for sale 37 6 1

penalty on each sheet printed for salo 37 6 4

penally rei-overable for infractions within two years. 37 2

in what court to be brought 36 •T

for printing manuscript without consent 38 *9

damages in such rtise 38 ♦D

recoverable in action on the ca.se 38 *0

in what court to be brought 33 *9

redress in such case at common law 38 3

relief may also l)e had in erpiity .'JS 4

whole of manuscript need not be printed 38 9

for falsely marking book a.s copyrighted 39 •! 1

penally for so doing 39 ♦ll

in what court ni-overable 40 *11

for performing dramatic composition 45

damages for so doing 45

in what court recoverable 45

assignee may m.iinUin such action 46 4

maintainable when title-page d(j)Osited 46 6

mainiaiuabio when title-page dejKj.sitcd 33 9

maintainable only aft^^r copyright complete 46 8

Al'PEAIJj TU SlI'KKMK ('OUItT

he from all judgments and decrees, without regard to

amount in eontrover.sy 48

ASSIO.VME.VT or ( OHVIUiJllTS —

miiNt bo in writing 42 •!

agreement to assign need not be 43 1

must be proved and aiknowlcdgod 42 *l

to bo roojrded, where and when 43 •!

INDKX TO OBSOLKTK LAWS.

Actions in rk-spkct Tt) rorYRicjiiTa —

where may b<' reor)vcrod 23 ^4

for forrcitur<-i«, when to be commennHl 23 *4

general insuc pl<-ndable in 19 ♦7

nplM-altt or wni of error in 24

ArPKALH 10 StPKKMK CofRT —

from Judgments and dvcreea of Circuit Courts 24

Book, Coptrioiit or —

who may »c<]iiire 14 •I

bow acquiicd IC *3

INDEX TO COPYRIGHT LAWS. 65

EEFERENCHfl THUS (*) ARB TO SECTIONS ; OTHERWISE, TO NOTES.

Book —

who raaj' have copyright of 26

INDEX TO OBSOLETE LAWS.

Book, Coptright or —

how acquired '^

BEF.

ASSSIONMENT OP CoPYRiGiiTS^ontinued. ^^°'^

failure to record, elVect of 42 1

not recorded, valid between the parties 43 10

fees for recording 4.i 2

generally lias relerence to first term 43 2

when will cover renewal term 43 3

a portion of the copyright may be assigned 43 4, 5

query ? whether tliia can bo'dono 43 7,8

AirrHuR —

who is • 27 5

citizen or resident, may have copyright 26 1

only such cau 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 23 3

only right to multiply copies 29 4, 6

his rigiit not an odious monopoly 28 1

when right of renewal secured to 29

conditions of renewal 29 2,3

♦1

what is, within the statute 27 7

what is, under the statute of 1305 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

penalty lor violating copyright of l** *2

Clerk or District Col-rt —

to record title of book 1"' •*

form of such record 17 3

fee for record, and copies of same 1'

CoxoKESs Library —

copy of book to be sent to 44 10

such deposit not a prerequisite to copyright 44 1

66 INDEX TO COPYRIGHT LAWS.

RErEREXCES THUS (*) ARB TO 8ECT10SS ; OTHEBWISB, TO NOTEa

CnARTS, see Maps.

Cmcfir Courts, U. S., see Cocbts.

Ci.EIlK OF DiSTKICT COURT '*C« '

title of book, Ac, to be deposited with 31

to record same 31

fee for same, and copies tlieroof 31

copy of book to be deposited with 31

to transmit records of cop^'right and books to Secre-
tary of Slate 32

records from prima facie evidence of deposit 33

COXGR>:SS LiUUARY —

copy of Ijook, Ac, to be transmitted to 49

penally for not so doin^ 49

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

CoPTRiOHT OF Books, Maps, Ac. —

right to, founded on siatuto law 29 5

is uot H mouo|>oiy in an odious sense 'J8

is a rii^ht t*) iiiulliply copies 28-9 J

citizens and residents, and tlieir representative, may

acquire 26

temporary resilient cannot take 2G

k'fral assij;nee, tiiroii^'ii trustee, can take 26

assignee of non-resident ahen cann(jt 27

printed copy of title to be deposited 31

title to 1)0 recorded by clerk 31

title must be dei>ositcd before jjublication 33

number of volumes no part of title 33

copy of book to be delivered to clerk 31

copy of book Uj be sent to Cougresa library 49

poualty for not bo doin;? 49

notico of copyright to b« published in book 32 *5

IN'DKX TO 0BS0L?:TE LAWS.

COKORr.SH I.idrakt —

DO forfoiiuro fur uon-deposit 11 2

repeal of i\ct requiring some 4 7 *6

CoPTRiGiiT or Hooks, Maph. Ac. —

w ho rauy iwrun* It *1

title to bo recorded 17 *3

copy record to l>o published 17 *3

copy r«>oord X>> l»o innerUd in book 20 •!

ci'py of book t<i Ijo depo»itcd !•• *3

for what tonn bocurcd 14 *1

INDEX TO COPYRIGHT LAWS. 67

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

insertion of notice in tirst volume sufficient 33 6

mistiike in such notice fatal 33 11,12

original term of t\venty-ei>;ht yours 26 *1

term may be extended fourteen years 30 *2

how renewal elTocted, and when can bo 30 *2

record of renewal to be published 30 *.'5

renewal prixuarily for author and his family 30 1

when assignee entitled to 30 4

renewal is a now interest 30 6

in books, maps, charts, &c 26 *1

in dramatic ainipositions 45

in photographs and negatives of 49 *l

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, wlien ousts that of State courts 25 5

no now redress or rcUcf given by act of 1819 25 3

may grant injunctions 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

IXDEX TO OBSOLETE LAWS.

CoPTRionT OP Books, ILs-vs, <fcc. —

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 *3

Forfeitures —

of book.s, Ac., on sale in violation of copyright. ...... 16 *3

for every sheet in possessioa of oflondor 16 *2

68 INDEX TO OOPYRICnT LAWS.

RETERSKCKS THUS (*) ARK TO BBCTIOXS ; OTHERWISS, TO NOTES.

Dkpartmekt of Interior — »'*c'5 *"•

books and publications to be under control of 47 *S

charged with duties of Departnicut of Slate, as to

copjriglits 47 *i

DaXMATIC COMIOSITIOSS —

acting of, witliout consent, prohibited 45 *l

penalty for acting or representing same 45 *1

right of acting, when not impaired 46 •!

prior to 1850, author of, had no exclusive right to act 46 1

representation was not publication 40 2

acting, does not destroy right to take copjTight 46 3

assignee of right to act, m:iy restrain others 46 4

and tliough only title has been deposited 46 6

but ooiitra as to this last p<jsition 46 8

act of 1856 ulone givea redress for representing. ... 46 7

Engravings, boo Phists.

EqCITABLE JfniSDICTION AS TO COPYRIGHTS —

conferred by act of 1819 24 1

where injunction not prayed, does not attach 25 8

docs not extend to adjudication of forfeit\irt*.s 25 2

when injunctions maj' issue as to copyrights 24 •!

wiiou injunctions may issue as to ni:inuscripts 38 *0

EXTK.VSION OF (JOPVIUUUia, BOO litNKWALa.

F.
Fsm—

for rooordiog titles of books, 4c. 31 *i

INDEX TO OBSOLETK LAWS.

FoRfEITURES —

of plal«8, of map\ prints, 4c. 22 ♦.I

for every print, Ac., exposed for sale 22 '3

Geverau Issrr. —

pleadable in suit* as to copyrights 19 *7

HjKxial routlor may bo given in ovidonco under I'J '7

Impoutatiox or Books, 4c. —

when violation of copvright IG *'i

when permitted 1 *J *5

of prints, when forbidden 22 *3

INDEX TO COPYRIGni LAWS. 69

BErKRENCES THUS (*) ARB TO 8KCTI0NS ; OTHERWISE, TO NOTES.

. m,

Fees — cmtinued. tage sEr.

for copy of such record ?A *t

for recording assignments of copyrights 43 *2

FOREITUIIES CSDER CoPYRKiHT ACIS —

of books on sale in violation of copyright 34 *6

for every sheet sold or held for sale 34 *6

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

for every map, <&o., ofl'ered for sale 35 *7

GKyERAL ISSCE —

pleadable in all suits under copyriprht acts 39 *10

special matter may be given iu evidence under 39 *10

IltPOBTATION OF BoOKS, &C. —

of books, when violation of copyright 34 *6

of maps, cliarls, ic , when violation of copyright. ... 35 *7

when not a violation 37 *8

Ikfrixoeme.vt of Copyiught —

printing, &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 ctmscquence 34 2

engraving, &.C., map, chart, Ac , when is 35 *7

penalty for 35 *7

importation of books, 4c., when no infringement. ... 37 *3

acting dramatic compo.-^ition, when is 45

when such acting no infringement 46

INDEX TO OBSOLETE LAWS.

Ikfrixgement OF Copyright —

printing. Ac, copy of bcok 15 *2

penalty for 16 *2

importation or printing foreign books 13 *o

selling or engraving any print. Ac 22 *3

penalty for. ... 22 *3

Manuscripts —

priming of, when forbidden 19 *6

damages for so doing 19

70 INDEX TO COPYRIGHT LAWS.

RIFERESCES TUCS (*) ARE TO 8KCTI0SS ; OTHERWISE, TO KOT£S.

InjrxcnoNS — '*«>■ **»•

Circuit Courts may grant, to restrain Tiolotion of

copyrights 24

on what terms and conditions 24

if not asked, equity jurisdiction docs not attach 25 8

to restrain publication of manuscripts 33 ♦S

to restrain acting dramatic compositions 46 4, 6

JUDICTAL OPINION'S —

not the subject of copyright 28 17, 1 8

marginal notes to, may bo 28 19

£u

Labels —

not subject of copyright 27 9

BI.
MXKUSCRIPTS—

printing or publLaliiug, without author's coDScnt,

prohibited 38 •S

damages for 8o doing, and liow recovered 38 '9

injunction to restrain publication of 38 ^9

author of, has proixjrty in, at common law 38 1,2

until ho riUnquislicH it 38 1

bus n-dross indi-pfmloiitiy of Htututo 38 3

author of, lins Hamo ri^rhtB lo. iih to other property. .39 11

common law ri^'ht to, not alirid;;(>d by statute 39 12

UM of, by author no abandonment 33 6

permission to take copict no abundonmenl 38 S

INDEX TO OBSOLETE LAWS.

llAPl AN'D rilARTS—

copyrifcht in, who may have 14 •!

c<"»pyriglit in, jKnalty for violation of 15 *2

CO|>yright in. imw ft<Tniin'«l. . . . 17 '3

PVALTIEfl rOB VIOLATION' OF CorVRmUT —

for printiMK b<X)k. map, chart, ic It* *2

amount of. and how recovered 16 *2

for engraving prints 22 *3

amotint of, and how rocoTer«d 22 *i

INDEX TO COPYRIGHT LAWS. Tl

BEFERENXES THUS (*) ARE TO SECTIONS ; OTHERWISE, TO XOTES.

Makuscripts — continued. '•*«» *^f-

copies of, how may be used 38 6

publication of part of, as well as of all, prohibited. . . 38 9

Uafs and Charts —

renewed term of, who may take 29 •2

copyri.cht in, how acquired 30-1 *3 *4

violation of copyright, 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 copj'right in the original elements or materials of 27 10, 11

natural objects of, open to all 36 2

subsequent compiler of, wliat may use 37 6, 6

Musical 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 copyriglit of, penalty for 35 *7

penaltj for marking copyrighted, when not so 39 ♦11

Newspaper —

not protected by copyright laws 27 8

is not a book 27 8

INDEX TO OBSOLETE LAWS.

PlXALTTES FOR VIOLATION OP COPTRIGITT —

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

73 INDEX TO COPYRIGHT LAWS.

REFERENXES THIS (*) ARE TO SECTIONS ; OXriERWlSE, TO KOTXS.

PEKA^TIK^ VIOLATION OF COPTRir.nTS — '*<5» «"•

for print inp ropy of hook without consent 34 *Q

amuuiil of, lor eacli slict-t 34 *6

liow recovered and appropriated 34 *6

action on caso. proper r-rin to recover 35 c 1

incurred for every sheet sold or l>cM for sale 35 c 2, 3

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

for printing mop, chart, 4c 36 ♦T

amount of, for ever^v sheet 3G *7

how recovered and appropriated 36 '7

incurred on every sheet sold, or offered for sale .... 37 61

must be sued for witliin two years 37 b2, A

for acting dramatic composition without consent. ... 45

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

how recovered and appropriated 39 *11

cannot Ik? recovered in name of more than one person. 40 1

Photooraphs —

and iheir necratives subject of copyright as prints and

engravings 49 *1

Prints aitd Enokavings, Copyright in —

citizen or resident authors may have 26 *1

liow Hecurod 31 *4

renewed term, who may take 29 *2

ren<wed term, liow secured 30 '2, 3

violation of, what is 35 '7

penalty for such violation 35 ^7

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

RK9SWA1 or Coptrioiits —

who entiilfd to receive or take 29 *2

for what term allowed 29 ^2

IN I 'EX TO ODSOLETK LAW.S.

Br^ewai. or fVipTRionr —

who m.iy have 16 *l

for what torm prnntcd 16 *!

how necurvd 16 *!

SacRKTArr or Statt—

copy of >K><)k to b" d'-pofiited with 18 *i

copy of print to be depo^ite<l with 21 '2

dutiei of, impoied oo Secretary of Interior 47

INDEX TO COPYRIGHT LAWS. 73

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

Renewai, OF Copyrights — continued. tagb 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 asHignecs, unless clearly so 30 4

renewed term is a new interest 30 6

record of, to be published, how 30 *3

Reports —

no copyright in opinions of the judges 2S 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, 4c., relating to

copyrights 47 *8

charged with duties of Secretary of State as to 47 ♦S

"Writ of Error in Coptrioht sihts —

from all judgments of Circuit Courts, without regard

to sum or value in controversy 43

INDEX TO OBSOLETE LAWS.

Smthsoniax 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

Wbtt of Error —

▼hen lies from judgments of Circuit Courts 84

ACTS OF COXGEESS

IK RX8PECT TO

PATENTS FOR INVENTIONS.

ACTS IN

FORCE.

Act of 1336,

Chap.

357.

Act of 1855,

Chap.

175.

1837,

45.

" 1856,

129.

1839,

83.

" 1859,

80.

1842,

263.

" 18G1,

1848,

47.

" 1861,

1849,

108.

" 1862,

182

1851,

32.

" 1863,

102

1852,

107.

" 1864,

159

1852,

103.

" 1865,

113

1853,

97.

OBSOLETE ACTS.

Act of 1790, Chap. 7. Act of IS 19, Chap. 19.

" 1793, " 11. " 1832, " 162.

" 17at, " 58. '• 1832, " 203.

" 1800, " 25. " 1860, " 211.

PATENT LAWS.

ACT OF 17 90, CHAPTER 7.

1 Statutes at Laeoe, 109.

[Obsolete: liepealed ly Act o/1793, § 12.]

An Act to promote the progress of useful arts.

Section 1. He it enacted by the Senate and House of
Representatives of the United States of America in Con-
gress assembled, That upon the petition of any person or
persons to the Secretary of State, the Secretary for the
department of war, and the Attorney-General of the
I'liited States, settini; 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 the said peti-
tion, and describing the s;iid 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, tlK> sole and exclusive right and liberty of making,

80 PATENT LAWS.

ACT or 1790, CUAP. 7, §§ 1, 2.

coiistructiug, using, and vending to others to be used, the
sai.l invention or discovery ; wliich letters i>atfnt shall be
delivered to the Attorney-General of the United States
to be examined, who shall, within fifteen days next after
the delivery to him, if he shall lin.l tlie same conformable
to this act, certify it to be so at the foot thereof, and
present the letters patent so certitied to the President,
>vho shall cause the seal of the United States to be there-
to affixed, 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
rccurded in a book to be kept fur that purpose in the
office of the Secretary of Stiite, and <lelivered to the
patentee or his agent, am! the delivery ihereot shall be
entered on the record and indorsid on the j>atent by the
uaid Secretary at the time of granting the same.

Under this Bection it wa« held, tliat the allcgntions and Buxjrosliona
of thf po ition must bo Hubstunliaiij rocitod in tlio patent, or ilio pat-
ent waH void. Knins v. Chambers, '1 Wash., 12G.— Wasiunoton, J.;
I'u., la07.

Section 2/ And be it fm-thcr cncrtxf. That the
grantee or grantees of each patent shall, at the time of
prnnting the same, deliver to the Secretary of State a
BjK'cifiration in writing, containing a «h'seripti<*n, accom-
panied with drafts or models, and explanations and modoU
(if the nature of the invention or di.seovery will admit of
n mod<l) of tite thing or things, by him or them invented
or discovered, and described as f^lbresaicl, in the said pat-
ents; which speeitication shall be ko particular, and said
models iso exact, an not only to distinguish the invention
or discovery from other things before known and used,
but also to enable a 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 the
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 and 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.

Sectiox 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 their 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*

8S PATENT LAWS.

ACT OF 1790, CHAP. 7, § 5.

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

Sectiox 5. And be it further enacted, T\\:\\. upon oath
or alhnnation made l)efore the judge of the district court,
"wliere tlic defendant resides, that any patent which shall
be issued in pursuance of this act, was obtained surrep-
titiously by, or up<:)n false suggestion, and motion made
to the said court, within one year at\or i-siiing the said
patent, but not afterwards, it shall ami may be lawful to
anil for the judge of tlie said district court, if the matter
alleged shall appear to him to be suflicient, to grant a rule
that the patentee or patentees, his, 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 suflicient cause shall not be shown to the
contrary, the rule shall be made absolute, and thereupon
the said judge shall order j)roccss to be issued as afore-
said, against such patentee or patentees, his, her, or their
executors, a<lministrators, or assigns. And in case no
Buflicierit cause shall be shown to the contrary, or if it
shall appear that the j>atentee was not the first an<l true
inventor or dLsroverer, ju<lginent shall be rendered by
Buch court for the repeal of such patent or patents ; and
if the party at whose complaint the process issued shall
have judgment given against him, he shall pay all such
costs as the deren<lant shall be put to in defending 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.

fyK) noton to act of 1791, § 10; and also DiQEflT Pat. Cases, title
Couars, B. 3.

PATENT LAWS. 83

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

Section 6. And be it furthrr rnartefJ^ Th;it in nil ac-
tions to be brouLjht by such pati-ntce or patentees, liis,
her, or their executors, administrators, or assigns, 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 tlic 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.'ill have been given to
the plaintiff", or his attorney, thirty days before the trial,
ill evidence {b), tending to prove that the specification
filed by the plaintiff docs 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,
so as ttie effect described cannot be produced by the
means specified, then, and in such cases, the verdict and
judgment shall be for the deCendant.

(a) Of tho novelty and ntilitr of an invention, the patent is prima
facie evidence of a very slight character. Loicell v. L.wis, 1 Mass., 184.
— Stouy, J.; Mass., 1817.

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

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

Section 7. And be itfurtJur tnacted^ That such pat-
entee as aforesaid, shall, before he receives his patent,
pay 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.

ACT or 1703, CHAP. 11, § 1.

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

Approved April 10th, 1V90.

ACT OF 1793, CHAPTER 11.

1 Statutes at Large, 318.

[Oitolete : Ri-peahd by Act of 183G, § 21.]

An Act to promote the progress of u.<5eful arts, and to re-
peal the act heretofore made for that purpose.
Sectiox 1. lie it en<i<'(e<l h>/ the Semite and House of
liej/resentativea of the i'/tittd States of America in Con-
grc»8 aMembkil^ That when any person or i)er8on8, being
a citizen or citizemi of the United States, shall allege that
he or they have invented any new and u.scfiil art, ma-
chine, maiiufiicturc, or composition of matter, or any new
and UHcful improvement on Jiny art, maddne, manufao
turc, or composition of matter, not known or \ist'd before
the njiplication («^/), and shall present a petition to the
Secretary of State, signifying a «lrsire of ohtaiuing an ex-
clasive property in the 8.imo, and praying that a patent
may Ik- grante«l thcrcfdr, it shall and may hi- lawful for
the said Secretary of State to cause letters patent to bo
nLo^le out in the name of the United States, bearing teste
by the President of the United Statt's, reciting the alle-
gations and su'^gestions of the said petition (A), and giv-
ing a fthorl description of the said invention or discovery,

PATENT LAWS. 85

ACT or 1793, CUAP. 11, § 1. OBSOLETE.

and thereupon granting to such petitioner or petitioners,
his, her, or their lu-irs, administrators, 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 examine. 1 ;
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 Slates to be thereto afiixed : 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:ate, anil delivered to the patentee or his order.

(a) 1. This coction is to be construed witti the other parta of the act
tj mean tliat tho di.-tcovery shouM be unknown, and not used as tho
invention of anv other than tliu patentee, b^'toro the application for a
p liout. Morris v. Uuntingkm, 1 I'ainc, 333. — Tuompso.v, J. ; N. Y.,
Iri.'l.

2. This section of the act is to be construed witli section 6 of the
8 I no act, and means that the first inventor lias a right to a patent,
t'.ioujrli there may have been a knovvledf^c of the thing invented before
ihe appl cation for a patent, if such use or knowlodi^e was not anterior
to the discovery. Melius v. Si Is hee. i Mass., 111. — Story. J. ; Mass.,
1825. Goodyejr v Mitth'U-s. 1 Paine, 301. — LivisGSToy, J.; Ct.,
1814. TreadiUll v. Bhidn, 4 Wash., 707, 70S. — WasuisgtuN, J.; Va.,
1827. CONTitA, Whilii^y v. EmrneU, Bald , a09. — liALDWiN, J. ; Pa.,
1831. Tlwtnpson v. Haight, 1 [J. S. Law Jour., 573. — Van Ness, J. ;
N. Y., 1S22.

3. The meaning of tlie words '• not known or used," &.C., in this sec-
tion, is that tho invention must not have been known or used by tub
PUBLIC be/ora the applicaiii>ii. J'ennock v. Dialojue, 2 Pet., 19. — Stobt,
J. ; Sup. Ct., 1S2U.

4. The patent act of 1790 used the words " not known or used 1^-
fore," without adding the words "the application :" in connection

8fl PATENT LAWS.

ACT OF 1793, CHAP. 11, §§ 1,

with the structure of the sentence in wliich they stnnd, lliey might
liavo been rrfi'rred either to the time of the invention, or of tiie appli-
cation. The ndtlition of the latter words in the act of ITIKI mii«t liavo
been tx indn-^tna. and with tlie cautious intcntinn to cle;ir away a do-.ibt,
and fix tlic oripinal and didiberale meaning of tlio lojrisiaturo. IbiJ,
22. SJiaw V. C>oper, 7 Pet., 310.— McLevn, J.; Snp. Ct., 1833.

5. ■\Vitliin the spirit ol'thi.s section, it wa.s held that the Secretary of
Stale, though not expressly aiitliorizcd, might receive the surrender of
letters patent, wliicli were defective by rea.son of mistakes committed
either by tiie department, or by the inventor, innocently, and reissue
a new and corrected patent. Grant v. liiv/mond, Pet., 24'i. — Mar-
BHALL., Ch. J.; Sup. Ct., 1.S32. Same view had been before taken in
Sullivm's Case. Opin., Gilpin's Ed., 1J8. — WiuT, Alty.-Gen., 1818.
Jloiris v. Huntington, 1 Paiiic, 355. — Thompson, J.; N. Y., 1824.
Grant v. Mason, 1 Law Int. and Rev.. 22 —Thompson, J. ; N. Y., 1828.
Anon., 2 Opin., 45G.— Tanev, Atty.-G^n., 1S31.

(M 1. Though tliis act, like that of 1790, required a petition to bo
preilnted, and the patent, when issued, to recite tlio "allegations and
suggestions of the petition," it seeinB that, after this act of 1790, the
petition ulono seldom contained any thing as to the patent beyond a
mere title. IIo<jg\. Emerson, G How., 4t>0, 481. — Woouufliy, J. ; Sup.
Ct., 1347.

2. Dut the ajK-cification, l>cing filed at the same time and often on
the RJime p."\iK.'r, seems to have been regarded, whether sp<'eially named
in the petition or not, as a part of it. To avoid ini.sUikes as to the ex-
tent of the inventor'.s claim, and to comply with the law, by inserting
in the patent at l<ast the subsUince of the jietition, the ofllcers inserted,
by express reference, the whole descriptive |>orlion of it as conuiined
in the Bchedulo. J bid., 4^1.

Section 2. Provided nlirai/.<i, nmJ he it further enacted^
Tliat any person, who sli.tll have ilisroverod an improve-
ment in llic print'iple of nny maihiiie, or in the piocoss
of any com[>osilion of matter, whicli sliall have been patent-
ed, and shall have ohlainc'l a patent for such improvement,
he sliall not be al liberty to make, use, or ven<l the
original dincovi-ry, n<>r Av.\\\ the first inventor be at
liberty to use the improvement : (") And it i.s hereby
enacted and declared, that simply chani,'in<:; tlie form or
the proportionB of any machine, or composition of matter,
in any degree, shall not be deemed a di.scovery. (i)

(a) As to doctrine that the patentea of an improvomcnt has no right

PATE.VT LAWS. 87

ACT OF no:!, CHAP. 11, §§ 2, 3.

to use the original discovery, nor the first inventor the right to use the
improvement, see Gray v. James, Pet. C. C, ^99. — Washivqtok, J. ;
Pa., IS 17. Washburn v. Gould, 3 Story, 150. — Story, J.; Mass., Ib-i-l.
Woodworth v. Rogers, 1 Wood, k Min., 141. — "WoouiiLUY, J. ; MaSH.,
1847 ; anil generally Digkst Pat. Cases, title IiiPROVEiLE.VT, C.

{b) 1. It is not every change of form and proportion which is de-
clared by this act to be no discovery, but such as is simply a ch.ango
of form and proportion, and nothing 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 clmuge of princijilo al.so. Davis v.
Palmer, 2 Brock., :ilO. — Maiisiiali., Ch. J. ; Va., 1827.

2. Though tliis declaratory act, that a change in form is not a dis-
covery, was not re-enacted in the law of ISIJG, it is a principle which
necessarily makes part of every system of law granting patents for
new inventions. Winans v. Denmead, 15 How., 341. — Curtis, J.;
Sup. Ct., 185.S.

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

Sectiox 3. And he it furtJur enacted^ That every in-
ventor, before he can receive a patent, shall swear or
affirm, 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, wliere
the nature of the c.ise admits of drawings, (a) or

.S.') PATENT LAWS.

OBSOLETE. ACT OF 1793. CHAP. 11, §§ 3, 4,

with sppcimons of the incrredicnts, and of the composition
of matter, sufllcicnt in quantity for the ])iirpose of c-xperi-
mcnt, where the invention is of a composition of matter;
which description, signed by himself and attested by two
witnesses, sliall be filed in the office of the Secretary of
State, and certified copies thereof shall be competent
evi«leiice in all courts, where any matter or thins;, touch-
ing such patent-right, shall come in question, (b) And
such inventor shall, moreover, deliver a model of his
machine, pruvidcd the Secretary shall deem such model
to be necessary.

{a) 1. Under the prorisions of this section requiring tlrawings with
written reR-renccs, if the 8iH?ci(lcatiun refers to the drawingx, they
thereby bocomo pnrt of the written description of the inveution.
KarU\. Sawittr. 4 Muss., 10. 11. — SroiiY, J.; Mass., 18".'5. Jhooka y.
liickneU, 3 Mcl-enn. 'JGl.— McLkak, J.; Ohio, 1843. Woihlntm v,
Could, 3 Story. l.'U.— Story, J. ; Mass., ISJt.

2. It is suflicient if drawings and written references are put on flio
with the si)ecificati<>n ; and if the references retjiiircd are written ou
the drawings the statute is satisfied. Emerson v. Ilo>jg, 2 Bhitchf^ 9,
10.— IlETTS, J.; N. Y.. 1845.

.*). The patent act of 179.') does not hmit tlio inventor to one Ringlo
iDvle or one single sot of ingredients to carry into effect his invention.
IIo may claim us many modes as ho pleases, provided always that iho
claim is limited to such as he has invented and as are substantially
new. AikI section .'t of the act re(|uires, in the case of n machine, tliat
the inventor chall explain the several mo'hs in \vhi<h he has contcin-
l>lat<<l tlie appliaition of its phnciplo. Ryan v. Goodwin, 3 Sumn., 621.—
.Srnitr, .1. : .Mast., 1H30.

4. I'ndf-r the act of 1793, the speciflcation was not rcrpiired to b«
made a part of the letters patent, but the inventor could have it so in-
<->r|><irat<d with tliem if ho desired, llixjgy. F.inrjBon, 11 How., C04.—
Wooom'HY. J. ; Sup Ct., IflfjO.

C'l An exempiillcaiion of a Hf>ecincnlion of » p.itent is made evidence
by ihis vjction i.f the ml of CongreKH. The exeniplilhaiion of the pat-
ent itijclf stands ujion the common law, as being un exeniplillcation of
a record of a public document, and is always to be received as cvi«
denee. Tlie drawing or mfMjel n<ed not be exemplified. Pick v. Fat'
rinyton, Wend., 4r» — .Savaoe, Ch. J.; N. Y., ISfJ.

Sbctiox i. Ami he it further cuartcd. That it shall bo

PATENT LAWS. 89

ACT OF 1793, CHAP. 11, §§ -1, 5.

lawful for any inventor, his executor or a<lniinistr:itor, to
assign the title and interest in tlie sriid invention, at any
time, and the assignee, liaving recorded the said assign-
ment in the office of the Secretary of State, shall 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 degree.

1. It is the business of the assicmee of a patent-right to see thnt the
assipnmenl is put on record. Morrill v. WbrthingUm, 14 Mass., 392. —
Clui.vM; Mass., 1817.

2. I'ndcr this section, an assignment is not valid unless it has been
recorded in the office of the Secretary of State. Biggins v. Strong, 4
Blackf. 183.— Dewky, J. : Ind., 183ii."

3. Under tliis section, until an assi<;;nment is recorded, the assignee
is not substituted to the rights and responsibilities of the patentee so
as to maintain a suit at law or in equity, founded thereon. Wijeth v.
Stone, 1 Story. 200.— .Story, J. ; Mass., 1840.

4. Under this section, the reoordinp of an assignment is indispensa-
ble to convey the right. Dohson v. Campbell, 1 Sumn.. 32G. — Stouy. J.;
Me., 1833. Boyd v. McAlpine, 3 McLean, 428.— McLEAy, J.; Ohio,
1844.

Skctiox 5. And he it fiirtlur enacted, That if any
person shall make, devise, and use, or sell the thing so
invented (a), the exclusive right of which sh;>ll, as afore-
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 Slates, or any other
court having competent jurisdiction, (c)

(a) 1 Under the act of 1790, a patent was made f)rima facie evi-
dence; that act was repealed by the act of 1793, and thai provision

90 PATENT LAWS.

ACT or 17 D3, CHAP. 11, §§ 5, 6.

Wiis not rc-enactcd in it. H»nce a patent was not rcocivod in courts
of justice 88 even prima facie evidence that the invention patented wa«
new or useful, hut tlie phiintiffwas bound to prove these facts in order
to make out his case. Corning v. Burden, 14 How., 270, 'J71. — CiuiER,
J.; Sup. a., 1833.

2. Under thi.s .section, subjecting: to a penalty 'any person who
Fhall make, devise, ami use, or sell the tlrni; so invouted." it mi^ht
•well bo questioned whether anj' person would be subject to the penalty
for using a machine which lie had not also made and devised. Such
doubt is removed by section '.I of the act of ISOO, which subjects to
damaj^^cs '"any person who shall make, devise, use. or sell" the inven-
tion of another. Kians \. Jordan, 1 Brock., 250, 251. — Maksiiali^ Ch.
J.; Va., 18i:{.

3. The maker and seller of a patented article, within the meaning of
this section, is the jK-rson for wiiom, by whose liirection, and for whoso
account the article is sold — and not the more workn)an employed to
Bell. Delano v. Scoit, Gilpin. 4'.id. — IIopkinson, J.; I'a.. 18:51.

ib) Where one erected, ou his <jw;i premises and at his own expense,
a machine which was claimed to bo tlio invention of another; nnd
afterwards such inventor took a lease of the machine for a term of
years, covenantin}^ to reconvey the same at the end of the term of
years, IkU, ihal such covenant amounted to license or consent ia
writing, within the meaning of this section. Jieutgen v. Kanoura, 1
Wasli., 172.— Wasiiunoto.v, J.; Ph.. IHOI.

(c) 1. Under this section, it was held the assignee of a pari of a pat-
ent coidd not maintain an action for a violation. Tyler v. TWi, 6 Cra.,
324.— CLltlAU; Sup. Ct , IMO.

2. But the assignee of a moiety may join with the patentee in an
action for a violation. Wliittemore v. Cutter, 1 (Jail., 430. — SroRV, J.;
Ma.ss., 181.3.

Tliia (toctioD repealed by act of 1800, § 4.

Section 0. Providnl <ilir,ti/s, nnd Ix it furthrr ctiactcd^
Th:it the (li'fctnl.'uit in Huch action h1i:i1I be jjcrmittcd to
pU'ail the pcner.il issue, and ^ivc this act, aiul any spocinl
matter (a), of which notice in writin^j may liavc been
piven to the pl.iiiitiir or his attorney, thiity «lays bcf«»re
trial, in evidence, tending to prove, that the .sj)ecificatioii,
filed by the pl.-iintiflf, does not contain the whole truth
rela'ivc to his discovery, or that it contains more thrin is
nei-e-sary to pro<liice tlic dcacribcd effect, whicli conceal-
ment or addition shall fully appear to have been made,

PATENT LAW3. 01

ACT OF 1793, CHAP. 11, § 6. OBSOLETE.

for the purpose of tleccivinE^ the public (^), or that the
thine, thus secured by p;itont, was not originally discov-
ered by the 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 ((7) ; in either of which cases, judgment shall be
rendered for the defendant, with costs, and the patent
shall be declared void (<).

(a) 1. The object of this section was to guard af^ainst defeating pat-
ents by the setting up of a prior invcntiou wliicli liad never been
reduced to practice. Bedford v. Hunt, 1 Mass., 305. — Story, J. ; Mass.,
1817.

2. Thi.s section appears to have been drawn with the idea that the
defendant would not be at liberty to contest the validity of the patent
on the general is^;ue. and intends to relieve the defendant from the
dillicultics of pleadinir, by allowing him to give in evidence matter
wliich affects the patent. Evam v. Eaion^ 3 Wheat., 503, 501. —
Marshall, Ch. J.; Sup. Ct., 1818.

3. Such notice i.s, however, for the security of the plaintiflf. to protect
him again.st surprise. Ibid.. 504.

(b) Under this section a defect or concealment in a spccilication, in
order to make the patent invalid, mu?t appear to have been made for
the purpose of deceiving the public. Wiri'.ney v. Carkr. Fos.-cnden on
Pat , 2d ed , 139.— JoiiNSOX. J. : Geo.. I^ii9. Park v. Litlle, 3 Wash.,
193. — Wasiusgto.v. J.; Pa., 1813. WhUttrmore v. Cutier, 1 Gall.. 437.
— Story, J. ; Mass., 1813. Gray v. James, Pet. C. C, 401.— Wash-
iN-aTON-. J.: Pa., 1817. LoweU v. Lewis, 1 Mass., 139.— Story, J.;
Mass, 1817.

(r) 1. Where a defence is made tliat the patentee is not the original
discoverer of the thin.i? 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 does not dale from the time of liis applica-
tion for a i)atent, but from the time of his discovery. Dixon v. JJojer,
4 Wash.. 72.— Wasiuxgtox. J. ; Pa., ISJl.

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 di.srovery, still his
patent is void, as the law supposes he may have known it. Evans v.
Eaton, 3 Wheat., 511.— Mai-,suall, Ch. J. : Sup. Ct.. 1S18.

3. The use of a machine, to test its value, as a cracker machine to
the extent of half a b.irrel of llour, held to amount to a using of it with-

02 PATENT LAWS.

onaoLBTK. Acr or 1793, chap. U, §§ 6-8.

in the meaning of this section. Watson v. B'adcti, 4 Wasli., 693. —
WASinN(;TON. J. ; Pa., 1826.

((/) 1. Tliis pcction does not pniimcrnle nil the defences of which the
defendant may lepilly avail himself; as lie may give in evidence tliat
he never did the tiiinj? attrilmted to him ; that the patentee i- an alien,
and not eutitlt-d under the act ; or that he has a license or avithority
under the patentee. Whitttmnre v. CutUrr, 1 (.Jail., 435 — Story, J.;
Mass., 1813. Kru-ass V. Scliui/lkill Jiank, 4 Wash., 1 1.— Wasuinuton,
J.; Pa., 1820. Pennock r. Dialogue, 2 Pet., 23.— SroitY, J.; Sup. Ct.,
1823.

2. This section only declares llic defences nvailahle against a pat-
entee ; but no process or means are piven by it for the examination of
a patt-nt, however false and fraudulent it may be, if the patentee will
forbear to briiip suit apain.st those using it. Delaw v. iicott, Gilpin,
491).— IIoi'KiNSOX, J. : Pa., 1834.

{e} 1. If a defendant seeks to annul a patent, ho must proceed in
precise conformity witii section 6 of the act of 1793, and •' fraudulent
intent "^ust be found by the jury to justify a judgment of vacatur by
the eouff. This section does not control tlic 3(^ O'rant v. Raymond^
C Pet.. 247.— Marsiiali^ Ch. J. : Sup. Ct., 18;i2.

2. The Circuit iVmrt. in a civil suit, cannot declare a patent void ex-
cept for the causiH spoeilied in tiiis section. If the pati iit is defective
for anv oilier cause, the verdict m\isl Ijo general for the defendant.
Whitii'fy V. Kmm<-U, Bald.. 321.— Haldwix, J.; Pa., 1831.

3. Under this section, the Circuit Courts of the United States have
exclusive jurisdiction in suits where the patent may bo declared void.
Parsons v. Bamaul, 7 Johns, 144.— CfRiAM ; N. Y., 1810. ]\\Lon v.

W'o'idworUi, 8 Paige, 134. — Walwortii, Chan.; N. Y.. 1840.

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

Section V. And be it /itrf/irr enacted^ That where any
State, before its adoption of the present form of govern-
ment, »hnll have crranted an exclu'^ivo ritrht to any inven-
tion, the party, cl.iimiiij; that riL,'ht, sliall not be cajKil)h,'
of obt.iinini; an oxcltiHivo riglit under this act, but on
relinquishing; his ri;:;ht uncler Hiirh particular State, and
of such ri'liiii|uishinent, his «)btaininix an exclu8i\e right
under this act .'-liall l>e Huflicient evidence.

Secmox 8. And be it /iirt/wr cuactcd. That tlie per-
sons, 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, Secretory at War, and Attorney-General, according
to the ac-t passed the second session of the first Congress,
intituled "An act to promote the jirogress of useful arts,"
on comphdng with the conditions of this act, and paying
the fees herein required, may pursue their respective claims
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
shall 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 sh:ill
issue to the opposite party, {h) And where there shall
be more than two interfering applications, and the par-
tics applying shall not all unite in appointing three ar-
bitrators, it shall be in the power of the Secretary of
State to appoint three arbitrators for the purpose.

(fj) An inventor filed a description of his alleged invention in 1802,
as required by section :< of the act of '1793, and took no further step
until 1814, when another person made application for a patent for the
same invention ; Held, that there was no hniitation of time withiu
•which i» patent must be taken out after specification tiled, and that the
facts made a case of interference, to be arbitrated under this section.
Anon., 5 Opin., 701.— Rush, Atty.-Gen. ; 18U.

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

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

94 PATEXT LAWS.

OBSOLETE. ACr^r 1793, CUAP. 11, § 10.

District Court, where the patentee, liis executors, rulmin-
istnitors, or .•ij'sii^iis rc-iJc, that any patent, which shall
be ihsiu'd in pui^utince of this act, was obtained Mirrepti-
tiuusly, or upon false suggestion, and motion made to
tlie said court, witliin three years after issuing the said
patent, but not afterwards, it shall and may be l.iwful fjr
the judge of the said District Court, if the matter alleged
shall appear to him to be suflicient, to grant a rule, that
the patentee, or his e.xecutor, administrator or assign show
cause why process should not issue against him to repeal
such patent. And if sulhcicnt cause shall not be shown
to the contrary, 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 sh.-ill apj)ear
that the patentee was not the true inventor or discoverer,
jiidgraent shall be rendered by such court for the repeal
of such patent; and if the party, at whose coinj)Iaint the
j)roceHs issued, shall have ju<ign)ent given against him, he
shall pay all such costs as the defendant shall be put to
in defending the suit, to be taxed by the court, and re-
covered in due course of law.

1. Tlic jnriwlirtlon priven to tlio Dint riot rourf, under thin noction,
apjiliof on y to caMCn in whii-li the pali-nt liaa been obliiinr-d by frnud,
Biirrpptitioiinly, liy !alvj J«u|ff;<'9lii>n, or by sotno wilful inisropresenla-
tion Bii'i (ki.t)]>:iun. DtLino v. S<.oU., Gili>iu, 41^3. — IIoi'U.vso.v, J. ;
Fn.. IH3I.

2. Thv nummary proco"<]ln(? under tliiii Bt'Clion is (fivcn to protect
tho |iiiblic fiiim rnimfi/Hi fraud in taking out jiatcDls (ttio fees of oQlco
being no clieck), for known and cutnmou tbingH. Ibid., 49 i.

3. Il gircs the [Miwor to any person to cull u|k)u a patentee for an
czamiDntion of liix rJKlii, and have it repealed, if it aliall bo found that
be is not cntill"d lo it. Ibul, idO.

i. Prococdings under thi« section, upon tlio rule niti, aro n^l coDclu-

PATENT LAWS. 95

ACT OF 1793, CHAP. 11, § 11.

sive. The process asv'ardcd. upon making the rule absolute, is in the
nature of a scire facias, and is not linal. St arn'S v. IJarrvlt. 1 Mna?.,
Iii5. — Story, J. ; Mass., 1810. Wood A Brundaje, Ex park. 9 Whoat.,
615.— SroKY. J. ; Sup. Ct., 1824. jAlano \. Sett, C,i]\nn, 490.— IIop-
Kixsox. J.; Pa., 1834. Contua, McGaw v. Bryan, 1 U. S. Law Jour.,
9S.— Van- Ness, J. ; X. Y.. 18J2.

5. In proceodinjjs under tliis section, ihe United States will not I'O
substituted as plaintiffs, in place of tiie patentee. Wood v. Wiiliams,
Gilpin, 520. 5J4.— IIorKiNSOX, J.; Pa., 1834.

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 sliall
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
nevtrthehss, 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-hire 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 specificiition docs not contain
the whole truth, he has, under this section, a riglit to call for and liave
a copy of the plaintiff's specidcation, and no conditions can be imposed
upon the uso of such copy. Anon., 1 Opin., 376. — Wibt, Atty.-Gen.*
1820.

96 PATENT LAWS.

OBBOUCTB. ACT Or 1794, CHAP. 58.

2. Tlic provi!«o to this Roction cannot bo conmdrrcd ns ojioninjf to all
persona, indiscrunin.itoly, the right to (ii-mand copies of pnpors itjspcct-
fiig jMitcnts granted to others. As to otiicrs than a defendant, as pro-
Tided for in section G, it rests in the di-sc-rction of tlie department
•whether copies shall be furnished or refused. Anoiu, 1 Opin , 718. —
"VN'iRT, Atty.-Gen. ; 1820.

Section 12. An'I be it furtJier enacted^ That the act,
passed the tenth day of April, in the year one thousand
seven Imndred and ninety, inlitidcd "An act to promote
the progress of useful arts," be, and the same is hereby
repealed. Provid< J alircn/s, 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 p.itentces under the said act, their executoi-s,
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 after
the passing of this act.

Approved February 2l8t, 1793.

ACT OF 1794, CHAPTER 58.
(1 Statutes at Large, 393.)

[Ohnolete: RfptnUd hy Act o/1836, § 21.]

An Act supplementary to the act intituled " An act to

promote the progress of useful arts."

Be it enacted Inj the Senate and JL^nsc of liepresenta-
lives of t/ic U/iited States of America in Con(jnss asaeni-
hlcd. That all suits, actions, process, and proceedings,
heretofore had in any District Court of the Uniteil States,
under an act j»assed the tenth day of April, in the year
one thousand seven hundred and ninety, intituled " An

PATENT LAWS. 97

ACT or 1800, CIIAP. 26, § L 0B80LICTK.

act to promote the progress of useful arts," which may
have been set aside, suspt-ndt'd, or abated, by ri-ason of
the repeal of the said act, may be restored, at the instance
uf the phiintiir or defendant, within <me year from and
after the passing of this act, in the said courts, to the
same situation, in whicli they may have been, ■svlien tliey
were so set aside, suspended, or abated; and that the
parties to the said suits, actions, ))rocess, or proceeditigs,
be, and are hereby entitled to proceed in such cases, as
if no such repeal of the act aforesaid had taken place.
.Provided ahrai/s, That before any order or proceeding,
other than that for continuing the same suits, after the
reinstating thereof, 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 June 7th, 1794.

ACT OF 1800, CHAPTER 25.
2 Statutes at Large, 37.

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

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

08 PATENT LAWS.

OBSOUETK. ACT OF 1800, CHAP. 25, g I.

privileges p'vcii, inten<U'(l or j'ruvi.lfd to citizens of the
United Stall's, rts]n'rtiiiLj jt.vtcnts fur new inventions, dis-
coveries and in)j)rovenients, by the act intituled ''An act
to promote the progress of useful arts, and to repeal the
act heretofore made for that jnirposc," shall be, and here-
by are extended and given to all aliens who at the time
of petitioning in tlic manner prescribed by the said act,
shall have resided for two years within the Unitetl States,
■which privileges shall be obtained, used, and enjoyed, by
such persons, in as full and ample manner, and under the
same conditions, limitations and restrictions, as by the
said act is provided and directed in the case of citizens
of the I'nited Stati-s. Providrd alirai/a. 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 jierson duly authorized to administer
oaths before sucli patent sh:i!l be granted, that such
invention, art or discovery hath not, to the best of his
or her knowledge or belief, been knuvn or used either
in this or any foreign country, and that every patent
which shall be obtained pursuant to this act, for any
invention, art or discovery, wliich it shall afterward
appear had been known or used previous to such ap|»lica-
tion for a patent shall be utterly void.

1, Under tliis uct a forcipncr, though havinp resided wilhin tlia
United Slales for more than two years, could not have a patent for an
iavcnt.on operated by iiim in atiulher country before ho came here, aa
hn could not take tlie o;itli required by this statute. Dujdal'a Casr,
1 Opin , 33-.'.— Wuir, Alty.-(it,n. ; 18J0.'

2. IJy llio provisionH of iliis act, taken in connection with thoso of
the act of 17 '.i3. citizens and aliens are placed substantially upon tlio
Banio ground as to a rijrlit to a patent when the invention lias not been
known c used before it was patented. Iti both cases the right U to
bo tested by the Harno rule. Shuvo v. Cooper, 1 PcU, 310. — McLean,
J.; Sup. Ct., 1833.

PATENT LAWS. 99

ACT OP 1800, OHAP. 25, §§ 1-3. OBSOLETE.

.1. Where a person made an invention in Kt)p;lan<I. in 181.T or 1814,
and before coniiiii^ to this countrj' mailo known liis invention lo otlicra,
and Fhorlly nfter eoniin}; lioro <iisclosccl it, in lsl7. to an individual
here, and in 1M7 or IslH, tlic invention was sold in Kngland, and soon
ofler went into use there and in Fr.inoe, and subsequently, in 1822,
the inventor took out a patent here; ILld. that there had been such a
public use of the invention, withoiit an assertion ol' ri^lit on tlio part
of the inveutor, as rendered the puteut void. IbtcL, 318-323.

Sectiox 2. And be it farther enacted, That where any
person liaih made, or shall have made, any now invention,
discovery or improvement on account of which a patent
might, l»y virtue of this or the above-mentioned act, Lq
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 iull and
ample manner, and under tiic 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 application for a patent shall be
made by such legal representatives, the oath or aflirma-
tion, provided in the third section of the before-mentioned
act, shall be so varied as to be applicable to them.

Sectiox 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, ami any person without
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 saiil patentee by such patent, such
person so offending shall forfeit and pay to the said p:it-
entee, his executors, administrators, or assigns, a fum

100 PATENT I.AWS.

OOSOLETI. ACT OF 1800, CIIAP. 25, §g 3, 4.

equal to three times tlie aetual damajje (/>) sustained hy
suc!i jiali'iitoe, liis executors, adtiiinistrators, or ashigns,
fiOMi or by reason of sucli oflVnee, whieli sum sliall and
may be recovered l)y action (<•) on the ia«5e founded on
this and the above-mentioned act, in the circuit court of
the United States, having jurisdiction thereof.

(a) This icction gives an action alr.^itl^t nny one who shall "make,
doviso, iiS'», or Sfll." the tliiii;? patciilcd, and lakes the place of acctioQ
6 of the net of 179.'"., whicli gave an action a^'ainst any one who sliould
"make, devise, nnd upe, or sell." Tiiis change was made bccanse of
some donbt whether the language of .section 5 of the act of 17y3 did
Dot couple the making and us.uy together to constitute im otTenco, so
that making without u.sing, or using without m.iking, was not na in*
fringument. Wltittemore v. Cutter, 1 Gall., 432. — Sronr, J. ; Mass.,
1813. Bitins V. Jordan. 1 Drock., '.'.■>2.— Maksiiau., Cli. J.; Vii., 1813.

{b) 1. Under this section the jury find single damages, and the court
treble them in aw:jr<hug judgment. LoW':U v. Leais, 1 Mass., 1S5.—
Story. J.: .Ma.ss.. isi;.

2. rnder liiis .'■ection, if the jury fiml for the plnintiflT, they are to
find the actual damages sustained l>y him. The court will treble them.
Gra/ r. Jaiiifs, Vet. C. C, 403.— WASin.NT.TOX, J.; Pa^ 1817. E.ant
V. Ilttti-k, 3 Wash.. 422.— WAsnisr.Tox, J.; Pa.. 1818.

3. This Feetiim fixed the amount of recovery at three times the actual
damage sustained Trebling the damages, under the act of 1 33G. rests
with the diseroiion of the court. Guijon v. ScrreU, 1 Blatchf., 245. —
Xelsos, J. : N. Y., 1817.

(c) 1. This section gave jurisdiction only in actions on the ease;
Held, therefore, that a suit in equity, respecting a patent, in order to bo
cognizable by iJio circuit courts, must come withiu the piovisions of
tiie judiciary act of 1789, as to citizenship of parties, and lliat whcro
the parties were all residents of the .same Static, such courts had not
jurisdiction. Liiinjston v. Van Jn<jen, 1 Paine, 48, 54. — Livingston,
J.; N, Y., Hll.

2. This defect was afterwards remedied by tlie net of 1810, chnp. 19

Section 4. And be it /urt/nr enacted, That the fifth
section of the above-mentioned act, intitided "An act to
promote tlic progress of useful ails, and lo repeal the act
heretofoi e made for that purpose," shidl bo and hereby ia
repealed.

Approved Aj.ril ITth, 1800.

PATENT LAWS. 101

ACT or 1819, CHAP. 19.

ACT OF 1819, CHAPTER 19.

(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 hy the Senate and House of Representor
tioea of the United Status of America in Congress 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 l)y 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 by law in other judg-
ments and decrees of such Circuit Courts.

Approved February loth, 1819.

1. This act removed the defect that existed under the act of 1900,
by which the Circuit Courts did not have jurisdiction of suits in equitj,

102 PATENT I.AWS.

OOSOLETE. ACT Of 1832, CHAP. 162, §§ 1, 2.

except in actions on tho case. Livingston v. Van Ingen, 1 Paine, 64
(nolo).— Livingston. .1.; N. Y., 1811.

2. This act docs not enlarge or alter tlio powora of the court oror
the siiljcct-inattcr of the c;lu^o of action. It only extendi it.M jiirisdio-
tion to jMirtics not before fnllinp witliin it. It remove<l the olijcction,
thai prior to it, a citizen of one State could not obtain an injunction in
the I'ircuit Court for a violation of a patciit-riKht, n^'ainat a citizen of
the same State, and pave tlio jurisdiction, although tho parties were
citizens of the same State. SuUivan v. Red/ield, 1 Paine, 447, 448.—
TuoiiP.soN, J.; N. Y.. 1X25.

3. This act extends the jurisdiction of the Circuit Courts to all coses
at law and in ciiuit v, arising under the patent laws ; but there is
nothing in tho act which, either in terms or by necessary implication,
renders that jurisdiction exclusive. BurraU v. Jcwett, 2 Paige, 145. —
Valworth, Chan.; N. T., 18;iO.

4. Tho substance of this enactment, fo far as it relates to the subject
of patent-rights, is incorporated into section 17 of the act of 1836.
Stevens V. Gladdinr), 17 How., 455. — Clbtis, J.; Sup. Ct., 1854.

ACT OF 1832, CHAPTER 162.

4 Statutes at Large, 559.

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

Section 1. He it enacted hy the Senate and Ilouse of
Jifjyrcscntdtivrs of thi' United States of At/nrica in Con-
yre'<!**tsHi nihil d^ That it shall bt- tho fluty of the Secretary
of State, annually, in the month of January, to report to
Conj^ross, and to puhlish in two of the ne\vsj»aj)ors printed
in the fity of Washington, a list of all the patents for
discoveries, inventions, and improvements, which shall
have expired within the year immediately |»recedinj?, with
the names of the patentees, alphal»etie:illy arranged.

Section 2. And be it further enacted. That application
to Congress lo prolong or renew the term of a pntent,
shall be made before its expiration, and shall be notified

Latent laws. los

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

at least once a month, for tlirci' months before its presen-
tation, in two nt'svsj>a|)irs printtd in the city of Wash-
inp^ton, and in one of llic newspapers in which the laws
of the United States shall be published in the State or
Territory in which the patentee shall reside. The i)etition
shall set forth particularly the grounds of the application.
It shall be verified 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 a new grant, independent of the old, and the patentee was entitled
to the solo and exclusive bcnclit thereof, unlcpg the licensees or as-
signees had, by their original grant, secured to themselves by express
covonaut or grant, a ri<;lit 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 ihe original grant, was by means of private acts of Con-
gross upon individual applications. Wilson v. Rosscau, 4 Row., G85.

Nelson, J. ; Sup. Ct., 1845.

Section- 3. A7id be it farther 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 hun<lred and
ninety-three, or of any of the acts sujiplenuntary 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.

ACT or 18:j2, cdap. 1C2, § 3.

intention, been 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 tlie said inventor for the same
invention for the residue of the period then unexpired, 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^ovidul, /toircrcr, That such
new ])atcnt, so granted, shall, in all respects, be liable to
the same matters of objection and defence as Any original
patent granted under the said first-mentioned act. Hut
no public use or privilege of the mvention so patented,
derived from or after the grant of the original patent*
cither 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.
Api)roved July 3d, 1832.

1. Tho provipion of this section is fluflccptiblo of but one construe-
tion, and that is. t)int the pntcntco may Rustoin an action for any use
or viohtlion of his invfution, nfi«r tln> pnuu of the now jiateiit. No
prior use of a dcfc'ctive patent can nuthorizo the use of iho invention
after tho emanation <>f tho renewed patent. SNmp.son t. WMlchester R.
li., i How., 402.— McLean-, J.; Sup. Ct., 18»5.

2. To frivo to the patentee tlie fruits of liis invention was its object,
whicli would tie defeated, if a right could Ix* founde<i on a uAe sub.so-
quunt to the ori^'innl patent, and [irior to the renewed one. Ihid.. '102.

3. Tlie provino of tlii.M hcctinii i.s in aflinnanco of tiio principles laid
down by the Supreme Court in Pennink v. IHaUxjuf. J IVl., 1 (IS'J.')); in
Grunt y. liaymotul, IJ I'et., 241-215 (1 n.TJ) ; ftn<i in Show v. Cooper, 7
Pet, 314, 315 (18:t3j. McClurg v. King-land, 1 How., 207.— IUldwix,
J.; tiup. Cu, ItiiJ.

PATENT LAWS. 105

ACT or 1832, CHAF. 203. OBSOLETI.

4. Ah the exception in tlie proviso is limited to the use of the inven-
tion under a special liot-nse tifter the grant of the original patent, it
leavi'H tlic> use j)ri(ir to the :ipi)lication for sucli patent clearly obnoxious
to the principle cstablislied in I'mnnck v. Diaioijue, 2 Pet., 1 ; whereby
the patent would become void. Ibid., 207.

ACT OF 1832, CHAPTER 203.
^ 4 Statutes at Lar(;e, 577.

[Obsolete: Repealed by Act (j/lSSe, § 21.]

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

Be it enacted, hy the Senate and House of Mejyresent-
atives of the United States of America in Congress
assembled. That the privileges granted to the aliens de-
scribed in tlie first section of the act, to extend tlie 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 seventeenth, eighteen hun-
dred, 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 from 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*

lOe PATENT LAWS.

ni fOIOB. ACT or 1836, cuap. 357, g 1.

for any period of six months after such introduction shall
not continue to be jiuMicly used and api)lied in the
United States, or in case of failure to hecome a citizen of
the United States, ap^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 1836, CHAPTER 357.

6 Statltes at Labge, 117.

[This Act still 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 jturpose. (a)

Section 1, Jie it enacted by the Senate and House of
Jtfpresentatives of the United States of America in Con-
gress assc>Hh/t(f, That there shall be establislied and at-
tached to the Department of State (A) an office to be
denominated the Patent Office, the chief officer of which
shall be called the Coiiiinissioner of Patents, to be ap-
pointed by the Presitient, by and with the advice and
consent of the Senate, whose duty it shall be, under the
direction of the Secretary of State, to s\iperintend. exe-
cute, and perform all such acts and things touching 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 custody of all the books, records, papers,
models, machines, and all other things belonging to said

PATENT LAW8. 107

ACT OF 1836, CUAP. 357, § 1. IN FORCE.

office. ■ And said Commissioner shall receive the same
compensation {<-) as is allowed by law to the Commis-
sioner of the Indian Dt-partment, 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 which have prevailed in Kngland. And though
the known and settled construction of the Enplish .statute of Monopo-
lies, by tlieir courts of law, has not been received b)' our courts with
oil the wei;rht of authority, yet the construction of that statute by the
English courts, and the principles and practice which have regulated
the grants of English patents afl'ord materials to illustrate our statute^
Penmck v. Dialogue, 2 Pet., 18.— Story, J.; Sup. Ct., 1829.

2. The intention of tlie patent laws is to promote the progress of the
useful arts, by the benefits granted to inventors, not by those accruing
to the public, after the patent has expired, as in England. Intended
for their benefit and security, the law should be construed favorably
and boneticiallv in favor of patentees. Whitney v. Emmett, Bald.,
3-Jl-32:5.— Baldwin. 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 tlieir inven-
tions for the time mentioned in their patent. It is the reward stipu-
lated for the 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 thev have been passed, and should be fairly executed by the
United States. Grant v. Raymond, 6 Pet., 241, 2-l_'.— Marshall, Ch.
J.; Sup. Ct., 1S32.

4. Tiie 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. Ihid., 24,S.

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 witliiu the scope of national protection. Hence
it has always been the course of the American court.s — and latterly of
the Engl sli — to construe jiatents fairly and liberally, and not subject
them to auv ovcrnice and critical refinements. Amts v. Howard, 1

108 PATENT LAWS.

IN rORCB, ACT or 1836. CHAP. 367, § 1.

Suran 485— Story. J.; Mo.Hs.. 1833. Blanctuird v. Sproffue, 3 Samn.,
6:i9. 510. — Stobt. J. ; Mass., 183!>.

G. The patent law jrives to iiiventora a monopoly, but not in nn
otlious sense. It liikos notliinjr from the i-ommunily at larpc, but
Bccuros to tlioni tlic preatoat licnelits. To scoiiro to inventors the
ronmnenition for their time, inpeniiiiy, nnd expi-nse, ii liberal construc-
tion should bo piven to the law. liriKik.s v. BirkneU, 3 .Molxjan. 4:!7. —
McLean, J.; Ohio, 1844. Parker v. JIaworth, 4 Mclean, :{72.— Mc-
Lk.is, J.; 111., 1848. Parker V. StiU.i. 5 McLean, 54, 6G.— Leavitt,
J.; Ohio, 1849. Bhomer v. Slollrij, 5 McLean, 102.— McLean, J.;
Ohio, 1850. Parktr v. Sears, MS.— Giiier, J.; Pa.. 1850. Go>d\iear
V. RaUroads, 2 Wall., Jr., 363.— Grier. J.; N. J., 1853. Allen v. Ilnn-
<«•, G McLean, 300.— McLkax. J. ; Ohio, 18:)r..

7. Patents are not to be treated as mere monopolies, odious in the
eves of the law, and therefore not to be favored; nor are they to be
construed with tlie utmost ripor, as strictissimi juris. Ames v. Howard,
J Sumn., 4s5. — Stort, J. ; Mass., 1833.

8. The patent laws are not made to eucourape monopolies of what
before belonged to others, or to the public — which is the true idea of a
monopoly — but the desipn is to enc-ournpo penius in advancing tlio
arts, through Fcienco and ingenuity, by protecting its productions of
what did not before exist, and of what never belonged to another per-
son, or the public. DaioU v. Brown, 1 Wood. A Min., 57. — WoODBiaY,
J.; Mass., 1845.

9. The patent acts have been passed for the promotion of the u.sefnl
arts — for the ultimate benotit of the republic, and not for the solo
benefit of inventors and patentees. It is for the ultiniate benefit of the
public, that privileges arc granted to inventors, allowe<l to operate, and
protected fur limited times for their direct l>enefits. Daij v. I'non Hub.
C'K, 3 Blatchf., 500.— HaluJ.: N. Y., 1856. KendtUi y. Witfor, 21
JIow., 327, 328.— Daniel, J.; Sup. Ot., 1858.

10. The power granted by the patent laws is domestic in its chame-
ter, and neossarily confined within the limits of the Unite<l StnleH.
The patent acts do not and were not intended to o|>erate beyODd the lim-
Itaof the United Slates, and the i>ateiitce's ripht of projHTly and exclu-
sive u.He cannot extend beyond tlio limits towiiich the law itself is con-
fined. Brown V Dufht^ime, I'J How., 19:<.— Taney, t"li. .1. ; Sup. Ct.. 1856.

S-KJ nl.H'i I'KJFar 1'at. Cksks, title Patent, P. 1; Statite.s B. 3.

(h) The Patent Ofllce is now attached to the Department of the In-
terior, and the SecreUiry of the Interior i>erforms nil the duties con-
nected therewith formerly devolving uiK)n the Secretary of Slate. Act
of 184;». § 2.

(d) The franking jrivilegu was annulled by iho " -Vet to rodu(>o the
raU-s of poHlape,'" aj-piuvod March 3d. 1845; but was again restored
by the "Act to etitablish cerUin post routes, nnd for other purposes,"
approved March 3d, 1847. Sec 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 Slid office, an inferior offircr, to ))e aiipointcd 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 Vie called the Chief C"l<;rk of
the Patent Othce ; who in all cases during the necessary
absence of the Commissioner, or when the said principal
office shall become vacant, shall have the change and
custody of the seal, and of the records, books, papers,
machines, models, and all other things belonging to the
said office, and shall perforin the duties of Comujissioner
during such vacancy, {b) And the said Commissioner
may also, with like approval, appoint an examining clerk,
at an annual salary of tifteen hundred dollars ; two other
clerks, at twelve hundred dollars each, one of whom hhall
be a competent draughtsman ; one other clerk, at one
thousand dollars ; a machinist at twelve Jiundred 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
disqualitied and interdicted from acquiring or taking,
cxcejit by inheritance, during the period for which they
shall hold their appointments, resi»eclively, any right or
interest, directly or indirectly, in any patent for an inven-
tion or discovery which has been, or may hereafter be,
granted-

(a) Salary increased to $2,500 by act of 1861, g 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 frum deatii or resigniilion. Woodaorth v. Hall 1 Wood.
£ Mln., 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 collat-

110 rATENT LAWS.

IX FORCE. ACT Of 183«, CIUP. 367, §§ 2-4.

crallv. if it be Bliown thnt the person certifying is in the public dis-
chiirpc of tliosc duties. W'o'idworth v. JlaU, 1 Wood, it, Min., 255. —
WcKJl'DlKY, J. ; Mass, IStO.

3. The cortilioatc to a patent made by a person as "octinff rommia-
sioner," is lejrai and sulTicient. \\'ils(/n v. L'assi:au, 4 How , 603, CGl. —
Nklsox, J.; Sup. Ct., 184:>. Wooduorth v. Hall. 1 W(Kx1. i Min., 204.
— AVooi'niRV. J.; Mass., 1846. York db Md. K. li. v. Winamp 17 How.,
41.— (.Ami-uki.l, .r. ; Sup. Ct., 1854.

See also 1iii;e.st Tat. C^.ses, title Commissioner or Patkxts, G.

(r) 1. As to tiie appointment of additional examiners, seo act of 1837,
§ 11 ; act of 18.'!9, J^ 1 ; act of IS.^x;, ^g 9, 10; and act of ISC.O, g 6.

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

Sectiox .3. Ami hi' it flirt fur enacted, That the said
principal oflin-r, aii<l ovory other jierson to l)e ajipointed
in the said oftice, shall, before he enters upon the duties
of his office or appointment, make oath or affirmation
triUy and faithfully to execute the trust committed to
him. And the said Commissioner and the Chief Clork
shall also, before entering upon their duties, severally
give bonds, with sureties, to the Treasurer of the United
States, the former in the sum of ten thousand dollars, and
the latter in the sum of five thousand dollars, with condi-
tion to render a true and faithful account to him or his
successor in office, quarterly, of all moneys which shall be
})y them respectively recciv('(l for duties on p.itents, and
ffjr copies of records and drawings, and all otlier moneys
received by virtue of said office.

Se<tion 4. And be it further enacted. That the said
Commissioner shall cause a seal to be made and provided
for the said oflice, with such device as the President of
the United States shall approve ; and (•oi>ies of any
records, books, papi-rs, or drawings, belonging to the
saiil oflice, under the signature of the s.aid Commissioner,
or, when the office shall be vacant, imder the signaturo

PATKNT i.AWS. Ill

ACT OF 1836, CHAP. 357, § 4.

of the Chief Clerk, with the saitl seal affixed, shall bo
competent evidence in all cases in wliieh the original
records, books, papers, or drawint^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 roquiretl to produce tlie originals. Brooks v. Bick-
ndi, 3 McLean, 43(J.— McLeax, J.; Qiiio. 18-14

2. Certified copies of papers and drawings, on file in the Patent
OflSce, must be received in evidence when oflcred. If they are dis-
cordant, they may destroy the eflect of each other; but they need not
concur in every particular. Emerson v. Ilog'j, 2 Blatchf., 12. — Bktts, J. ;
N. y., 1845.

3. Certified copies of papers in the Patent OflBcc are prima facie evi-
dence of the genuineness of the original, on file, and absolute evidence
of the correctness of the copies from the records. Parker v. Haworth,
4 McLean, 371.— McLeax, J.; III., 1848.

4. A certified copy of an assignment of a patent, from the Patent
OQJce, is prima fwtt evidence of the genuineness of the original. Lee
V. Blandy, MB.— McLean, Leavitt, JJ. ; Ohio, 18G0.

5. A former and defective certified copy of a patent may be corrected
by a full and corrected certified copv. Brooks v. Bkkn'etl, 3 McLean,
434.— McLean, J. ; Ohio, 1844. Woodworth v. HaU, 1 "Wood. & Min.,
260.— WouDBi-KT, J. : Mass., 1846.

{b) 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 purjwae for which asked. The
pohcy of the law rather requires than forbids that coiiies should bo
given when asked for. Anon., 1 Opin., 171. — Pinckxey, Atty.-CJen. ;
1812. "^

(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., 456.— T.vNEY, Atty.-Gen. ; 1831.

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

112 PATENT LAWS.

ACT or 1836, CHAP. 357, § 6.

Section 5. [Enlarged by act of 1837, § 6.] And be it
further enacted, Th:it :ill patents issued from said oflSce
8liall be issued in the name of the United States, and
under the seal of said ulliee, and be si<;ned by the Secre-
tary of State (a), and countersi,c;ned by the Commissioner
of the said office, and shall be recorded, together with
the descriptions, speeitications, 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 :ind exclusive right and liberty of making, using,
and vending to others to be used, the said invention or
discovery (e), referring to the specifications 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. (/)

id) Now sifi^ned by tlie Secretary of the Interior. Act of 1849, § 2.
b) The phrasooluKV of this act, in rcsjwct to what the palout shall
contain, was chanjrcd from that contained in tlie acta of ITJO and IT.fS,
in order to c<>nf<jrin to tiio ucntfo and constrnction under tlie act of
1793 (of inseriiiiK the whole descriptive i>ortion of the polition in the
patent), aa Biich course hoinotimes was niisundorstood, and led to mis-
constructions. Jlogg V. Emerson, 6 How., 482. — WoODHiiRV, J. ; Sup.
Ct., 1H.17.

(d) 1. The terra of the patent is now extended to seventeen years.
Act of IStil, g i»;.

2. A patc-nt may bo issued for a less term of years than fonrtoen.
The reHtrietion is C'n the JiuLrimuni only, not on the miniinuiD. Sulli-
van's Case, Opin., Uilpin's Kd., 1841, 108.— WiiiT, Attv.-(;en.: 181S.

3. A patentee under tliis Koctiim is not obli^'ed to claim the whole
fourteen years. He nny waive his claim to a part of tlie tenn. in favor
of the public, by antodoling il, or he may lake a patent for u term less

PATKNT LAWS. 11.1

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

than fourteen years, or ho may Boek protection apainst ctranpers for six
months j>reviou8 to tlie issue, if in that time he lias made application
and is seeking in good failli and with reasonable diligence lo perfect
his ppooilications. Cushmau, Ex parte, MS. (App. Cas.) — Dl'.nlof, J .;
D. C, 1«53.

(') 1. The exchisive grant of a patent is the construction and use of
tlio tiling j)atented. The patent law protccUs 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. Ihid.,
297. Simpson v. »7/so/i, 4 How., 711.— Nki.son, J.; Sup. Ct., 1845.
Goodyear v. The Railroads, 2 Wall., .Ir. — GlUEit, 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 i.s the creature of the statute, which also prescribes the
remedy for its violation. Dudley v. Mayhew, 3 Comst, 13-17. — SxEuxa,
J.; N. Y., 1S49.

4. The fact that a party has a patent, giving liim the exclusive right to
make, use, and sell a particular medicine, does not confer upon him the
right to practi.se as a physician, and use 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.
Staats, 15 Wend., 393. — Nelson, .1. ; X. Y., 1.^30.

5. A party has not neccssaril}- a right to use an invention, in any
State, merely because he has a patent for it under the United States.
Yannaniw Paine. 1 Harrington, 08. — 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, EM. that V. was not
entitled to any relief by way of injunction or otherwi.<e, for any alleged
use of his invention in the State. Ibid., G9.

7. The Commissioner of Patents, in issuing letters patent, does not
warrant the same, nor does the patent bind the Government more than
it docs private persons; but the validity of such patent is open to
inquiry, either in whole or in part, whether at the instance of private
persons or of the Government. A patent does not conclude anybody.
Mortons Ani.tsthet'.c Patent, 8 Opin., 276.— Cushino, Atty.-Gen.; 1>.'(6.

8. Letters patent issue subject to all legal objections that may be
brought against them. Shreeie v. United States, MS — LoRiNO, J. ; Ct.
Claims, ls.')9.

9. In using the word patent, it is to be understood as including the
patent, the specilication attached to it, with the model and drawin/s in
the Patent Otlico. Whitney v. Ea.mett. Bald., 314. — Balijwix, .1.; I'a.,
1831. Jlo'jg Y. Einer6un,,ii How., 47S, 482, 485. — Woodbcry, J.; Sup.
Ct., 1S47.

10. Under the act of 1790, a patent was made prima fucie evidence;

114 PATKNT LAWS.

VS FOnCB. ACT or 1836, CHAP. 357, §§ 5, 6.

thnt act wns repealed by the not of 179:^, and that provision was not
re-enacted in il. Himu-o ft patent was not received in courts of justice
as even p'-ima facie evidence that the iiivenlion patented was new or
useful, but tiio piainliff was bound to i)rovo tliese facts in order to make
out his case. But tlie act of l.s3(*) introduced a new Hvstein, and under
it — its intpiisition and examination — a patent is received n& prinui Jace
evidence of tlio truth of the facts staled iu it. C»ruin<j v. Burden, 15
How., 270, 271. — (jRlKit, J. ; Sup. Cl., 1 853. AUen v. IIuiAt, G McLean,
304, 305.— XIrLKAX. .1.; Oiiio, 1855. T,:Me y. Plidjs. 1 McAllister, Jit.
— McAllistek, J.; Cal., Ib55. Cahoon v. King, MS.— Cufkoud, J.;
Me., 1859. .

(/) Under the patent laws since 1836, the specificaUon is always
nnneiod to and forms a part of the letters patent. PHts v. Wliitman, 2
Storv, G21.— Story, J.; Mass., 1843.

See also Digest Pat. Cases, title Patent, D. 1, 2 ; E., II., I., P., 1, 2.

•

Sectiox C. And be it further enacted. That nny person
or jicrsons, haviit^ discovered or invented any new and
uselul art {(i), machine (/>), mamitactnre, or composition
of matter (c), or any new and useful improvement ((/) on
any art, machine, maimfacture, or composition of matter,
not known or used by others (c) 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, witl»
his consent or allowance, as the inventor or discoverer;
and shall desire to obtain an exclusive property tliereiii,
may make application, in writing, to the Commissioner of
Patents, expressing such desire, (</) and the Commissioner,
on due j)ro(efding8 had, may grant a patent therefor.
But before any inventor shall receive a patent for any
Buch new invention or discovery, he shall deliver a writ-
ten description of his invention or discovery, and of the
manner and process of making, constructing, using, and
compounding the same, in such full, clear, and exact
terni<, avoiding umiecessary prolixity, m to enable any
pcrSMii skilled in the art or s<-ieiice t<> which it appertains,
or with which it is most nearly connected, to make, con

PATENT LAWS. 115

Acr OF 1836, CHAP. 357, § 6. IK FOncE.

struct, compound iiiid use the s.ime (/*) ; and in case of any
raachino, lie sli:ill iuUy explain the ])riiiciple and the
several modes iij which he has contemplated the applica-
tion of tliat principle or character by which it may l)e
distinguished from other inventions (/) ; and shall par-
ticularly specify antl point out the part, improvement, or
combination, which he claims as his own invention or
discovery. (_/) lie shall, furthermore, accompany the
whole with a drawing, or drawings (A), and written
references, where the nature of the case admits of draw-
ings, or with Bpecimens of ingredients, and of the compo-
eition 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 make oath or affirmation (;//) that he does
verily believe that he is the 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, (u)

(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 spccilicatiou,
and illustrated by a machine, or model, or drawings, when of a charac-
ter 80 to be. It means a useful art or manufacture, which must be
described with eocaotness 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.

uc roRca act or 1836, chap. 351, § 6.

2. In the Enpliah patent laws the word "art" is not used at all. In
ours, as wtll as in our Cun^•lilution. tlie word art means a useful art,
or a manufacture whicli is l>oneftcial. Ibid.

3. A process, « nomine, is not the puhject of a patent, under our
laws. It is included under the general term "useful art, " and an art
niav require one or more processes or maihme.o, in order to pro<luco a
certain result or raaiuifacture. Comiivj v. Ihtrden, 15 IIow., 267. —
Gkikr, J.; Sup. Ct., 1«53.

See also Pioest P.\t. Cases, titles Art; Process.

(t) 1. The term machine includes every mechanical device or combi-
nation of mechnuical powers and devices to perform some function and
produce a certain eflect or result. Cortiituj v. Burden, 15 How., 207. —
Gkier, J.; Sup. Ct., 1H.')3.

2. A patent canuot be for the function or abstract effect of a ma-
chine, hut only for the machine itself. Ihid., 2«8.

3. A now process is usually llio result of discovery ; a machine of
invention. Ibid., 263.

4. One may discover an improvement in a process, irrespective of
any particular form of machinery; and another may invent a Ubor-
savinjj machine, by which the operation or process may be performed,
and each niav t>e cnlilled to a patent. Ibid.. 2r>S.

6. The word "machine'' in the statute includes new coml.inationg
as well as now organizations of mechanism. WintennuU v. liedingUm,
MS. — Wilson, J.; Ohio, IsoO.

See also Digest P.\t. Cases, title Macimxes, A.

(c) 1. It is not necessary that every intiredient. or that any one In-
gredient used by the patentee in his invention, .should Ik) now or im-
used before, for the purpo.se intemled. ■ The true question is whctlier
the combination of materials used by the patentee ia subatuulially new.
Jiyau V. (J<-odain, 3 Suinn., j18.— SroilV, J.; Mas.s., lS3a.

2. There is a wide difference between the invention of a new method
or process, by which a known fabric, i)roduot, or manuf;uturu is pro-
duced in a better aii<l chcajxT way. and the discovery of a new imiu-
pound, HubHUiuw, or manufacture, 'having qualities never found U) exist
together in any othi-r material. Gvodytar v. 77k: liailroada, 2 Wall,
Jr , 360 — <;uiKii. J ; X. J , 1853.

3. In the first case iho inventor can patent nothing but his process,
and not his c<.mp<«titiou of matter; in the latter, both are now and
original, and both pateutablo ; not severally, but as one discovery or
invention. Ibid., 3til.

So© hL'<o DuiKsr Pat. Cases, titles Composition op .Matteu; Manu-

FACTCBE, Auri'LEOK.

(d) 1. An "improvi'd machine," and "an improvenient on a ma-
chine," aro i(ubBUuli.dly ihu same. li-irreU v. Ila'L I Mass., 476. —
SroiiY, J.: Maiw., liH. Evans r. Ektton, 3 Wheat., 517.— Marshall,
Ch. J.; Sup. a., IhlM.

2. An Improvement has essential reference to a aubject-mattor to bo

PATENT LAWS. 117

ACT OP 1836, CHAP. 357, § 6. IN rOBCE.

improved. It is not nn oripinal, but embraces, and either adds to or
alters, tlio nriirinal. I'aje v. Fvrry, MS. — Wii-KlNs, J.; Mich., 1857.

See also DicK.sr P.\t. Case.s, title Imi'Kuvkmknt.^.

(e) 1. The words '■l)y dthcMS." in this Hci-tioii, were probably added
by way of e.\planatii)n of tiic doubt formerly entertained on the sut)-
ject, wiietlier a u.'^c l)y the paloiitee himself of lii.s invention before
application, would deprive him nf a riplit to a patent; and \/o coulirra
the decision in Pennuck v. I>ml'>(jue, 2 Pet., 18-22, tliat a prior use, to
invalidate a patent, must have been by others than the inventor. Heed
v. Cutter, 1 Story, 597. — Story, J.; Mass., 1H41.

2. Sueli words do not denote a plurality of persons by whom the uso
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 knowledjje or uso existing in a manner accessible to the pub-
lic. Gayl'T V. Wilder, 10 How., 197.— Tanky, Ch. J.; Sup. Ct., 1850.

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

(/) 1. Under the Constitution and laws of the United States re-
spectinji patents, discovery is synonymous with iniention. Kemper, Ex
parte, MS. (App. Cas.)— Craxcu, Ch. J.; D. C, 1841.

'2. An invention resting in mere theory, or in intellectual notion, or
imperfect e.\pcrimcnts, and not reduced to practice, is not patentable.
Seedy. Cutter. 1 Story. 599. — Stohy, J.; Mass., 1841.

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

As to what is invention, see Digest Pat. Cases, title Iktextio)?. A.,
and the several titles, Art; Composmox of Matter, A.; Comuixa-
Tiox; Discovery; Imhrovemexts, A. ; MACUixEaA. ; Maxckactlhb,
Article of ; New Ahplicatiox ; Prixcii'LE.

(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 neccssarj- and dependent connection with each
other, and all co-operate in attaining the end sought.

{h) 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. — Washixgto.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 be able not only to construct but to
use the machine for a useful jmrpose. Lippincott v. Keily, 1 West. Law
Jour., 514. — iRVix, J.; Pa.. 1844.

3. No description will fulfil the demands of the law but such as ia
of record, and of which all the world may have the benefit. Dixon v.
Moyer. 4 Wash. 73.— Wasuixotox, J.; Pa., 1821.

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

118 PATENT LAWS.

ACT or 1836, CBAP. 357, § 6.

expiroil, and the invcnlion Incomes public pro|>orty, such means of
InroriDation niiiy l)e accessible through the Patent Otlifo as will enable
others to avail themselves of its benefits ; and 2, that while the patent
is in force, others maj- be informed of the precise claim of the patentee,
and not ipnorantiv infringe his exclusive ri^fht. Parker v. StiUs, 5
McLean, 5a.— Leavitt, J.; Ohio, 1849. Brooks v. liirkmU. 3 McLean,
4.tl._McLEAS, J. ; Ohio, 1844. Jtulson v. JJoore, MS. — Leavitt, J.;
Ohio, isr.o.

5. Ihit the specification need not particularly describe the operation
of mechanism which is well known by persons acquainted with the
art Kneass v. Schnylk-ill Bank, 4 Wash.. 14. — Wasiiixgtux, J. ; Ta.
1820. Brooks v. BickneU. 3 McLean, 447, 448.— McLean. J. ; Ohio,
1844. Emerson v. IIo<jg. '1 Blatchf., 9.— Betts, J.; X. Y.. 1845.

See also Dkjest I'at. ('asj-:s, titles Composition of Matter, B.

SPBLiriCATIOX, B. ; lMI'Itl)VE.MKXT, B.

(i) 1. This section seems clearly to show that a jmtentoe may law
fully unite in one patent all the modes of apiilyinir his invention con
templated, and all the difll-rent sorts or modilicaiious of macliinery, by
which it may be applied, and if each were new the patent would cover
them all. Wyttli v. .^tone, 1 Story, 2I"2. — Stokv, J.: Mass., 1840.

2. It is the duty of an inventor to describe in his specitication the
several diflerent modes or devit-es or modifications known to him of
?iis inventiou. Sargent v. Carter, 11 Mo. Law Kep., G55. — Clutis, J.;
Mass., I85.S.

t>ee al.<o Digest Pat. Cases, title Machines. B.

(j) 1. The summing up or claim is conclusive upon the right and
title of the patentee. Wydh v. Stone, 1 Storv, 285. — .SruUY, J.; Mass.,
1840.

2. The claim is tlie most material part of the spocificatiou. Many v.
Jogger, 1 Blatdif, 37H.— Nki.S()N. J.; N. Y., 1848.

3. Although a patentee di>es not e.\i)ressly claim equivalents, ho is
undcrsiuod tu embrace them, and in cuutcmplation does embrace them.
Byaui V. Farr, 1 Curt., 203. — Ciiuis, J.; Mass, IS.VJ.

See also l»l(i^:ST Pat. ("a.se,s, title Patents, P. 5.

(k) 1. Drawings annexed, and referred U) in the 8|)eciflcation. con-
stitute A j)art thert-of ; and they may be resf)rted to to aid the descrip-
tion, and to distin;ruish the thing patented from other things known
before, /iirfc v. Sawyer. I Mass., 9. — SiORV, .1.; Mass, 1.S2.J.

2. KeferenccH t»> the drawings in the H|H'cilication are not retiuisita
to the validity of a patent, unless they are necessary loan underst.and-
ing of the inventinn. Broths v. liickneU, 3 Mclx-an, 2i'>l. — .McLemc, J.;
Ohio, 184.J. W'liahburn v. Gould, 3 Story, 133.— Siuuv, J.; Mas.s.. 1S44.

3. The descripiion of a machine or improvement, accompanied by •
drawing, may, in many coses, bo understood without refercnoes.
JlAd., 202.

4. The drawings may bo signed by the inventor, or by hia attorney
(or him. ilnoa., MS.— Black, Ally. -Gon.; 1859.

PATENT LAWS. 119

ACT or 1836, CHAP. 357, § 6.

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

6. Drawiiiffs siioiilfl be in dupiicalo, twenty inches by iiftocn in size;
one on tliick drawinjr-papi-r, coli)re<i and shaded, and thi> other on
tracing-cloth, and should be in persiwclive, with detached sectional
and plane views.

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

t>eo also DioKST Tat. Cask.s, title Duawixos.

(/) 1. Models and drawings are a part of the letters patent, and may
be resorted to for clearer information respecting the invention de-
scribed in the specilication. Iltgg v. Ein^rson, 6 How., 485. — WooD-
UfRY, J. ; Sup. Ct., 1847. St'jihens V. Salisbury, MS. — MORSELL, J.;
D. C, 1H55.

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 lieight, unless a larger model ia necessary to exhibit
the invention.

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

See al.so Dioest Pat. Cases, title Models.

(wi) 1. The Uiiting 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. Whitt'Muore v. Cutter. I Gall., 4.'?3. — Story, J.; Mass., 181."?.

2. The oath extends to all the schedule or specification no less than
to the title of tiie invention. Hogg v. Emerson, 6 How., 482. — Wood-
bury, J.; Sup. Ct., 1847.

3. The declaration admitted under the English law cannot bo sub-
stituted in place of the oath. Aiion., i Opin., 532. — Gilpin, Atty.-CJeu. ;
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 cpf ls37, g 13.

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

See also Digest Pat. Cases, title Oath.

(n) 1. The act of 1836, sections fi 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. Sinitk v. Elg, 5 McLean, 84. — McLean,
J. ; Ohio, 1840.

2. The things specified in tliis section are prerequisites to the grant-
ing of a patent, and luiless those prerequisites are complied with, a
party sued for an infringement of the patent may show that thej' have
not been complied with, and in that mode defeat the action of the sup-
posed inventor. Jx'aiisoin v. Mayor, d'c, of Xew York, MS, — Hall, J. ;
N. Y., 185G.

120 PATENT LAWS.

W FOBCB. ACTT Of 1836, OHAP. 357, g 1.

Section 7. [Amended by act of 1839, §§ 7-11: repealed
in part by act of 1839, g 12 ; aiul act of lf^G3, § 1.] And
be it fiirt/ur t luirtcd. That, on the tiling of any such ap-
plication, description, and specilication, and the payment
of the duty hereinafter ])rovido<l, the Commissioner shall
make or cause to be raa<le, an examination («) of the
alleged new invention or discovery ; and if, on any such
examination, it shall not appear to the Commissioner that
the same had been iiiventtd or discovered by any other
person in this country prior to the alleged invention or
discovery thereof by the applicant, or that it had been
patented or described in any ]irinle<l 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 (Z^), if the C'omtnissiuner shall deem it to
be sufficiently useful (<•) and important, it shall be his
duty to issue a i)atent therefor, {d) But whenever, on
such examination, it sliall ajipear to the Commissioner
that the applicant was not the original and lirst inventor
or discoverer thereof (<), or that any part of that which
is claimed as new bad before been invented or discovered,
or patented, or descrPx'd in any ])riiited j>ublication in
this or any foreign coinitry, as aforesaid, or that the
description is defective and insufficient, he shall notify
the ai»pli(:iiit thereof, giving him, Itriifly, such informa-
tion and rtfcrences as may be useful in judging o{ the
propriety of renewing his application, or of altering his
Bpecilication to <mbraco only that part of the invention
or dis(N»very which is new. {/) In every such cawe, if
the applicant shall elect to willidraw his application, ro-
lincpiisliing his elaim to the model, he shall be entitled to
receive back twenty <lollars, part of the duty required by

PATENT LAWS. 121

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

this act, on filing a notice in writing of such clcttion in
the Patent Office, a copy of which, certified hy the Com-
missioner, shall be a sufficient warrant to the treasurer
for payinjj^ back to the said apj)licant the said sum of
twenty dollars. (//) Hut 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 recpiirod to
make oath or affirmation anew (A), in manner as afore-
said. And if the specification and claim shall not have
been so modified as, in the opinion of the Commissioner,
shall entitle the applicant to a patent, he 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 ])at-
euted. 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

122 PATENT LAWS.

ACr OP 183G, CHAP. 357, §

possess relative to the matter under their consideration.
Aiid on an examination ami otmsitlcration of the matter
hy such board, it shall be in their power, or of a majority
of them, tOiTeverse the deci^iion of the Commissioner, either
ill whole or in })art, and their opinion beint; certified to the
Commissioner, lie shall be governed thereby in the further
proceedings to be had on such application : Provided^
hoicever, That before aboard shall be instituted in any such
case, the applicant shall pay to tlie credit of the treasury,
as provided in the ninth section of this act, the sum 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 ro-
lating to t}>e question whether a patent shall issue. Pomeroy v. Con-
nuwn, M.S. (App. C:i8.) — Cranch, Cli. J. ; D. C. IS-i'i. Perry v. Cor-
nell, MS. (.\pp. Cas.)— Crancii, Ch. J.; D. C, 1847. Sedey, Ex parte,
M.-^. (App. Cas.)— MoRSEi.l., J.; D. C, 185:{.

See also DkiI'^it Pat. Cases, title Apj'licatios for Patent, A.

(b) 1. .\n inventor will not be lioprived of tbe iM-nofit of his inven-
tion and a riglit to u |)atenl, by a use t>f his invention Uloro his appli-
cation for u palout, williout his consent and against his will, and with-
out anv kuhta or misconduct on his part. Pierson v. KigU- Strew Cn.,
3 Story, 407.— Story. .1.; R. I., 1814. Fry .t- Steky, Ex parte, MS.
(App. ('as.)— MoHSKLL, J.; D. C, 1869.

2 The provisions of sections 7 and 15 of the oct of Ifi.Trt, introdnci^d
an important modification into the law of patent.-*, designed to protect
the Americ.in inventor againBl the injustice of being thrown out of the
fruits of his ingenuity by the existcmv of a secret invenli<ui or di.ocf.v-
ery nbrond— that is, a dixcovery not patented, and not descril>ed in any
pr'inled publicilion. Anim.. 5 Opin.. 21.— TolCET, Atty.-CJen.; lH4a.

A. If the H|)pli<ant is an original i.vcntor, and in a condition to mako
the oath required, the act requires the rommis«ioner to issue the pat-
ent, and Iho courtd dcdaro it valid, and caUblish the American right

PATENT LAWS. 128

ACT OF 1836, CHAP. 357, § 7.

to the exclusion of the foreign discovery, which has not, in either of
tlie modes indionted by llio net of Congress, been comniiuiiciitod to the
public. Ibid, '21. Also Coleman \. Lks'^. MS. — Leavitt, J.; Ohio,
1859 Judson v. Cope, MS. — Leavitt, J ; Ohio, 18t;0.

4. To fonstitiito a prior invention, the party alleged to Jiave pro-
duced it must have proceeded so far as to have reduced liis idea to
practici-, and embodied it in .sonie di.stinct form. Parkhursl v. Kinsman,
1 Blatchf., 491.— Xklsox, J.; N. Y., 18 J9. Howe v. Undernood, .MS.—
Si'RAnuK, J. ; Mas.s., 18r)4. AUen v. Uunler, 6 McLean, 321.— McLkan,
J.; Ohio, 1855. J'oppenheusen v. N. Y. G. P. Comb Co., MS. — Ixoer-
80LL, J.; N. Y., 1858. Ellithorpe r. Robertson, MS. — I.voersoll, J.:
N. Y.. 1850.

5. The words "prior to the application," refer only to the "public
use or sale of tiio invention with the applicant's consent or allowance,"
and do not refer to any thing else. Bartholomew v. Sawyer, MS. —
I.VGEKSOLL, J.; N. 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. Ibi'l.

7. The true meaning of this section i.'s, that a patent shall issue to
the applicant and be valid, if he is the originator and author of a use-
ful uivention, unices the thin^' invented by him has, prior to his alleged
invention or discovery, been invented, or discovered, or used by some
one else in thi.s country; or unless the invention of the applicant has
been patented or described in some printed publication in this or some
foreign country, prior 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 in
use or on sale prior to the application, amended by the act of 18:!0, § 7.

See also Dir.E.'sT P.\t. Cases, titles Prior K.\owledge; Prior Use.

(c) I. As to the utility of an invention, all that the law requires
i.s, that the invention should not be frivolous or injurious. The
word usi'fid is used in contradistinction to mischievous or immoral.
Whether theinventionbe more or loss u.sefui is unimportant. Lowell v.
Leu-is, I Mas.s., 186.— Story, J.; Mas.s., 1817. Bclfhrd v. Hunt-, 1
Mass, 303.— Story, .1.; Mass. 1817. Eirl' v. Soicyr, 4 Mass., 6. —
Story, J.; Mass., 1825. WhUnerj \. Emmett, Bald., 309.— IUldwix,
J.; Pa., 1831. Winans v. Schenec. dk Troy R R., 2 Blatchf, 290. —
Nelson, J.; N. Y., 1851. Page v. Ferry, MS.— ■\Vh.kixs. J.; Mich.,
1857. Lea-h, Ex partt, MS. (App. Cas.)— Meurick, J.; D. C, IStJO.

2. The invention need not be the best for the use to which it can bo
applied. Many v. Jagger, 1 Blatchf, :!81. — Neuson", J.; N. Y., 1848.
Roberts v. Ward, 4 McLean, 5GG. — McLean, J.; Mich., 1849. Wilbur
V. Beechcr, 2 Blatchf, 137.— Nelson, J.; N. Y., 1850.

See also Digest Pat. Cases, title Invention, D. 1.

121 I'ATrA'T LAWS.

ACT OP 1836, CHAP. 357, § 7.

(rf) 1. The CommiBsioncr is bound to issue a patent in the caso and
under the circumptflnoes mentioned in this .section. lie has no di.scre-
tiou aUoul it. nUdrrath v. Umth, MS. (App. Ca«.) — ('ranch, Cli. J.;
D. C, 1H41. Aikni, Ex parU (Car-Wheels), MS. (App. Cas.) — C'ranxh,
Ch. J.: D. C, Isr.O.

2. When a patent has issued, the jurisdiction of the Commissioner ia
exhausted, and he has no further control over it, except under section
13, upon application for a reissue. Pomeroy v. Conuison, MS. (App.
Ca8.>— OiLA..\cn, CI). J. ; D. C, 1 842.

3. But his power exists in full force until the patent actually issue*,
and is not controlled by intervening opinions in procoeduigs during
the examination. Wade v. Mnlthews, MS., 6 Opin., 222.— JoilNSOS,
Atty.-Gen. ; li3»9.

Siee al.so Dioe.st P.vt. Case.^, title Arpi.irATios ron Patekts, B.

(e) 1. The inventor must Ik? the orijfiiial inventor as to all llio world,
to be entitled to a patent. B'tU'jr-n v. Kanowrs, I Wiisli., 188. — Wash-
INOTO.V, J. ; Pa., 1804. Dawson v. FoUfn, 2 \\i\i<\i., 311. — WASlllxa-
TOK, J.; Pa., 1808. Lowell v. Leuru, 1 Mass., lyO. — STORY, J.; Mass.,
1817.

2. No person, wlio is not at once the first as well as the original
inventor, by whom llie invention has been perfected and put into u.se,
is entitled to a patent. Jieed v. Cutter, 1 Story, 696, 598. — SroBY, J. ;
Mass., 1841.

3. A subsequent inventor, though an original one, is not entitled to
a patent. IbuL, 59G-5t)8.

4. Tlie invention must Iw original with the inventor, and not known
to others. The only exception exists in the case of a party obtaining
a pat*Mit, believing himself to Ije the original inventor, ami lii.-* inven-
tion is shown to have been knotiii in a /ureujn country, but not j)atonted
there, or doscrilK.d in any j)rintetl publication. I'arker v. Stiles, 5
McLean, 61.— McLkan, J.; Ohio, 184'.».

See also Dicest Pat. Cases, titles I.vventor, B. ; Ixventios. C.

(/) An original apphcation or Hpeciflcation cannot bo amended, to
conform the Hp<>cirication to the alterations suggested by the Commia-
Bioner, exivpt under this section. Dyson^ Ex jnirte, MS. (App. Cos.) —
Dt;!«l/iP, .1.; r>. C, 1860.

(y) Right of withdrawal extended to foreigners by act of 1837, sec-
tion 12.

Right of withdrawal, as to applications made after March 2d, 1601,
aboliBhtxi by «ct of IHr.i, Hoclion 'J.

Ai to the efl'cct of a withdrawal, see DiciKT Pat. Cases, title Ap-
pmcatios ron Patpms, C.

(h) The renewal oath reipiircd by this section, is re<|uire<l only when
the npplic.inl porHiHts in his npplication, after having been inforinod of
the defi^'iH of his M|M'(illiHiion. If llie rejecticm Is linal. though upon a
flrat examination, no new oath ia nccvsaary to enable him l« Rp|>eaL
Crooker, Ex parte, MS. (App. Caa.)— Craxcu, Ch. J. ; D. C, 1850.

PATENT LAWS. 125

ACT OF 183G, CHAP. 357, §§ 7, 8. IN FOnct

So much of tliis section as requires the renewal of the oath, repealed
by the act of 18G:!. section 1.

(f) 1. By section 11, of the act of 1S39, an appeal was pivcn to the
Chief Justice of the Circuit Court of the United Slates for the Di.'trict
of Columbia; and by section 12 of the same act, the board of exami-
ners was abolished. The right of appeal was afterwards extended, by
tho act of 1852, section 4, to cither of the assistant justices of such
court.

2. By the act of 186.'!, section 3, establishing the Supreme Court of
the District of Columbia, and abolishing the Circuit Court, the powers
theretofore exercised by the judges of the Circuit Court were conferred
upm tho ju.stices of the said Supremo Court, severally. Under this
act, appeals arc now taken to the justices of said Supreme Court.

3. An appeal 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. Cii.s.i— .MoRSELL, J.; D. C, 18.">:!.

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

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

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

See also notes to section 8 of this act, aad notes to section 1 1 of the
act of 1839.

Section 8. [Modified by act of 1839, § 6.] An>I he it
further enacted, That wlicncver an application shall be
made for a patent wliicli, in the opinion of the Commis-
sioner, 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 tlie duty
of the Commissioner to give notice thereof to such appli-
cants, or patentees, as tho 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, ho may appeal from such decision, on
the like terms and conditions as are pruviiled in the pre-
ceding section of this aot ; and the like proceedings shall
be had, to dotermitie Avhich or whether either of the

120 PATENT LAWS.

I.V roBCE. ACT or 1836, ciup. 357, § 8.

applicants is cntitleil to receive a p.itrnt as prayed for, (6)
But notl.in;; in this act contained shall be construed to
iloprlvc :in original an<l true inventor ot* the rii;lit to a
patent for his invention, by reason of his liaving previous-
ly taken out letters patent therefor in a foreiirn country,
and the same liaving been j>nblislietl, at any time within
8ix months next preceding the filing of his specification
and drawings. (<•) And whenever the applicant shall
requei^t it, the patent shall take date from the time of tho
filing of the specification and drawings, not however ex-
ceeding six mnntlis prior to the actual issuing of the
patent; and on like request, and the )>ayment of the duty
herein required, by any ajtplicant, his specificatiun 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 aj)plicant being
entitled to notice of interfering applications.

(n) 1. Tho interference mentioned in this section must be nn inter-
ference in respect to patcntaHe matters, and llio claims of tho appli-
cants must bo limited to tho matters s[K?cilically set forth ns their
respective inventions; and wliat is not claimed is to 1)0 considered, for
tho i)uriKis(! of sui-li intorftTcnci', as disclaimed. A patenlaMo im-
provement is not an interforenco. Bain v. JL'rse, M.S. (App. Cas ) —
CnAN-Cll, Ch. J.; D. C, 1819.

2. There can l»o no intorferenco between applications, unless there
is a subsUintial identity of the thing's for whicli a patent is sought.
Ti/non V. Iiit>kin, MS. (App. Ca.s.)— Motu^Kl.U J.; D. ("., 1853.

3. An int*'rferenc-o may be deelared between a pi-ndin;; application
nnd an application for a reissue of an existing patent, but the omi.i-
■ion to do H'> at that time iloes not take away tlie rinl't of tlio Patent
OflSce to declare such an intorferenco sub-^oijuontly. Uicks v. Shaver,
MS. (App. Ca^'.)— Dixi.or, J.; D. C, IS'-.l.

4. The Commi."Hionor has authority to |>onnit one of two compotiiiff
•ppliciuibt for a patent for a simil;ir invention to withdraw his a|)plic.v
lion, after deeinion upon an interference, and n-lile his a])|ilieatioii, and
to decliiro a ^ecuud inlerfereneo Ix^tween such last application and the
conipctiuK one. W(uU v. JIaWietoM, 5 Opin., Til. — .loilxhOV, Atty.-
OcD. ; iHi'J.

PATENT LAWS. 127

ACT OF 1836, CDAP. 357, § 8.

5. A second intorferonce is onlv a rehearing of tho samo case.
Eamesv. Rictianh, M«. (App. Cas.)— Mf.iiiiuk, J.; 1\ C, 185:».

6. Tlio prucot'diiijfs in contested cises in tlio Patent Ollice have no
resemblance to trials at law. Spti.tr v. Abbott^ MS. (App. Cas.) — DCN-
LOi', J.; D. C. 1859.

See also Digest Pat. Case?, title Ixterferexce.

{b) 1. Tho scope of thi-< section is bhoad enon^'li to incliiflc the ques-
tion of interference as well as that of priority, if it should arise, on an
appeal to the judge. Tlie question of priority necessarily includes
that of interference. Bain v. Morse, MS. (App. Cas.) — C'RAXcn, Ch. J. ;
D. C, 1819.

2. An appeal is given by section 7 to an applicant where there is no
Apposing party; and by this section where there are interfering appli-
cations; and there is nothing in the repealing act of 1839 which takes
away or impairs such right. Fxdtz, Ex parte, MS. (App. Cas.j — Moa-
SELil, J.; D. C, 1853.

3. Under this section no appeal can be taken from the decision of
the Cumniist^ioner of Patents, unless the application for a patent is re-
jecteil. In no case can an appeal be taken to the granting of a patent.
rom-roy v. Connison, MS. (App. Cas.) — CR.\N-cn, Ch. J.; 1>. C, 1842.

4. A patentee there f'lX' h !S no riulit of appeal from the deci.'sion of
tho Commissioner granting a patent to another person, an applicant, in
an interference between such applicant and patentee. Ibid.

5. The word "either in this section — when speaking of the parties
who may appeal — applies to the words ''such appli-ants," ie.. either of
such ajplicant-s. 'J his construction is sustained by the language below
authorizing the jud_'e, on appeal, "to detfrniine which or whether
either of the ap/ilicjiits is entitled to receive a patent as praijed for. Ibid.

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. Kingsley v. flerriet, MS. (App. Cas.) — MOK-
SKLU J.; D. C, 1851. DraJce v. CunningJia.n, MS. (App. Cas.) — Mor-sell,
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 an ap-
plicant, and granting him a patent, that an applicant has from a
decision in favor of a prior patentee, and refusing tho api)licaut a
patent. Babcock v Deg^her, MS. (App Cas.^ — Mkrrick. J.; D. C, 1859.

8. This decision was followed in Spear v. Aobott, MS. (App. Cas.) —
DcNtOP, .T. ; D. C. 18.'>9; and B-uxh v. Tucker. MS. (App Cas.)— MOR-
SEi-L, J.; D. C, 18(10.

9. Thc^ 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 -VprEALs, B.

128 TATKNT LAWS.

L\ roiicK. ACT or 1836, cuap. 357, gg 8, 9.

(c) 1. Bj the act of 18:JD, section 6, the obtaining a foreign patent
more tlinn six monllis prior to his nppliration hero will not debar a p<T-
«)n from receiving a patent, provided the invention has not been intro-
diu'Cii into public and common use in the Uuilod States prior to such
application.

2. The provisions of this section, and of section 6 of the act of 1S30,
as to the obtaining of patents after foreign patents have been secured,
and «s to the date of tlie home patent in such case, relates only to such
patents as are applied f«r hero aiti^r the issue of the foreign patent.
Fri:nch V. Rogers, MS. — Kane, J.; Pa,, 1851.

Skctiox 9. [Amended by act of 1801, § 10.] And be
it further cnartctf, That before any apjilioation for a pat-
ent sliall be considered by the C'omini.>«.siun(jr as aAire.>*aid,
the applicant shall pay into the Treasury of the United
States, or into the Patent Office, or into any of the de-
posit banks (a), 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 fur one year next pre-
ceding, and shall have made oath of bis intention to
become a citizen thereof, the sum of thirty dollars; if a
subject of the king of CJrtat liritain, the stun of live hun-
dred dollars; and all other persons the sum of three hun-
dred dollars (i) ; for which payment duplicate receipts
bhall 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 constitute a fund for the payment of
the salaries of the offici'rs and chrks herein piovided for,
and all other expenses of the Patent ( Mlice, ;ind to bo
called the Patent Fund.

(a) ¥oc» mnj be aont to the Patent OCBce, or bo paid to the Assistant
Trcajiuror!<of the I'. 8. at Now York City; Boston, Mass. ; and St. Louif,
Mo.: Treasurers of the Mint, rhilndeljihin. Pa.; and Now Orleans, La.:
8ur\'»*yf)r and In^|»cctor of tlie Ciisttoms, Pittsburj^, Pn. : .Surveyor of
the Customs, Cincinnati, O : Collectors of the Customs at Hultimoro, Md.;
Buffalo Cre«k, N. Y-; and .San Francisco, Cal. : lUcciTors of Public Mo-
neys at .U-fTersonville, Iiid. ; Ciiicago, 111.; and Detroit, Mich.; and anj
Naliooal Bank which tum been duaignalvd a depository of pubUc tnoaej.

PATENT LAWS. 129

ACT or 1836, CHAP. 357, §§ 10, 11. I.V FOBCE.

(b) By a subsequent statuto. all laws flxinjr tlio rates of the Patent
OfBco fees to bo paid, and discTiminating between the inliabitants of
tho United States and these of otiier eoiintries, which chidl n<it dis-
crlminalo apainst tlic inlialiitaiits of the Fuited .'^tatos, are icjiealed,
and a uniform rate of fees cstabhshed for all. Act of I»01, section 10.

Sectiox 10. And he it further enarted, Tliat where
any persdn liatli made, or shall liave made, any new in-
vention, discovery, or improvement, on account 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 a])plying for and obtaining such patCJit
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 ])crson in his or her lifetime (</) ; and when
application for a patent shall be made by such legal rep-
resentatives, the oath or aflfinnation 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 iaveulion, no person other than his executor or adminis-
trator can apply for a patent for such invention, and the patent must
bo issued to such persons in trust for the heir.s-at-law or devisees of
the inventor. Stimpson v. Rogers, 4 Blatchf. — Ixgersoll, J.; Ct.,
1859.

2. It need not, however, be expressed in the pateut, that it is issued
to such executor ;/* tmst for those entitled to it. It will be sutBcicnt
that the patent s -t forlli that it was issued to the prantee as executor.
AV hat the oxccut )r does in relation to the property of the devisor, ho
does in trust for those to whom such property is piveu bv the will
Ibid.

Section 11. And he it further enacted, That every
patent shall be assignable in law, either as to the whole
c*

mo PATENT LAWS.

IN rOBCB. ACT OP 1836, CHAP. 351, § 11.

interest, or any undivided part thereof, by any instniment

in wiiiintj; whicli assignment, an«l also every tyrant and
conveyance ot" the exclusive right under any jcitent, to
make and use, and to grant to otiiers to make and use {a)
the thing patented within and throughout any specilied
j)art or portion oi'tlie United States, shall he recorded in
the Patent Office within three months from the e.\<'cution
thereof (6), for which the assignee or grantee shall p ly to
the Commissioner the sum of three dollars, (c)

(a) 1. Tills section provides for but tlireo kimlr* of a.ssignmcnts :
1st, As to the wliolo imeri.'St ; 2(i, As to an undivided part; and 3d,
An exclusive ri^lit in any district. lilancJuird v. EUiid>jr, I Wall., Jr.,
339. — GuiKit, J.; I'a., 184'J. J'ott^ v. JJoltand, MS. — IsOKRiJoLL, J.;
Ct., IsiS.

2. The term ejclusive comprehends not only an exclusive ri-^lil to tho
•whole patent, but an exclusive right to the patent in a particular seetiou
of country. Washburn, v. Gvuld, .1 Story, l:;l. — Storv, J.; Mass, 1844.

:{. The uiou'ipoly is capable of subdivi.«ion as to locality, and in no
other wav. Ulanchurd \. KlJrid-je, 1 Wall, Jr.. IMO.— Gkier, J.; I'a.,
Ibrj. \\'liUU:more v. Cutter, 1 tJall., 431.— :>10UV, J.; Ma.;8., H13.
JirooUs V. Dijam, 2 Story, a'Ja, 5j2. — Stukv, J.; Mass., 1S43. Sutjda,n
V. Day, 2 Ulatchf., 23.— Nklso.v. J.; N. Y.. lS4iJ. Litter v. SerrtO, 2
Blatchf., 3.s;j.— llETTS, J.; N. Y., 1852. Washnuj Modi. Co. V. J^rie, 3
Wall., Jr.— GuiLii, J.; Pa., 1 SGI.

4. An assignment of a patent may 1-kj made as well before tho issuing
of the patent as atU-r^vards. The thing to bo a.ssigned is not the mere
parchment, but the monopoly conferred— tho right of property which
it creates. And when the party has ai-<piireil an inchoate right, an as-
signment of it is legal. Gayer v. Wiider, 10 How., 4'.t;t.— Ta.\EV, Clu
J.; Sup. Ct., 1850. lialhlx.ne \. Orr, 6 Mclx>an, 131, 132.— McLean,
J.; Mich , 1850. Rich v. LippincotL, 2G Jour. Fr. Inst., 3d Sor., 13.—
GKIEtt, J.; IV, 1853.

5. Future inijjrovements may Ik? sold, as well as those alre.ndy niado;
and U) include a seiH.nd as well as a llrsl p.iie:it. Samilh v. Calvtit,
1 Wooil A Mm., 41. — U'oouULUY, J., Mass., 1845.

«. Tho inchoate right of an inventor to a reuowal is tho subject of
fall'. Cluin V. lirevrr, 2 Ivnt , 520.— CciiriS, J.; Mass., I,i5.*>.

7. Ono tenant in common has iw gotnl right to use and sell to others
to use Iho tiling poienlud. as tho other tc-nant in conmjon has; and
Deilhor can restrain tho other from such uso or s.ilc. Ibii , 521.

8. A pajwr purjMirting to l<o an as.sigumenl of an expired patent is
void. IkU V. SlcCuiUi'jh, M.S.— Le.wiit, J.; Ohio, 1858.

PATENT LAWS. 181

ACT OP 183G, CHAP. 357, §§ 11, 12. IN PORCR.

(b) 1. Tlic provision as to recording a8si|i:nments within throe months
is merely directory, and except iis to intormcdiato bomifide purciiiiseis,
without notice, any siibseciiieut recordin;^ is siifticient. Brooks v. Ityam,
2 Slory. r>42.— SroiiY, J.; Mass., 1843. I'itU \. Whitman, 2 Story,
61;').— Stouy, J.; Mass., 1813. Blanch. Gun-SUjck Fac. v. Warner. 1
Blatchf, 271.— Nelson, J.; Ct., lt4G. JJolden v. Curtis, 2' N. Hamp.,
63.— Woor.BCRV, .1.; N. 11., 1819.

2. A mere license need not bo recorded — it is not an exclusive right.
Brooks V. Byain, 2 Story. 042, o43. — Stokv. J.; Mass., 1843. Stevens v.
jKac/. 9 Verni., 177.— Williams, Ch. J.; Vt.. 1837.

3 Under this Kcclion an assiffnment must be recorded within three
months to defeat tlie right of a bubsuqiiecit piircha.ser without notice,
and for a valuable consideration In order to j^uard against an out-
Btandiiig title of over three montlis' duration, the purchaser need only
look to the records of the Patent Office. Within that period he must
protect himself in the best way he can, as an luirecorded a.ssignment
would prevail; but it nuist bo one in writing, that may be recorded.
Gibson v. Cook, 2 Blatchf., 148.— Xelson, J.; N. Y., 1850.

See also Digest P.\t. C.\si:s, titles Assigx.mext, B. 2; Licen'se, B.

Section 12. [Amended by .-ictof ISGl, §§ 9, 10.] And
be it further exariiil. That any citizen of the United
States, or alion, who shall have been a resident of the
United Slates one year next preceding, ar.d shall liavo
made oath of his intention to become a citiz.en thereof,
who shall have invented any new art, machine, or im-
provement thereof, and shall desire further time to mature
the same, may, on l>aying to the credit of the Treasury,
in manner as provided in the ninth section of this act,
the sum of twenty dollars («), file in the Patent Office a
caveat, setting forth the design and purpose thereof, and
its principal and distinguishing characteristics, and pr.ay-
ing proiectiou of his right till he shall h.ave matured his
invention ; which sum of twenty dollars, in case the
person filing such caveat shall :ifterAvards take out a
patent for the invention tlierein mentioned, shall be con-
sidered a part of the sum herein required for the same.

132 PATENT LAWS.

IJC rORCB. ACT or 1836, CHAP. 357, § 12.

And such caveat shall be filed in the confidential archives
of the office, and |)rc'servc(l in secrecy. And if applica-
tion shall be made by any other person within one year
from the time of lilinj^ such caveat, for a patent of any
invention with which it may in any respect interfere, it
tliall be duty of the Commissioner to deposit the descriji-
tion, s])ecifications, drawings, and model, in the conliden-
lial archives of the office, and to give notice, by mail, to
the person filing the caveat, of such application (/>), who
shall, within three months after receiving the notice, if
he would avail hiin>elf of the benclit of his caveat, file
his dest'rij»tion, specifications, drawings, and mo«lel ; and
if, in the opinion of the Commissioner, the specifications
of claim interfere with each other, like proceedings may
be had in all respects as are in this act provided in the
case of interfering applications : Provided, lioxcevcr. That
no opinion or decision of any board of examiners, under
tlie provisions of this act, shall j>reclude any person inter-
ested in favor of or against the validity of any patent
whieh has been or may hereafter be granted, from the
right to cfmtest the same in any judicial court in any
action in which its validity may come in (juestion.

(a) 1. The f'O ro'iuiriil on lilin;; n caveat is now rcdiicod to ton dollars,
ond I'ucli BUin Ih no lonffcr to 1>C' oinsidfrod as n part ol' llio sum re-
quired to )>e paid on filing a BiibHetiuent application Torn patent for the
Buine invention. Act of IHfil, sections !», lo.

2. \ caveat may t>e renewed at tlio end of one year by paying a fur-
ther fe© of ten dollars, anii no on froni year to year.

(6) I. Tliih section is for tiio bcnolit of the inventor, but is not neccs*
nary for the preservation of his rigitt, nor does the omission to (lie a
caveat impair liis tile. JlUnulh v. J/etUli, MS. (.Vpp. CuH.)^CliANXU,
«Jh J ; D. C, 1841.

2. It only enubks him to have notice of any interfering application.
It, however. jfivoJi no notice to the world, nor even to the interfering?
applicant, and is notice to the Commissioner only. Jhid.

3. Tlte utvcal ia lo set forth the "deMigu and piirpoao " of the iDVoa-

PATENT LAWS. 133

ACT OP 18?.6, CHAP. 357, §§ 12, 13. IM FORCE.

tion, and "its principal and distinpruishing cliaractcriatics ;" but it is
not nec-cKsary that it shoiilil explain tlio principle involved, or the
modes in which it can lie applied, nor how it is distinpniHhcd from
other inventions. Arum., MS., Opin. — Bi-ack, AUy.-Ocn. ; l«r)7.

4. The ('omnii89ioner can perform no act upon it, btit filing it, nor
in consequence of it, oxL-ept to give iho caveator notice of a conflicting
application. Ihi'/.

.'i. A caveat answers a double purpose: 1st. to give notice of the
claim of the inventor ; and 2d, to prevent a p.itent is-suinp to another
for the same thing. Allen v. Hunter, G McLean, 301. — McLk.vx, J. ;
Ohio, IS.^i.").

G. A caveat is evidence as to an invention, so far aa it extends to
the d<;scrip(ion of the invention and the machinery which was then
constructed. Jone^s v. Wetherell, MS. (A pp. 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.\oue, J.; Mass., IS.'jS.

8. The fact tliat a patent is granted to one person, while another lias
a caveat pending and in force, will not of itself vacate the patent
granted, nor authorize the Commissioner to grant a patent to the
caveator, Cochrane v. Waterman, MS. (App. Cas.) — Craxch, Ch. J. ;
D. C, 1814.

9. The purpose of a caveat is to save the discoverer of an invention
from the efl'ect of the rule of law that gives to the inventor wlio first
adapts his invention to practical use the right to the grunt of a patent;
and if the Commissioner gives the caveator notice of any interfering
application, it secures him against the effect of the rule. I'ltelps, Dodge
& Ck v. lirown Bros., \A 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. Ibid., 9.

See also Digest Pat. Cases, title Caveat.

Section 13. [Anicndeil 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 granteil, or which sliall hereafter be granted, shall
be inoperative, or invalid, by reason of a defective or
insuflicient description or specification, or by reason of
the patentee claiming in hi.s specification as his own in-
vention, more th:in he had or shall have a riirht 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.

nf roRCE. ACT OF 183G, rnAP. ;ir)7. g 13.

deceptive intention, it shall be lawful for the Commis-
sioner, upon the surrender to him of such j>ritent, and the
payment of the further duty of lif\et'ii <h»ll:irs, to cause a
new patent to be issued to the said inventoi', for the same
invention, for the residue of the period then unexpired
for which the original patent was granted, in accordance
with the patentee's corrected description and specifica-
tion. {(/) And in case of his death, or any assignment by
him made of the original patent, a simihir right shall vest
in Ins executors, administrators, or assignees. {/>) And
the patent, so reissued, together with the corrected de-
scription and specification, shall have the same effect and
operation in law, on the trial of all actitms hereafter com-
menced fi>r causes suhsecjuently accruing, as though the
same had been originally tiled in such corrected form,
before the issuing out of the original ]):itent. ('•) And
whenever the original patentee 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 by liim subsequent to
tlic date of his patent, he may, like proceedings being
had in all respects as in the case o\' original applications,
and on the payment of liffeeii dollars, as hercinbeforo
])rovided, have the same anni'XtMJ to the original description
and specification; and the C'ommis-ioiier shall certify, on
the margin of such annexed di-scription and specification,
the lime of its being annexed and ri'corded ; and the
same shall hereafter have the same tfTect in law, to nil
intents and puqjoses, as though it had been embraced in
the original dcscriptitdi and specification, (d)

(a) I. Thin Beclion contcniplalos two cludRon of cnsos, wlicro a pnl-
cnt b invalid or iTiO]>rra(ii e ; Int, )>y ronnon of a dcfoclivo or insufllcicDt

1'AT1:NT laws. 185

ACT OF 1836, CHAP. 357, .§ 13. IN FORCE.

Bpociflcation ; find 2d, whcro the same objection arises because the
]);itciiU'C has claiiiu'i iiiore than he iiad a riglit to claim. Goodyear v.
Day, MS.— DicKKHso-V, .1. ; N. J., 1KJ2.

2. Tills pt'C'lioii may lie regarded as aOirniing tlie propriety of Die
usa^e which liad obtained under tlie former laws, and under which a
second reissue was allowed aa well as the first. French v. liogc-rs,
MS.— Kane, J.; Pa., ISfil.

3. There may be more than one reissue of the same jKitent. The
surrcndir and reissue should bo allowed to follow each other as oftea
as the inventor is content to be more specilic or more modest in hia
claims. IbUL Also BcUl, Ex parte, M.S. (App. Cas.)— Moksell, 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 the specification and claim as it
stands. Kittle v. Merriam. 2 Curt., 47S. — Curtis. J.; Mass., 1855.

5. This section gives to the patentee the right to correct his de-
scription or specification, when its imperfection has arisen from inad-
vcitency, accident, or mis.ake. But tiie only condition on which 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 tiiercfure equivalent to a distinct admission, made in
the must solemn form, that the patent has no validitj- in the sense of
entitling a i)atentee to an acti(jn for its infringement. Morjitt v. Gaab,
MS.— Lkavitt, J.; Ohio, 18';0.

G. The words in this section, "it shall be lawfui for the Commis-
Bioucr, itc, to cause a new patent to be issued," are to be construed as
mandatoy, and to be of the same import as if tlic words had been, "it
shall It the duty of the Commissioner." Ac. The true meaning is, the
Commissioner is to have no discretion in the ca.se provided for in the
section. Dy-mi, Ej- parte. MS. (.\pp. Cas.) — Dlnlop, J.; D. C, 1800.

7. "When the case provided tor arises, he is commondtd to exercise
the power, whether ho thinks it just and right to exercise it or not; he
has no discretion. Ibid.

8. The surrender and reissue of a patent extended by act of Con-
gress, after an extension, under section 18 of the act of 18.!6, stands
on the same looting as if such surrender and reissue were made under
the extension l)v virtue of said section 18. Gibson v. Harris, 1 Blatchf.,
1G;1, 170.— Nei.sox, J.; X. Y.. \9U.

9. It is not the meaning of this section that the p.itentee, in his
reissue, must describe and claim in liis new specification, either in
words or idea, just what he described and claimed in hia old one; but
his specification must be of the same invention, and he cannot embrace
a diflerent subject-matter than that ho sought to patent originally.
French v. R gers, MS. — Kane. J.; Pa., 1851. BaUin v. Taggart, 17
How., 83.— McLeak, J.; Sup. Ct., lt^54.

10. Upon an application for a reissue, the applicant is not necessarily

136 PATENT LAWS.

IX FORCE. ACT OF 18.1G, CIIAP. 357, § 13.

conflned to tlio oripinal record, i. r., iho patent nnd ppoci (lent ion. but
the oritrinal model mav be referred to as evidencv of the tlien inven-
tion. Wilson V. Singer, M.S. (App. Cas.)— DlxIjOI', J.; I>. C, 1800.
RiU, Ex jMirU, MS. (,\pp. Cas.), and DitU, Ex parte, MS. (.\pp. Cns.)-;-
MonsF.LU J.; 1>. C, 18iJ0.

11. Fee on rei.ssiie now thirty dollar?. Act of 18fil. § 10.

fn-e also Diokst V\t. Ca.ses, title Ukissle of Patent, B., C.

(b) 1. Under this section the power to ."tirrcndcr a patent and take
out a renewal thereof, is vested e-xchuHively in the patentee, his execu-
tors administrators or assigns, and tliere is nothinjf restriclinj^ nuch
ri^'ht beeaiise of special or limited grants of licenses previously made.
iiinith V. Jfrrcei; 4 West. Law Jour., 52.— Kaxj:, J.; Pa., 184C..

2. By this fiection the solo right to surn-nder is given, 1st, to the
patentee, if he is alive and has made no assignment of the original pat-
ent; 2, to iiie executors and administrators of the patentee, after his
decease, where there has been no such assignment ; and Ml, to the
assignee, where there has been an assignment of the origiiud patent.
The right to surrender is given to no one else. Potter v. llvlland, MS.
— I.SGEltsoLL, J. ; Ct., 1858.

3. Where, however, there has been an assignment of an undivided
part of the whole patent, in siicli case tlie assignee and patent^^-c U^como
joint owners, and should join in the surrender; and if they do not it
will Im' invalid, unless the part owner not joining shall ratify it. Ibid.
■ 4. A licensee has no aiuhority to make a surrender, and one made
without his consent is valid. But such a licensee may hold under the
original or the reissued patent, as he prefers. Jbi'l.

b. 'Ihero may be a claim of right in an invention, under one or the
old patent, for one section of the country, and a diderent cluini of right,
under the reissued patent, for the same invention, for another section
of country. Ibid.

See also Di<iE.sT Pat. Cases, title Reissue of Patent, A.

(r) 1. I'nder this section the second patent, with corrected spccillca-
tions, ha« r< hitioii back to the emanation of the first patent, as fully for
every legal i»ur|iose as to ca\is(s subse<|uently accruing, as if the second
]>atiL-tit had Ijoen issmtl at the date of the (Irst one. <S'ti«/^j/ v. W/iijtple,
2 McU'an, :!7.— McLkas, J.; ()hi(., Is:t0.

2. A reissued patent is only a continuation of the original one.
Ames V. Ilvard. 1 .Sumn., 4m«.— Stoky, J.; Mass., 1S33. Slanlei/ V.
UVii/-;>/r, 2 M<Lcnn, :J7,— McLeax, .1.; Ohio, 1h:!9. \y<h>dtvorth V. IlaU,

I \V<Hxl. A Min., 2.")7.— W(K)iiiiruY, .1.; Mass., Is4'>.

3. The rights of the patentee are to bo ascertained by the law under
which the origimd application was made. Hhaw v. Cooprr, 7 Pet ,
315.— McUax, J.; Sup. Pi., 1B33.

4. A patentee cannot by a surrender affect tlie rights of third per-
nons to whom ho had pr(•vio\l^Iy conveyed an interest. Wofhluvrlh r.
Slon/-, 3 Stor)-, 7.'>'i.— .SroRV, J.; Mass., 1815. JJclhirtiey v. Goudyear,

II (^uih., 370.— MF.RRifK, J.; Masa., 1853.

r.\TF.NT T.AWS. irjT

ACT OP 1836, CHAP. 357, §§ 13, 14. IN FORCK.

5. The jfrant of an amended patent is conclusive as to the existence
of the facts neccs^sary for a rcissiu-; unless it is patent tlit-ro is a dear
excess of authoritv, or there has been fraud. Allen v. Blunt, '.i Stor.v,
7.|5._SroRY, J.; Mass., 1845. S. C, 2 Wood. & Min , l.i9.— Woob-
nuuY. J.; Mass., IS4G. Battin v. Tcujgart, 17 IIow., t;4. — McLean, J.;
Sup. CL, 18,j4.

(d) 1. I'nder tliis section an iniprovcnicnt may be annexed to tho
specification of tlie original patent, so as to raake it form a part of the
orip:inal patent ; but thi-re is nothing that forbids an inventor taking
out a new patent fur the improvement, if lie prefers it. O'Jieilly v.
Jilorse, 15 How., 122.— Taney, Ch. J.; Sup. Ct., 1H53.

2. Xor is he bound in his new patent to retcr specially to his former
one. Ibul., 122.

3. Tlie provision of this section authorizinpr additions to patents for
improvements, is now repealed, and patents of additions are no more
granted. Act of 18G1, § 9.

Section 14. A fid be it furthrr ruartrrl, That whenever,
in any action for damages for making, using, or selling
((/) the thing whereof the exclusive right is secured by
any patent heretofore granted, or by any patent wliich
may hereafter be granted, a verdict shnll be rendered for
the plaintiff in such action, it shall be in tlie power of the
court to render judgment for any sum above the amount
found by sucli verdict as the actual damages sustained hy
the plaintiff, not exceeding three times the amoimt there-
of (A), according to the circimistances 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 throughout a specified
part of the United States, (c)

(o) The sale, under execution, of the materials of patented articles ia
not such a sale as makes the sheriff liable to an infriugemenL Sauin
V. Guild, 1 Gall., 4S7.— SroRY, J.; Mass., 1813.

(6) 1. The patent act of IT'JO, section 4, made the infringer liable to
pay such damages as the jury should lind, and also tbrfeit tlie machine.
The act of 1793, section 5, declared that ou infringer should pay a sum

188 PATENT LAWS.

IX FOROB. ACT OF 1836, CHAP. 357, § 14.

equal to three times the price for which tlic p.itcntcc had sold lIccnFc.
Tlic :;ct of If^OO yiroviilfd that an infringer shoulil pay tlirt-o times ilie
actiial damap s sustained. Seymour v. JlcCorvtick, IG How., 488. —
GniEn, J.; .-up. Ct., 185:^.

2. This .-eclion eonliucs the jiirj' to the actual damnpes .ouptaincd by
the patentee. The jiowcr to increase tlmn ns i>unilivo ilaniages is
committed to the discretion and judgment of the court. Ibul., 488.

3. Actual dai'age.^, nccorditijr to this section, are the amount Uxed by
the verdict. St'-jJitns v. Fe'i, 2 Ulatclif., 38.— Hetts, J.; X. Y., IsAC.

4. But such term cannot l.«e construed to mean exenijilary, vindic-
tive, or punitory damages, inflicte«l bv wav of smart monev. Stimp-
son V. Jinilroatis, 1 Wall., Jr., 160.— GitiKK. J. ; Pa.. 1847. Btirk v.
Uennanct. 1 Ulatchf, 400.— Xeusox, J.; N. Y., 1849. I'iUa v. Z/a i, 2
Blatclif., 238.— NEI..SOK, J.; N. Y., IS.'.l.

5. Damages are only to !« compensatory : the criterion is indemnity.
rarhr v. Uulmr.. 7 West. Law Jour., 42><.'— Kaxk. J. ; Pa., 1840.

6. Damages cannot inchule counsel fi'c.«, in addition to the taxable
COSI.S. Stiiupson V. liniln ads, IV^nW, iv., lt'>G, Id:). — (iuiEn, J. ; I'a.,
1.S47. Blanch. (!un-S(. rJ; Fuc. v. Warner, 1 Blatclif., 272. — NkI£OX, J. ;
Ct.. 1840. /'(ir.'.er v. JJulmf. 7 Wc-t. Law Jour., 420.— Kane, J.: Pa.,
1840. Tcee^ V. Ilunlington, 23 How., 8.— Clikfokd, J.; Sup. Ct., 18:>0.

7. It rests with the discretion of the court whether the dtunngos
shall be trebled. Previous to 1S3G, the court was eoinpoUcd to treble
them. Gnyon v. SernU, 1 Blatchf, 245.— NEI.SOX. J.; N. Y., 1847.
SHmpson v. i:>iilrvndi, 1 Wall., Jr., IGG. — Guirn, J.; Pa., 1S47.

8. The court may increase tlie damages though the ])lainli(r is not
entitled to costs, for neglect of tiling a disclaimer, as required by sec-
tion of the act of 1837. Guyon v. Serrell, 1 Bbtchf., 246.— Nelsos,
J.; N. Y., 1K47.

0. The objeet of this section, as to trebling damages, is to remune-
rate patentees, who were comiKlled to susUiin their patents against
wanton and persistent infringers. Si-yinour v. McCormirk, IC Mow.,
4«8. — (JRIKR, J. ; Sup. Ct., 1853 BeU V. McCuUoch, MS.— LEAVirr, J. ;
Ohio, iH.i.S.

S-o also I)|(;e.st Pat. Caheh, titles Dauaora; Intuisgemext.

(r) 1. The word "assigiK'eH" in this section, is to l>c wnslrued by
reference to section 1 1, of the same act, as meaning the a0signi>eH of ii
whole interest, or an mulivided one, or an exclusive lo«.al right.
Hianrhard V. Edmlge, 1 Wall.. Jr.. 340. — OuiKli, J.; Pu., 1849. Huy-
darn v ItKj. 2 Itlal.hf, 23— Neijjox, Bktth, JJ.; N. Y., 184<5.

2. Ti tnabio an avignct. to sue in his own name, ho must have the
OXcluKivo riirlil, or ••mire, or utii|'ialili<-d mnnoi>oly, which the jmtcnieo
lnul, excluding the pat4-nteo himself as wlU as others. Gaylcr v. Wil-
de , 10 Uov... 40.:.— Taxev, Ch. J. ; Sup. Ct., iSfjO.

3. The DHHigne"H of an exi'lusivo right in a patent, are the proper
p<-n>ona t • maintain an action for a violation of it. Waitibwn v. Gould,
a Siory, 131, 107.— Stoby, J.; Mass., 1846.

rATENT LAWS. 139

ACT OP 1336, CHAP. 357, §§ 14, 15.

4. The granfoo of an cxclnsivo rif^ht tinder a patent, even though
such ri)iht is limited to a jiarlicular miinl)i'r of machines, may niahiiUin
an action for infringcnietit. Wiliun v. lios'eau, 4 Ilow., G8(j, 08^. —
Nelson, J.; Sup. Ct., 1845.

5. Under this section, in connection with section 11, an action is
given only to such jiariy — composed of one or more persona — as pos-
sesses tlie whole interest in the patent. SuyJain v. J^i^y, - Blatchf.,
2.1. — Nklsox. linns. JJ. ; N. Y., ISIO.

G. Wliere a party has an inlorost in only a part of a patent, as a
license to use the invention, he cannot maintain an action for an in-
fringement. Ibid., 'I'A.

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., .'53. — Nelson, J.; N. Y., Is53.

Section 15. [Enlarged by act of 1837, § 9; and by-
act of 1839, § 7.] A/nl be it farther enncttd^ That the
defciiilant in any sucli 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 bet-n given to the plaintiff or his attorney, thirty
days before trial (/>), tending to prove that the descrijj-
tion and spccilication tiled by the plaintiff does not con-
tain the whole truth relative to his invention or discovery,
or that it cont:iins more than is necessary to produce
the described effect ; which concealment or addition shall
fully appear to have been made for the purpose of de-
ceiving the public (c), or that the patentee was not the
original and iirst inventor or discoverer of the thing
patented, or of a substantial and material part thereof
claimed as new (f?), or that it had been described in some
public Avork anterior to the supposed discovery thereof
by the patentee (t), 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 the patent for that which
was iu fact iuveutcd or discovered by another, who was

no PATENT LAWS.

ACT or 1836, CHAP. 357, § 15.

using reasonable diligence in adapting and perfecting the
same (//) ; or that tlic j)atc'iitcc, if an alien at the time the
patent was. granted, had failed and ncglecteil for the
space of eighteen months from the date of the patent, to
put and continue on sale to the |)ublic, on reasonable
terms, the invention or discovery fi>r which the jjatent
issned (//) ; in either of wliich cases judgment shall be
rendered for the detendant ■with costs. And whenever
the defendant 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 iritends to
prove to liave possessed a prior knowledge of tlie thing,
and where the same had been used (/) : Proriikd, /luic-
cnr, That whenever it shall satisfactorily appear that the
patuntee, at the time of making his application for the
patent, believed himself to be the first inventor or dis-
coverer of the thing patented, the same shall not be held
to be voiil on account of the invention or discovery or
any j)arl thereof having been before known or used in
any foreign country, it not appearing that tiie same or
any substantial part thereof lia<l before been patented or
described in any prinieii publication. (_/') A /id jn-orii/xf,
aUoy That will never the plaintiff shall fail to sustain his
action on the ground that in his specification of claim is
embrace.l more than that of which he was the first in-
ventor, if it shall appear that the defendant had used or
violate<l any pail of the invention justly and truly speci-
fied an<l clainu'd as new, it shall be in the jiower of the
court, to adju Ige and .award as to costs as may appear to
be Just and ctptitable. (A)

(a) 1. Tho right to pluod ttio gonoral issvio and givo notice, Ih an en*

PATENT LAWS. 141

ACT OF 1836, CUAP. 357, § 15.

largement of the defendant's mode of defence, but does not take nway
his ri.L'lit to jilead .«pccially. Phillips v. Combstock, 4 McLean, bZb. —
McLea.v, J.; lud., lf<lU.

'1. Tlie defendant need not plead the poncral issue, and give notico
of tlie si^ecial matter. He may jilead si-ccially. and then the j)lea is
the only notico. Evans v. Eaton, 3 Wheat., 504. — Mar.shai.l. i'h. J.;
Sup. Cl., 181.S. Grant v. liaymond, G Pet., 217. — Mailsiiall, Ch. J.;
Sup. Ct., 1832. Phillips V. Combstock, 4 Mcl-ean, 525. — McLean, J. :
lud., 1819. >mithv.Elij. 15 How., 141.— Taxey, Ch. J. ; Sup. Ct., 1H5:J.
Day V. X. E. Car-Sprinj Cc, 4 Blatchf., isl.— Betts, J.; N. Y., 1854.

3. But wl ere notice of .special matter i.s ^(iven under tlie general
issue, spcciiii pleas containing the .same matters cannot be Hied. Wil-
der v. Gayl-.r. 1 Blatchf., :>'Jl. — Xei,su.\, J.; N. Y., Is50. Brunsrjuickv.
Holzalh, MS.— Leavitt, J.; Oiiio, 1858.

(6) 1. Xo order of court i.s necessary to entitle a defendant to file and
serve notice of special uiaiter. It is only necessary that it be in wri-
ting and be served thirty days betbre the trial. Ttese v. Huntington, 23
How., 10.— Clifford, J.; Sup. Ct., 1859.

2. If a f.rst notice is defective or not sufBcieutly comprehensive,
other notices may be given to remedy the defect or supply the de-
ficiency. J lid., 10.

3. Under such notice, depositions taken before it was served, as well
as those taken afterwards, arc admissible. Jbid., 10.

4. Notices may be served in term time, but must be thirty days be-
fore trial. Latta v. Shauk, MS. — Leavitt, J.; Ohio, 1859.

5. Sueh notices cannot, liowever, be hied and served in suits in
equity. Bouyhty y. W'e.st, MS. — Nelson, Suh'MAX, JJ.; N. Y., 18G5.

(c) 1. It is a question fur llic jury whether tlie specitication contains
the wiiole truth relative to the di.soovery ; and, if not, whether it has
been concealed witii a view to deceive. lieuUjen v. Kanou^rs, 1 Wash.,
171. — Wasuixgtox, J. ; Pa., 1804.

2. A defect or concealment is not fatal, unless made with an inten-
tion to deceive. Whittemorex. Cultt-r, 1 Gall., 437. — Story, J.; Mass.,
1813. Gray Y. James, Pet. C. C, 4()9. — Wasuixgtox, J.; Pa., 1817.
Louell V. Lewis, 1 Mass., 188, 189. — STORY, J.; Mass., 1617.

3. Tlie question as to the materiality of the thing concealed is, could
an artist, alter the expiration of the patent, construct a machine by
looking at tiie specitication. lieutyen v. Kanours, 1 Wash,, 171.—
Wasuixgtox, J. ; Pa., 1804.

(il) 1. The defence " that the patentee was not the original and first
inventor or discoverer of the thing patented," is complete Vithout
sliowinsr tliat tlie first inventor had put his invention in practice.
JUldnath v. Ihal/i, MS. (.\pp. Cas.) — Crancii, Ch. J.; I>, 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. h'eedv. Cultcr, 1 Story, 59ti. — SroKY. J.; Mas.s., 1841.

See also Digest Pat. C.vses, title Inventor, B.

142 PATENT LAWS.

IK PORCB. ACT or 1836, CHAP. 357, § 15.

(f) 1. The doRcription in a public work must be sufllfiently full and
precise to enable a incclianic to construct the machine, and must be iu
all material rosi>ects like that covered by the plaintifl's patent. Par-
ker V. Stiles, 5 McLean, Gl.— McLeas. J.; Ohio, 1S-J9.

•J. The publication may be proved as to its contents, and the fact of
piiblic;itiou bv the proiluotion of the book, or by parol testimony. Alien
V. Hunter, 6 Mclean, 31 I.— McLkan, J.; Ohioi 18.55.

3. The publication mn-<t have been prior to the timf of invention. It
is not sullicient that it was prior to the time of application for a patent.
Bartholomeic v. Sawyer, MS — IsoERSOLi., J.; N. Y., 1859. AUm v.
Hunter. G McLean, 31 1. — McLean'. J.; Ohio. 18.J5.

4. To render admissible in evidence a printed publication it is not
necessary to make proof of the date of its publication. .\. book pur-
poriiti^r on itrj title-papc to be pulilished in a certain year will lie re-
ceived without proof that it was then published. Jwbon v. Cope, MS. —
Leavitt, J.; Ohio, 1800.

5. A b<x>k of plates withoiit any letter-press cannot bo admitted in
evidence. Semble, that it is not a "printed publication." Il>i<L

6. Whirc reference is made to a public work, it shouhl be to the
particular part of the work intended to be relied u|M>n. A reference
merely to the title of tlic work is not sufficient. Fioie v. Silsby, 1
Blatchf., 4.')4, 402. — ('oxKi.lNti, Nki-so.v, J J. : N. Y., 1849. Sthby v.
J-'oote, 11 How., 2-22.— Ci UTl.s. J.; Sup. ft., IS.'.'J.

See also DiiJEST Pat. 1'ase.><. title Public Wokk.

(/) 1. 'J ho public use or sale, to defeat the inventor of a right to a
patent, rauKt l>e a public use or sale by others with his knowled(?o and
consent before his application for a patent. Ji'nan v. Goodwin, 3 Sumn.,
.'ilS.—STouv, J. ; Mass., 18::'.). \Vi/rtli v. Stone, 1 Story, '^81. — Story,
.1. ; Ma.^!?., 1H40. (Jaijler v. Wittier, 10 Ilow., 4'JO, 4'.iS._Taxev, Ch. J. ;
Suj). Ct.. 1850. PiUi v. IlaJl, 2 Hl.it.hf. '23:,, 2:iO.— XeI-sox, J.; N. Y.,
1M.',1. JIunt v. I/owe, MS. (.\pi>. ("as.)— Mmi.sELi-, J.; 1). C, 1855.

•J. \ u.so without the inventor's knowledj,'o br consent, or cxpori-
laentul to asi'ertain ita value, utility, or success, or a use inlermoiliato
the application and Rrant, will not l>o sudiciont. Jiynn v. Goodwin, 3
Suinn.. 518.— Stouy, J.; Mass.. IS.tg. W'ljcth v. St^n^, 1 Story, 281.—
."^TOHY, J.; Mass., l.'<40. I'irr.'on v. A«/</fc Screw Co., 3 Story, 407. —
SroHY. J.; U. I., 1841. Winan-t v. X. )'. if- II ir. R. li., 31 'jour. Fr.
lll^t., ;:d Sor., 3J'2.— Xki-sox, J.; N. Y.. 18:i5.

:i. n I,,, r .i.i to use and sell an invention for two years previous to
jhe «! ' now conferred by act of 1«39. hoclion 7.

Si-, -r Pat. Cahks, titles .\ii,\m>omiext, A.; PCDMO UsK.

{g) 1. An iKVoutor who han (Irst .iciually perfeeti d hi.^ invention will
not lx« dnnmed lo hnvo Kurri'|ititiously or unjustly obUiined a patent for
ih it ■■ invented by another, un'eBS the latter wa«
„t il ' le-o in udiiptin;^ and perfeciint? his inven-
tion, j.c. . .. 1 • . • y, 599. — Stoky, J.; MiuiH., 1841.

2. But t!io Urst iuvont^jr has the prior right if bo is using due dili-

PATENT LAW3. 148

ACT OF 183G, CHAP. 357, g 15.

gence, even though another may have first perfected the invention.
J bid., 600.

H. Tlio clause using " reasonable diligence in adapting and pcrfeot-
ing" an invention is applicable only to the case of a defence tliat tho
plaintitV's jjatent had been surrcptilit^usly or unjustly obtained; and if
pleaded, it may be necessary for tho defendant to sliow, in order to
vacate the patent, tliat he was usintr duo diligence when the patent
was obtained. Perry v. Cornell, MS. (App. Cas.) — Ckaxcii, Ch. J.;
D. C, 1847.

4. The words " unless such person was using reasonable diligenc«
in adopting and perfecting tho same," constitute a (/ualijicntion of the
preceding language of the section, so that an inventor who has actu-
ally perfected his invention will not be deemed to have surreptitiously
or unjustly obtained a patent for that which was in fact invenUd by
another, u.thys the latter was at the time using reasonable diligence in
adapting and perfecting the same. Marshall v. Mee, MS. (App. Cas.) —
DUXLOP, J.; D. C, 1853.

5. The defence that the 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 the same," does not necessarily imply t)ad 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.
PMps, Dodge <Sc Co., v. Broun Bros., 18 llow. I'r. — Nelsox, J. ; N. Y.,
1S59.

6. If a person does not use due diligence in perfecting his inventioti
after he has conceived the ido;\, and another conceives the idea and
perfects it, and applies it to use, the latter will be considered tho lirst
inventor, and a patent granted the former will bo void. Ransom v.
Mayor, dc, of Neiv York, MS. — Hali., J.; N. Y.. 185G.

(h) 1. An alien patentee must put and continue on sale his invention
within eighteen months from the date of his patent. IlildreaOi v.
Heath, MS. (App. Cas. )— Craxch, Ch. J.- D. C, 1841.

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 api)ly to .such assignees. Tatham v. LowLtr, 2 Blatchf., 60, 51. —
Nelsox, J.; N. Y., 1S47.

3. But it is not necessary that 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 Hoy, MS. — Nklsox, J.; X. Y., 1S49.

(il 1. 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 brou^'ht forward, one of
whom testllied that he had seen such an invention in Eugland sevi'U-

144 PATENT LAWS.

ACT or 183G, CBAP. 357, § 16.

teen vears before, and the other that he had seen one in Ireland.
Waton V. i;,i:lroads. 1 Wall.. Jr.. 105.— Ghifr. .T. ; Pji.. 1H47.

2. The provision of the .stntnto reqniriiic: notic-c of the previous use,
is ilrsiL:nc<l lo pive the patentee the benefit of examining into the facta
of the supposed prior use. Coleman v. Lintor, MS. — Leavitt, J. ;
Ohio, \Hb'.K

3. This section requires onlv the n.nnies and residences of the per-
sons who possessed the prior knowledge, and of the places where the
invention lidH been used. Tlio names and residences of tho witnesses
need not 1x3 piven. WiUon v. UitUroads. 1 Wall., Jr., 195.— GliiEn, J.;
Pa.. 1847. Many v. Jagger, 1 Blaiehf., 370.— Nelson, J.; N. Y.,
1848.

4. Notice of the time of the prif)r knowledge or use is not required.
Phillips V. ragf, 24 How., IGS.— Xel.sox, J.; .^np. Ct., 18G0.

5. In the seventh circuit, tiio notice must specify the street or fac-
tory whore the prior stmoture was used, or the name of tho person or
owner using it. The name of the city, or town, or county, is not
sufficiently definite as to ))!ace. iMtta v. Shawk. M.'^. — I.e.witt, J.;
Ohio, 185lt. Cvleman v. Lu-.wr, MS.— Lkavitt, J.; Ohio, 18.')9.

6. And also, the name of the person by wiiom tho i)rior knowledge
is to be proved. Juchon v. Co})^, MS. — Lkavitt, .1.; Ohio, 1800.

See also Dm est 1'at. Case.s. title (iKXEKAL IssrE, B.

(j) 1. The provision of section 7 and of this section introduced nn
imiK>rtaut modification into the laws of pati-nts, designed to protect tho
American inventor against the inju.stiw of being thrown out of tho
fruits of his ingenuity l)y the cxistentx> of a .«ecret invention or discov-
ery .ibroad, that is a discovery not patented, and not described in any
printed publication. Atton., 5 Opin., 21. — ToiCKY, .Vtly.-tJen., 1848.

2. The only exception to the rule that a i)atenteo must be the original
and first inventor, exists in the case of a party obtaining a patent,
believing himself lo bo the original inventor, and !iis invention is shown
to have bi-en known in a fnreujn country, but not patentee! there, or
do8cribe<l in a printed i)ublicatioii. J'arkrr v. StiUa, 5 McL<'an, 61. —
McLean. J.; Ohi.., Hi;».

3. In determining whether the patentee Mievnl himself lo l>o the
first inventor, iLe delendanl may give evidence that tho patonteo
knew of the existence of th<« thi'ig aliroa<l ; and in (xinsidering the fact
whether lie h<j belirvJ himself to bo the first inventor, it is material to
deterniin*' whether ho was in fact tho original inventor. Forbuah v.
Cook, lo Mo Law rt.-p., r,f,\. — ("iutis, .1.; .Mass., 1S.^7.

4. A prior use of a thin;.' in a forei^Mi country will not invalidate a
f>atont Hubwfjuently taken out h<Te, wln-re the invcnior believed him-
wlf to b<' t!io first inventor, iinlexs the prior invention had been pat-
ented, or d<-fK!riU.'d in Homo printed publicaliou. OUman v. LieHnr,
M.S.— LEAVirr, J.; Ohio, 1859.

6. Kvidenc"' cannot Ik- re<*eive<l of an actual use and knowlediro of
■n invention In a foreign country, prior to the time of the invention

PATENT LAWS. 145

ACT OF 1836, CHAP. 357, §§ 15, 16. IK FORCE.

hero, hut the defendants must ho confined to the description of the
invenlioi) as foinifi in printed publications or patents; tliey cannot go
beyond such publications or patents. Jud^oii v. Cope, MS. — Leavitt,
J.; Ohio, 18G0.

6. The time referred to in this section 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 his application for a patent. Bartholomew v. Sawyer,
MS.— iNiJEHSOLi., J.; N. Y.. 1859.

1. A foreign patent, in order to defeat an American patent for the
same invention, must liave been before the discovery or invention
here ; it is not sufficient that it is before the appUcation. Howe v.
Morton, MS. — Spragle, .1. ; Mass., 18G0.

8. An invention is not "'patented" in England within the meaning
of this section, until the com[)lete specification has been enrolled — until
the invention shall have been made patent to the world, which is
usually six months after the date of the patent. Ibid.

{k) The second proviso of this section virtually superseded by the
act of 1S37, 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 refu.sed 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 (i), 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 wLicli 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 tlie
principles and provisions of this act, to have and receive
7

140 PATENT LAWS.

ACT or 1836, CHAP. 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 >hall in any suoli case be made to appear. ('•) And
sucli adjiidicalion, if it be in fivor of the right of such
aiiplitant, shall authorize tlie Connnissioner to is^ue such
]>atent, on his tilin<; a co])y of the adjudication, and othcr-
A\ ise coinjdying with the requisitions of this act. Pr<>-
vidcd, funrtvir, That no such judgment or adjudication
shall affect the rights of any person except the parties to
the 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,
appeals now lying to tlicni umli-r section 3 of llie act of 18G3, ertt4il>
lishing that court. Previous to tliat act fti>poals lay, by Uie act of
l»:i9, section 11, to the chief-justice, and, by tiie act of 1852. section 1,
to liio assistant justices of tlio Circuit Court of the District of^ Columbia.

(b) The provisions of this section ore now extenilod " to all cases
wliere patents are refu.scd for any reason whatever." Act of 1839,
EcctioQ 10.

(c) 1. Proceodini^s, under tliis section and eoction 10 of the act of
1839, in equity, against the Commissioner of Patent.<», to compel him
to issue a patent, must l>e commenced in the Circuit Court of llio
United ."^tates for the district of Columbia, and tiic Circuit Courts in
the various States have no jurisdiction. Prentiss v. L'U^worth, Mir.
Put. Off., 35, 3r..— Randau., J.; Pa., lS4f..

2. L'|>on a bill Jllod under this section and section 10 of the net of
13.19, to dedare a patent granted by the ( omniiasioner invalid or inop-
erative, th«.' hearing is altogether indeiK-ndont of that before the Com-
miBHiotuT, and takes jiLkv ujion such testimony as tiie parties may see
lit to jirr^lucc-, agreeably to tiio rules and ]>raelice of a court of equity.
The evidence lajforo the Conunis-'^ioner is not evidenc* in such a Buit
excri>t by consent of parties ; nor are the parties restrictcil to the tes-
timony used before the Conunisnioncr. Kithor party is at liberty to
introduce additional evidence. AtJiinson v. BoarJman, MS. — Neusox,
J.; N. Y, 1851.

3. The wmignco of an inTention. by virtue of nn ossignment made
iKjforo pnt«'nt i .sued, may tile a bill in his own name under this section
and ne<-lioii 10 of the act of 18:ifl. agaiiiHt a )>atentee to whom u p.itent
issued on the rejection of his nasitftior's application, for the pnrjKJSO of
annulling (he paiont so isnue<|, and having one gr.tnted to him as as*
Biifuv«. And such asitiguuieui ueed not bavo been recorded before

PATENT LAWS. 147

ACT OF 1836, CHAP. 357, §17. IK FORCE.

Buit brought : it will be siifTicicnt if it is recorded at any time before
the issuinjj of the patent. Ga\j v. Cornell, 1 Blatchf., fjoy, 510. — Nel-
BOX, J.; N. Y., 18 to.

4 The Circuit Courts of the United States have exclusive jurisdic-
tion under this section. Gibson v. Wooduorth, 8 Paige, 134. — Wal-
worth, Chan.; N. Y., 1840.

Section IV. [Enlarged by act of ISGl, chap. 37.] A/ul
be it furtlit'r ono'ted, 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 tlie
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 iuj unctions, 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
terms and conditions as said courts may deem reason-
able (a) : Provided, hotcever, 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)

(a) 1. Under this section the Circuit Courts of the United States
have not only oripinal, but exclusive cognizance of all actions arising
under the patent laws. Dudlei/ v. Mayheu; 3 Comst., 14. — Strong, J. ;
N. Y., 1^4;). Lime)- v. Fetuui, 40 Maine, 4:54.— Rice, J.; Me., 1856,
Parsons V. Barnard, 1 John., 144. — CiRi.^M; N. Y., 1810.

2, The jurisdiction conferred upon the Circuit Courts by this section
is the same in its nature and extent as the equitj jurisdiction in Eng-

14$ PATENT LAWS.

nr roRCB. act or 1836, chap. 357, § 17.

land, rrom w hicli it ia derived. Allen v. Blunt, 1 Blatchf., 486. — Nel-
BON, J.; X. Y., 1819.

3. Under tliis pcction the Circuit Ck)urts have jurisdiction irre8i>ective
of the ripht of the jilaiiititT to an injunction or a doninnd for one. Kevins
V. Johnson, 3 Blatchf., 83. — Nelsos, Bktts, JJ.; N. Y., 18^3.

4. The natural interpretation of the lanjfuage of this section seems
to be, that (bnpresa lias betowed upon this court a common juri.^dic-
tion, both on it.s law and equity sides, over all cases under the patent
laws, and that no suit of that character can be maintained at law which
may not also bo prosecuted in equity. Jbid., 83.

6. In cases urisinpr under the patint law, the jurisdiction of the Cir-
cuit Courts does not deiKind upon the citizenship of the parties to the
action, or the amount in controversy, but upon the subject-matter.
Allen V. Blunt, 1 Ulatchf., 4St;._NKi.'soN, J. ; N. Y., 1849. Gvodytar
V. Uni"n Huh Co., MS— Ixgkksoll, J.; N. Y., 1857.

6. The jurisdiction as to subject-matter does not extend to a bill in
equit}' tiled for the spocilic perfurman<.t> of a contract reH|>ecting patents.
Kemiiith v. Calrert, 1 W(X)d. k Min , 37. — WdoDULHY. J.; Mass., 1815.
Bro"ks V. SloUey, 3 Mclx^an, 5'J5.— McLkax, .1.; Ohio, 1813. Burr y.
Gregory, 2 Paine, 420, 429.— TiioMi'Sux, J.; N. Y., 1828.

7. Nor to a suit brought to enforce the covenants of a license grant-
ed under a patent. Goodyear v. Union Rub. Co., MS. — IxQEiuiOLL, J. ;
N. Y.. 1857.

8. Section 1 1 of the judiciary act of 1789 requiring one of the parties,
plaintifl' or defendant, to be an inhabitant of the State where the suit
is brought, does not apjily to actions ari.«ing under the patent laws.
AlUn V. Blunt, 1 blatchf., 48t;.— Nelson, .F.; N. Y., 1819.

9. To give the court.s jurisdiction, the party defendant must bo an
inliabiiant of tlie district in which the suit is brouglit, or he must bo
found within it at the tiino of the service of tiie original process. The
provisionB of section 11 of tlio act of 178;', in this respect, apply to

Satont actions. Day v. Nruark Intl. Hub. Co., 1 Blatchf., f.3I, ((32. —
fEUSOS, J.; N. Y., 1850. AWn v. Blunt, 1 Blatchf, 48t;.— Neusox. J.;
N. Y., 1849. WiLion v. Sherman. 1 Blatchf, 511 — Neusox, .1.; N. Y.,
1850. Brown v. Shanmm, 20 How., 5i;.— Taxev, Ch. J.; Sup. Ct,
1857. Clinffee v. Ilnyuard, 20 How, 215.— Catkon, J.; Sup. Ct , 1857.

See oIho I>i(iE.HT I'at. (.'ahe-s, title ("olkt8, B. 2.

(6) 1. Other rensonaljle cases under this section in which nppcnlfl
and wrilB of error may bo allowed to the Buprome Court, muct bo
limited to cises which relate to the construi-tion of the patent laws,
and f<u< h as involve iiii|>ortnnt and nui inlting tnattcr.'t oonneoted with
those laws, and riiicHtiotis n ally d«jubtful. Allen v. Blunt, 2 Wood, k
If in., lf»7.— WooDBtBv, .1.; Mbah . 184«. Sizer v. Manny, 1ft How.,
103.— Takkv, Ch. J.; Hup. ("t., 1H53.

2. Under llils wction, if n writ of error is allowed liy the court ns
" reaaonablo," ■urh writ inu-»t bring u|) the whole case for ifjnsidcra-
tioo, and iLe court below cannot decide aa to what particular point*

PATENT LAWS. 149

ACT OP 1836, OHA.P. 35T, § 18. in POROK.

shaU bo taken up. IJogg v. Emerson, 6 How., 478. — Woodbcrt, J.:
Sup, Ct., 1847.

3. An appeal or writ of error now lies to the Supremo Court from
nil judpnionts and decrees of any Circuit Court rendered in any action
ari.sing under the patent laws, without regard to the value or amount
in controvers}'. Act of 18G1, chap. 37.
See also Digest Pat. Capes, titles Appeals, A. ; "Writ of Error-
Section 18. [Amended by act of 1848, § 1; act of
1861, §§ 12, IC] And 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 Office, setting foilh tlie
grounds thereof {n) ; and tlie 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 aj)plica-
tion for a patent, cause to be published in one or more of
the principal new.spapers 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 cause why the extension should not be grant-
ed, (c) 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 puMished notice thereof. Tlie.
patentee shall furnish lo 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.

IN rORCI. AOT or 183G, CHAP. 357, § 18.

and profit in any manner accruing to him from and by
reason of sai<l inveiitiun. And if, upon a hi aring of the
matter, it sliall apj>ear to the full and entire sali.sfaction
of said board, having due regard to the public interest
therein, tliat it is just and proper that the term of the
jiatent sliould be extended, by reason of the patentee,
without neglect or foult on his part, having failed to
obtain, from tlie use and sale of his invention, a reason-
able remuneration for the time, ingenuiiy, 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 tiie said
patent shall have the same effect in law as though it
Lad been originally granted for the tmu of twenty-one
years, (e) And the benefit of suili renewal shall extend
to assignees and grantees of the right to use the thing
patented, to the extent of their respective interests there-
in {/): Proridul, hinrcV(Ty That no extension of a
patent shall be granted after the expiration of the terra
for which it was originally issued, {g)

(a) 1. In tliiii section Iho word paUnUe in imcd m equivalent to i»-
venUjr. Wifnlw^th v. Shn-man, 3 Ptory, n<> — Sttiut, .1.; Ma»8., Ifl44.

2. Thia noction authorizoH the extonniun of «» pntont on the applira-
tion of uD mlminimrator. Nijinan's C'Ht, -i <>i>in , Uii. — (!hum>t,
Atly.-<ien. ; 1H39 Van //<«.* v. Scudder (cited 3 Story. HJ; 3 Mc-
Lean, 4:!H) — Thomi-WiK, J.; N. Y., ls4:!. Brooks Y. liickntU, 3 McLoun,
20H.— M<lJtAN, J.; Oliio. IS 13. Brooks v. liirknfU. .1 McU-nn. 436.—
McLeaS. J.; Ohio, 1844. Woo,1uvrth v. Sherman, 3 Story. 172.—
frrOET, J.; Uu», 18U. Woodworth v. WiU(m, 4 Uow., 71G.— NklsoH,
J. ; Sup. CL, l»i5.

PATENT LAWS. 161

ACT OP 1836, CHAP. 357, § 13.

3. And tliis, tliough the patentee diirinp: his lifetime had disposed of
all his interest in the existing patent, and having at tlie time of his
death no interest in it. Wilson v. liosstau, 4 How., 675, 686, 688. —
Nei^ox, J.; Slip. Ct., 1845.

See al.so Digest P.\t. Ca.ses, title Extension of Patent, A.

(b) The fee is now fifty dollars on the application for an extension,
and fifty dollars when the ciclension is granted. Act of 18G1, 8 10.

(c) 1. The notice of apphcaiion for an extension is intended to pro-
tect the public, and give all an opportunity to appear and oppose.
GaU's Cas'', 3 Opin., 594.— Gilpin, Atty.-Gen. ; 1840.

2. Application must now be made at least ninety d.nye before the
expiration of the patent, and the notice must be published at least
sixty days before such expiration. Act of 1861, 8 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 \ . Sherman, 3 Story, 176. — Story, J. ;
Mass., 1844. WQscm v. Tumtr, 7 Law Rep., 529.— Taney,- Ch. J.; Md.,
1845.

2. This section provides for but one extension. Gibson v. Cook, 2
Blatchf, 146— Nelso.s-, .1.; X. Y.. 1850.

3. The decision of the Board of Commissioners, under this section, is
conclusive within the scope of its authority. Brooks v. DickneU, 3
McLean, 2.')8. — McLean, J.; Ohio, 184:i. Wilson v. Rosscau, 4 IJow.,
688.— NklsoN, J.; Sup. Ct., 1845. Woodworthv. Stont, 3 Stor,-, 753.
— Story, J.; Mass., 1845. CoU\. Young, 2 Blatchf., 473, 474.— Nel-
son, J.; N. Y., 1852. Battin v. Tuggert. 17 How., 84.— McLean, J.;
Sup. Ct, 1854. Clum v. Brewer, 2 Curt., 518.— CuRTis, 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 v. Harris, I Blatchf., 169. — Nelson, J. ; N
Y"., 1846.

6. If extended again by act of Congress, it becomes one for twenty
eight years. Wooduorth v. Edwards, 3 Wood. A 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,
337.— Washington, J. ; Pa., 1816. Evans v. EaUtn. 3 Wheat., 528.—
Marshall, Ch. J.; Sup. Ct., 1818. Dlanchard v. liaijnef. 6 West. Law
Jour., 83.— WooDBL-'iY. J. : X. H., 1843. Bloomer v. StoUey, 5 McLean,
160, 161.— McLean, J.; Ohio. 1850.

See also Digest Pat. Casks, 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 oriidnal patent, so as
to rest in them any exclusive right. But the benefit of such renewal

152 PATENT LAWS.

IX roKCE. Acr of 183G, cuap. 357, §§ 18, 19.

iij limited to tlic«<e who were in the use of the patented article at the
time of the renewal, and saves to Bueh persons the riphl to use the
machines held by thorn ut the time of such renewal. Wihon v. Rosseau,
4 How., G82.— NKI.SOS, J.; Sup. Ct., lS-13.

2. The meaniop of the words "thinpr patented." in the latter part
of this section, when construed in connccti«n with the simple riphi to
u»r, williout the right to viake and rend, has reference to the machine
patented. Ibid., 6S3.

;i. The phra.se " to the extent of their interests therein," means their
intorcsts in the patented machines, be that interest in one or more at
the time of the extension. JbkL G83.

4. The object of the clause ns to assignees, is to preserve any pro-
vious contract of nssignnient in the sense in which boiii parties under-
stood and intended it at the time it was mndo, and to secure to the
purchaser the right he had intended to buy, and whicli the patentee
intended to sell Wilson v. Turrur, 7 Law Uep., 530. — Taxey, Ch- J. ;
Md., 184.'..

6. The words of this section ns to assignees and grantees, seem to
convey the impression that something more than the mere ownership
of existing machines was intended, and that they were intended to
embiacc ail das.ses of such assignees and grantees, and all inventions,
whether of machines, processes, or comjiositions of matter, and to era-
brace rights and interests which were different in extent, either of time
or territory, or bolli. Day v. Union Hub. Co., 3 Blatchf., 407. — II ALL,
J.; N. Y., 185G.

G. But such right is limited to a right to use, although the person
holding it may also have held, during the original term, an exclusive
right to use, to make, and vend. And such right to use is .xecurcd
only to tlie extent of the respective interests of the assignees or
griintees therein. Ibi^J., 502.

See also I>i<;e.st Tat. Casrs, title Extension' OP Tatent, C.

ig) The extension of nil patent*, except for designs, granted subse-
queully to March 2d, Isoi, is now proiiibited. Act of 18G1, g 16.

Section 19. An<f l>r it furtfur r>i<i<'(>(J, That there
!-hall he j)rovi<h'(l for the iiso of said oflice, a lilirary of
scientific works and jicrio<lical puhrKations, Ijoth foreign
and American, calculated to facilitate the discharge of
tlie duties herehy required of the chief officers therein, to
he j»ureha«ed uiidir tlie direction of the Conunittcc of
the Library of Congress. And the sum of fifteen hun-
dred dollars ift hereby appropriated for that purpose, to
be ]>aid out of tlic patent fund.

PATENT LAWS. 153

ACT or 183G, CHAP. 357, g§ 20, 21.

Section 20. And be it further enacted, That it sh:iU
be the duty of the Commissioner to cause to be classified
and :irrangcil, in such rooms or galleries as may be pro-
vided fur 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 oflSce. And said rooms or galleries shall
be kept ojien during suitable hours for public inspection.

The Commissioner of Patents may now restore to applicants, models
of rejectetl applicaiions, or of applications for designs, or otherwise dis-
pose of ihenv. in ca.sos wliere he sliall not tiiink it necessary to preserve
them. Act of ISO!, g i>.

Se(.tion 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, however, That
all actions and processes in l:iw or equity sued out prior
to the passage of this act, may be prosecuted to final
judgment and execution, in the same manner as though
this act had not been passed, exccptiiig and saving the
application to any such action of the provisions of the
fourteenth and lifteenth sections of this act, so far as they
may be applicable thereto : And j^i'ovided, a/so. 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 m ith and acted on in the
same mamier as though filed after the passage hereof

Approved July 4th, 183G.

154 PATENT LAWS.

IK rORCK. ACT or 1837, CHAP. 45, § 1.

ACT OF 1837, CHAPTER 45.
5 Statutes at Large, 191.

[This Act still in Foree.]

An Act in addition to the act to promote the progress of

science and useful arts.

Sectiox 1. He it enacted by the Senate and House of
Representatives of the United States of America in Con-
gress assembled^ Tliat any person who may be in possos-
eion of, or in any way interested in, any patent for an
invention, discovery, or improvement, issued prior to the
fil^fcnth day of Det'cmlxT, in the year of our Lord one
thousand eij^ht hundred and thirty-six, or in an assign-
mt-nt of any patent, or interest therein, executed and re-
corded prior to the said fifioi-nth ihiy of DocH-nibcr, may,
witiiout charge, on presi^ntution or transmission thereof
to the Commissioner of Patents, have the same recorded
anew in the Patent Oftice, together with the descriptions,
specifications of chiim and drawings nnncxed or Itelong-
ing to the same; and it sliall he the duty of the Commifl-
nioner to cause the same, or any authenticate"! copy of
the original record, speeifieation, or drawing which lio
may obtain, to be tranRcril)ed and copied into books
of record to be kept for that purpose; and wherever a
drawing was not originally annexed to the patent .and
referred to in the specification, any drawing produc(>d as
a delineation of the invention, being verifimi by oath in
such manner as the Comnussioner shall require, may be
transmitted and placed on fde or copied as aforesaid, to-
gether with cerlificate of the oath ; or such drawings may

PATENT LAWS. 155

ACT OP 1837, CHAP. 45, §§ 1, 2.

be ma<le 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 the 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 Ofiice,
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 his 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, wliich shall be specially required by said Com-
missioner.

Section 2. And be itfurthtr enacted. That copies of
such record and drawings, certified by the Commissioner,
or, in his absence, by the chief clerk, shall he 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, CHAP. 45, g§ 2, 3.

ing of the invention, if separate from the patent, verified
as aforesaid, deposited in the Patent Office ; nor shall any
Aviiiten as^iirnmcnt of any sucli jtatent, executed and re-
corded prior to tlie said fiftci-iitlj day of Dcccfuber, be
received in evidence in any of the said courts in behalf of
tlic assirjnee or other person in ])o<session thereof, until it
shall h.ive been so recorded anew.

1. Duder this section it was held, whore a patent wn.s prnnted in
18;i4, but no drawing' was attached thereto, and in June, 1837, Buch
j)atent was recorded anew, and was also extended for seven years on
tlio 25ih of Septemlx»r. ists, and in November, 18J8, a drawing with
written references was lilcd, with an allichivit of tlie jiatenteo of tho
correctneHS of such drawin^f. tliat a ctTtilied copy of siu-h drawing was
admissible in evidence in connection with tho patent and sjiccitlcation,
and that tho whole toj^ether made prima facw evidence of tiie particu-
hirs of such invention. Winans v. Srhentc. tt Troy li A'., '1 Blatclif.,
2?13, '19,:,, 2i»8 -Nkusok, J.; N. Y., 18:.l.

'2. Such u drawin^r, however, as a general rule will not bo ofTectual
to correct any material dtlVct in tlie sim-cilication. ^n case of discrep-
ancy between tho drawing's and spocilication, tho latter must prevail.
Nor will such a drawing have tiio same eflbct as if it had been referred
to in tho Bpcciflcation. Ibid., 2U9.

SEfTiON 3. [Extended by act of 1842, § 2.] And he it
further cimrtnl^ That whenever it shall appear to the
Commissioner that any patent was destroyed by the
l)umini^ of the Patent Ofliee l)ui!ilin<T on the aforesaid
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 issue
a rn'W pitent for the same invention or disoovery, bearing
the date of the ori^^inal patent, w ith his certificate therc-
(jii that it w:i« made aiid issued piirsuaiil to the provisions
of the thinl section of this act, ami shall enter the same
of record : J*r<jci(h<ly hotrcvcr. Thai before such paten^
shall be issued, tin' ai^plicant therefor shall deiio.-^it in tho
I'ateut Ollice a duplicate, as near as inay be, of the origi-

PATENT LAWS. 157

ACT OP 1837, CHAP. 45, §§ 3, 4.

nal nioilel, dr:nviii<fs, and description, with specification
of the invention or discovery, verified V)y oath, as 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. Where a patent was obtained in 1834, the original of which and
the drawings were deatro^'cd bj' fire in 1S3G, and the patentee, under
the act of lS:i7, filed in 1841 a copy of his patent, and deposited a
drawing, wliich, however, was not verified, but wliich lie verified in
Februiiry, 1844, and subsequently in March, 1844, considering such
copy imperfect, tiled another and a fuller drawing, and commenced suit
iu May, 1844; Iltld. 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 t!ie other. Ibid., 1 '1.

3. Under tliis section drawings when burnt may be restored, and if
in some respects erroneous they can be corrected. Uogg v. Emerson,
11 How., 00(i.— WooDiiURT, J.; Sup. Ct., 18.')0.

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 ou
the Commissioner in issuing patents, and to protect the
riglits of the public and of patentees in patented iuven-

158 PATENT LAWS.

ACT or 1837, CHAP. 45, §g 4, 5.

tions and improvements: Provided, That a duplicate of
such models may be obtained at a reasonable expense:
And provided, also, That the whole amount of expendi-
ture for this j)urpose 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 bo
to consider and dett-rmine upon the best and most judi-
cious mode of obtaininjT niodels of suitable construction;
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, tepms, and conditions, not inconsistent with law,
as in their opinion may be proper and necessary to carry
the provisions of this section into effect, according to its
true intent.

SEfniON 5. [.\mendinfr .act of 18.30, § 1.3.] And be it
furthtr tmirted, That, whenever a patent shall be re-
turned for correction and reissue uiuler the thirteenth
section of the net to which this is addition.al, an*l the
patentee shall desire several patents to be issued for dis-
tinct and sep.irate jtarts of the thing patented, he shall
first pay, in manner and in addition to the sum provided
by that act, the sum of thirty dollars for each addition.al
patent ho to be issued (n) ; J'r'ividrd, /miri'vt'r, That no
j>atenl made j>ri<jr to the aforesaid fifteenth day of De-
cember, shall be corrected and reissued until a duplicate
of the moilel and drawini^ of the thing as originally in-
vented, verified by o:ith as shall be rcfjuired by the Com-
missioner, shall be deposited in the Patent Office ;

PATENT LAWS. 159

ACT OF 1837, cnAP. 45, §§ 5, 6. dj force.

Nor shall any addition of an improvement be made to
any patent heretofore granted, nor any new patent be
issued for an improvement made in any machine, manu-
facture, or process, to the original inventor, as.-^ignee, 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 boon deposited in the Patent Office, if the
Commissioner shall 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.

(o) 1. If an original patent includo two inventions, and its validity
on that account is doubted, a separate renewal is just and proper.
Goodyear v. Bay, MS.— Grier, J.; N. 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 tlio law in its true spirit will
admit of, ought 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 reissue, for each separate and distinct part, effect-
ually to cure the defect : and he has the right to restrict or enlarje hia
claim, so as to give it operation, and effectuate his inveiitioa. Ibid.

See also notes to section 13 of tlie act of 1836.

Section 6. [Enlarging act of 1836, § 5.] And be it
further enacted. That any patent hereafter to be issued,

100 rATENT LAWS.

LN rORCB. ACT OP 1837, CHAP. 46, § 6.

may be made and issued to the assignee or assignei-s of
t!ie inventor or discoverer, the assignment theroul' being
tiist entered of record, and the application thercfur being
d liy made, and the speciiication duly sworn to by the
ii)ventor. And in all cases hereaiter, the applicant for a
l»:itent shall be held to furnish duplicate drawings, when-
ever tiie case admits of drawings, one of which to bo
deposited in the office, and the other to be annexed to
the patent, and considered a part of the specification.

1. This is an enabling statute. Prior to its passajrc, letters patent
could only isisuo to tiie iuveutor: and after they \fere issucil they woro
assignable, so as to (five tiio assij^neo, in whole or in i>art, legal ri^'hts.
This act gave the right to the a>.signeo or assignees to have the patent
iiisued to him or them, and uol to the iuventor. Aium., 4 Opin., 4U0.
—Mason, Atty.-Gcn.; 1845.

2. But patents cannot issue jointly to the inventor as such, and to
the assignee of a partial interest : IJut tuust issue to the assignee or
assigiiecs of the whole interest. Ibid., 4ol.

3. A partial assigmucnt before issue, docs not entitle the partial as-
signco to liavo the patent issued to him to the extent of his iutorest.
/b,d., 401.

4. Alter the assigDmcut of the invention, Tt\ider this section, by
which the inventor divests himsellof all interest therein, and Irausfcrs
it to the as.signoe, aUhoiigh the application fur a patent roust ho in hia
name, still, for all substantial purpo.'«os, and in judgment of law, the
U-nsigneo is the party making the application. G.iij v. CumeL, 1 Blatchf.,
509.— NEi.aON, J.; N. V., Is 19.

6. An OHsigTimenl before patent issueil, may be made aAcr the rejec-
tion of the assignor's ap|>li(Mtion, and alter his appeal to the justices
bf the Circuit (.'ourt, and wdi be suDieient to enable sueh aasignoe to
tile his bill under section 10 of the act of is3ti. amended by Hcetion 10
of the act of 1839, to cumi>cl the issue of a patent to him. Jb.d., .iDS,
.■.10.

G. If an InTonlor aa.'^ign all his right in an invention, the assignee
may have tlio jMil<nt is«ued to himself. Hut If the assignment bo only
|iartial, though the part excepted is lunall, the assignee has no legal
claim to the {Mitent. It must be i.-sued in the name of the inventor,
uud be held by hiin in trust for the use of the us'iguee, to the extent
of the cfjuitiei«i lie has by viriiio of his couiruel. Agcr'a Cine, MS.,
Opin.— Bi.A( K, Atly.O<-n.; IB.'.y.

7. The provision of ihis section, requiring duplicate drawings, though
directory in ita tortus, is not n condition : and it 1ms retercuce, in point

PATENT LAWS. IGI

ACT OF 1837, CHAP. 43, § 7. IN FORCE.

of lime, to the issuing of tho patent, and not to the filing of the peti-
tion for it. Duplitato dia\viiig3 need not be tiled at lU^ time of tho
application, and such is the inioipretation of tiie Patent Olliee. t'ri:.tch
V. Uogns, MS. — Kane, J.; Pa., l«Jl. O'UcMy v. Mots'-, 15 How., 12G.
— GuiElf, J.; Sup. Cl., 1853.
See also Digest Pat. Cases, title As.sig.\be, B. 3.

Skction 7. And he it further enacted, Th;it. whenever
any patentee shall have through inadvertence, accident,
or mistake, made his specihcution of claim too broad,
clainiinn^ more th:m that of Avliich he was the original or
first inventor, some material and substantial part of the
thing patented being truly and justly his own, any
such patentee, his adniiuistrat(jrs, 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 holil by virtue
of the patent or a-signnicut, slating therein the extent of
his interest in such patent {b) ; which disclaimer shall be
in writing, attcsud 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 nquired
by law to be paid, of the sum of ten dollars. 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 {r) subsequent to the record thereof
But no such disclaimer shall affect 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 protootiuu
of the patentee as well as the public, and should not recoivo a cji.si.at.-

168 PATENT LAWS.

IX FORCE. ACT Of 1837, CHAP. 46, § 7.

tion thnt would restrict its operation within narrower limits than the
law fairlv imports. O'Reilly \. Morse^ 16 How., 121.— Ta.ney, Ch. J.;
Sup. Cl..'l8..3.

'1. WliLlhcr a patent is illegal in part because of claiming more than
he had described, or more tlian he lias invented, the patentee must in
either case disclaim, in order to save the portion to which he is enti-
tled. Ibid.. 122.

3. A patentee has a right to disclaim any thing which has been
claimed through " inadvcrtcnco or mistake." I'arkcr t. Sears, MS. —
Grikii, J.; Pa., 1S50.

•J. SemUf, Tliat a disclaimer, under thi.s section, should not only dis-
claim what is not claimed as new, but should nl.so distinctly .sot forth
what part of the invention is still claimed, as it is niuuifeslly designed
to act as a new specification. Lipjnucott v. KeHij, 1 West. l<aw Jour.,
613.— Ikvi.v, J.; I'a., 1844.

(b) 1. Under tliis section the di.«claimer must state the interest of
the person di.scluimiiig. Hut where an administrator in whose name a
patent had been extended, entered a disclaimer, staling that he was
the patentee, and rdu iriug to the pat«^'nt as showing his interest, it
was lield sulBcient. lirouks v. Btcknell, 3 McLean, 439. — McLean, J.;
Ohio, 18J4.

2. Where a discluimtr made by a j)atontcc stated that 'it was to
oi)erate to the e.Tlent of the interest in said letters patent vested" in
the jalcntee, HtUi, that it fairly imported on its fatv, that the |>atentee
was the owner of the entire interest in the patent, and if s<», there
was a substantial lomplianco with the statute, as to tlic disclaimer
slating the interest of llie party making it FooU r. Sileby, 1 Blatchf.,
401.— Neuso.s, J.; N. Y., Isi'J. SHaby v. FooU, li llow., 221. — Cuu-
TI8, J.; Sup. Cl., 1M52.

(c) 1. If a patent lias been previou.sly assigned in part, and a dis-
cluinier haa l.*ecn filed by the patentee ulone, such disclaimer will not
oj>urato in favor of the assignee, in any suit either at law or equity,
unless he has joined in it. WytUi v. Stone, 1 Story, 294. — Stouv, J.;
Mass., 1H40.

2. A disclaim t of jtart of an invention cannot afiect a prior granK'o
under the patonl. unlosa ho a<-copta of it ; he may n>fuso to ))0 aflfected
by it. Siii\lh V. Mercer, 5 West. Law Jour., 53. — Kane, J. ; Po.,
1«4<;.

3. I'ndor Ber,ynn 7 of tiu» act of 1837, the owner of a sectional in-
Icrent in a pal«iil uiay make a disclaimer of pari of the tiling ]>Htenled,
which wiU Ix! cjiisid'Tod us a ptirt of the original palvnl, to Ihu extent
of hilt inlffrcsl; but iho patentee is not comjielled to join in such dis-
claimer, nur will ii adect any ono oxc«'pt him making it, and those
claiming under him. I'vltcr v. JIuUaud, MS. — NsLtiON, iNtiKRauLL,, J J. ;
Ct, 18j«.

4. Aflf^r au'-h a disrlaimer, n dilTorcnt claim of right is secured to
the disclaimaal from wlial is purported to bo secured to tiie paientco.

PATENT LAWS. 168

ACT or 1837, CHAP. 45, §§ 7, 8.

Different cliums of right in the same invention arc thus secured to dif-
ferent sectional owners. JbUl.

5. A disclaimer. V»crore it can be received in evidence, must be prop-
erly provid, cither as an original paper, or by n certified cop_v, and if
received at nil, must have full efTt-ct given to it as a disclaimer. FooU
V. Sxhh[i, 1 Blatcht , 4r)0, 4fil.— Nei^so.v, J.; N. Y., 1849.

0. The disclaimer of part of an invention, provided such disclaimer
arose from inadvertency, accident, or mistake, will not prevent the pat-
entee from embracing the part so disclaimed, onia reissue of his patent
Haijden, Ex parte, MS. (App. ( "as. >— Merrick, J.; D. C, ISf.o.

(d) 1. The disclaimer mentioned in this section applies solely to suit"?
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. «on<;, 1 Story. 294.— Story, J.; Ma8:=., 18»0.

2. A disclaimer to be eflectual under tiiis and section 9, must be filed
before suit brought. If it is filed during the pendency of the suit, the
plaintifif will not bo entitled to tlie benefit thereof in that suit Beed v.
Cuttr, 1 Story, tiOO. — Storv, J.; Mass., 1841.

3. If filed before suit, the plaintiff will be entitled to costs, if he es-
tablish that 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 the benefit thereof, if he has unreasonably neglected and
delayed to file it. Such neglect or delay is a good defence to the suit.
Ibid., (;00.

See also Digest Pat. Cases, title Disclaimer ; and notes to section
9 of this act.

Skctiov 8. [Repealed in part by act of 1861, § 9.]
A/tcl 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 Commissioner 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 Commissioner;

164 PATENT LAWS.

IK rORCK. ACT or 1837, CHAP. 45, §§ 8, 9.

and in all such cases, 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 the case of original
applications for patents.

This section ?o far as it relates to patents for additions to existing
patents, is repealed by iho act of ISCI, section U.

Section 9. [Enlarging act of 1830, § 15.] And be it
further €)Htcte(1^ (any thing in the fifteenth section of the
act to which this is adflitional to the contrary notwith-
fitanding,) Tiiat, whenever by mistake, accitlent, or in-
advertence, and without any wilfnl default or intent to
defraud f)r niislea<l the juiblic, any jKitcntee Hliall have in
his specification claimed to be the original and first in-
ventor or discoverer of any material or substantia! part
of the thing patented, of which he was not the first and
original inventor, ami shall have no legal or just right to
claim the same, in every such case 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-
viibil^ It sliall be a material and sulisrantial part of the
thing patented, aiul be (lelinilcly distiiigui'<l»able from the
other parts so claime<l without right as aforesaid, (ci)
And I'very such patentee, his executors, administrators,
and assigns, whether of the whole or of a sectional in-
terest therein, vh.ill be entitled to maintain a suit at law
or in equity ou s.ich patent for any infringement of such
part of the invention or discovery as shdl be hona Ji<fe
his own as aforesaid, notwithstanding the .'specification
may embrace more than he shall have any legal right to
claim. (/') But, in every such case in which a judg'ucnt

PATENT LAWS. 1G5

ACT OF 1837, CHAP. 45, § 9.

or verdict shall be rendered for the plaintiff, he shall not
be entitled to recover costs against the defendant, unle>rt
he shall have entered at the Patent Office, prior to the
comnienceincnt of the suit, a disclaimer of all tliat part
of the thing i)atcnted which was hO claimed without
right ((•). Provided^ hoictvcr^ That no person bringing
any such suit shall be entitled to the benefits of the pro-
visions conttiined 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 coutemphitcs the rule of the common law, that if
a patent embraces ditlVrenl machines, and any one of them 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 sought to miti-
gate it by providing that under the cases therein mentioned, the patent
sliould be good to the extent of the patentee's invention. Wyeth v.
Stone, 1 Story, 28S, 289.— Sronv, J.; Mass., 1840.

2 It points throughout to a single invention, as the " thing pat-
ented," and docs not justify the position that one patent can lawfully
include divers distinct and independent inventions, having no connec-
tion with each other, nor any c-ommou purpose. It may therefore bo
deemed a legislative recognition and adoption of the general rule of law
in cases not within its exceptive provision. Jb:d., 290.

3. This .section is intended to cover "inadvertences and mistakes"
of law. as well as inadvertences and mistakes of fact. Ihid., 295.

4. Prior to the act of 1830, if the patentee claimed more than he had
invented, his patent was void. But under this section, his patent is
not absolutely void, because tlie patentee claims more than he has
actually invented, but is valid for as much as is truly and bona fide his
own ; init to secure the benefits of this section, the specification must
state in what the improvement consists. Peterson v. Wooden. 3 McLean,
249.— McLean. J.; Ohio, 1813.

(h) 1. Trior to the act of 183(>, a patent was void if the claim extend-
ed beyond the invention. Under section G of the act of 183G, it wa.^
void if a substantial part had been patented or descriljed in a printed
publication. Section 15 of the same act saved the patent from being
void, if the patentee beUeved himself to be the first inventor. Section
9 of the act of 183", 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 good faith, if through mistake
or inadvertence he had claimed more than ho had invcntcti, and that he
might maintain suit on the part actually invented by liim, provided he

1G6 PATENT LAWS.

ACT Of 1831, CHAP. 45, § 9.

filed within a reasonable time, a disclaimer of the parts not invented

bv him. SmOJi v. Ely. 5 McLean, 84, 85.— McLkan, J., Oliio, 1849,

2. The doc-trinc that a party may take out a valid patent for a com-
bination, and inohido in it a riglit to eaclt di.-^tiiict improvement, is con-
firmed by the obvious intent of this scclion, wliicli pives a patentee a
riKht of action for a pimtical use of any one of his invented improve-
ments, which is distinctly stated in his patent, though ho may by niia-
take. accident, or inadvertence, have claimed others of whi(;h lie was
not the inventor. J'ilU v. Whitman, 2 Story, 621. — Stoby, J.; Maas.,
1843.

(c) 1. The disclaimer mentioned in this section applies solely to suits
brouglit after the disclaimer is tiled. WyeVi v. iitone, I Story, 29-1. —
Stoby. J.; Ma.<s., lt'40.

2. Where a patent c-ontains several claims, and the invention em-
braced in one seems to be not new, or useless, the patentee, unJer this
and section 7 may still maintain an action for an infrin^roment, although
he 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, 3
Llatchf., 1 'j8.— NEI.80.V, J.; N. V., 1851.

3. If in the progress of a trial, it turns out that a disclaimer ought
to have been made, the plaintiff may still recover, but will not be en-
titled to costs. Jbid., 198.

4. A disclaimer is necessary only where the thing claimed without
riglit is a material and substantial part of the thing invented. If the
part not new is not essential to the machine, and was not introduced
into the jiatcnt through wilful dcfaiill, or intent to defraud or mislead
the public, ^tlic want of a di.sclaimer affords no groiuid for invalidating
the patent.* Jbid., 109.

6. Under this section, in an action for infringement, the plaintiff
cannut 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 part: and it makes no difference whether the infringe-
ment alli'ged was of or again-^t the part so claime<l, but not now, or of
some other part claimed in the patent. Seymour v. McCormick, 19
How.. IOC — Nki.son, J.; Sup. Ct., 18.'<t;.

C. The omission to disclaim a part not now, prevents a plaintiff from
rooovering coUn and ii makes no difforcnco that such part is not
alleged l<» \>v infringed. l>>id., 1()6

7. Though the neglect to file a disclaimer until ader suit brought,
will prevent the plaintiff recovering costt, it df>cs not interfere with the
]Mjwcr uf the court t" int-roase the verdict under flo<-tion 14 of the act
of 1SJ6. Guyvn v. SrrrtU, 1 UlaUhf, 245, 2Hi.— -N'ELaoK, J. ; N. Y.,
1847.

id) 1. The plaintiff will not be entitled to the benefit of ■ disclaimer
if he has unrea-winably neglected and delaye<l to file it. Such neglect
or delay is a gfXKl <lefenco to a suit lieed v. Cutter, 1 Story, 600. —
Btoet, J.; Mass., 1841.

PATENT LAWS. 167

ACT OF 1837, CHAP. 45, §§ 9-11. m FOECE.

2. An unreasonable delay to enter a disclaimer cuts oflF the patentee,
not only from a right to costs, but also from a right of action. Brooks
T. BickneU, 3 McLean. 449.— McLean, J. ; Oliio, 1844.

3. Wiiat is an unreasonable delay is a mixed question of law and
fact. Loss vigilance will be required from an administrator than from
the original inventor. Ibid., 419, 450.

4. Where a patentee has unintentionally claimed something which
was not original, but has tmreasonably neglected to file a disclaimer, he
cannot, under this section, recover in an action of infringement, even
if the defendant has infringed the parts of his invention which are new.
Parker v. S(ile.s, 5 McLean, 5G.— Lkavitt, J.; Ohio, Is 19.

5. Under this section, the question of unreasonable negligence or
delay in entering a di.sclaimur goes to the right of the action; and if
the delav shows great negligence, the jury may find the patent void.
IlaUv. WiUs, -1 Blatchf, 199.— Nelsox, 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
unroisonahle (JUlay in disclaiming it by waiting to obtain the decision of
the highest court upon it. O'Rdlly v. Morse. 15 How., 122. — Taney,
Ch. J.; Sup. Ct., 1853.

7. L'uder this section, where a patentee claims more than he has
invented, or is entitled to, his patent will still be valid for what he has
invented, provided he enters a disclaimer of what lie has included in
his patent which he has not invented, without unreasonable neglect or
delay. SiUby v. Fhote. 20 How., 3>i7.— Nelsox, 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, § 6.] Aiid be
it further erKtctecl, 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 different sections of
the country, for the purpose of receiving and forwarding
to the Patent Office all such models, specimens of ingre-
dients and manufactures, as shall be intended to be pat-
ented or deposited therein, the transportation of the
same to be chargeable to the Patent fund.

Sectiox 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 rouCE. ACT or 1837, chap. 46, §§ 11-13.

pointed, in manner therein provided, two examining:
clerks, eac-h to n-ccive an annual s.iiary of Ht\ocn Inuulrcd
dollars ; and also, an additional copying clerk, at an
annual salary of eight hundred dollars. 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 oriirinul.s, who shall receive not exceeding seven cents
for every page of one hundred words, and for drawings
and comparison of records with t)rigiual8, such reasonable
compensation as shall be agree«l upon or prescribed by
the Commissioner.

Tho Commissioner of Patents has now the power to appoint exami-
ners, not to exceed four in each dass. Act of 18GI, § 7.

SEcnox 12. [Repealed by ad of 1801, § 9.] And be
it further enacted. That, wherever tin- application of any
foreiu'ner for a patent shall be rejected an<l withilrawu
for want of novelty in the invention, pursuant to the
Bcventli section of the act to whieh this is additional, the
certificate thereof of the Commissioner shall be a suffi-
cient warrant to the treasurer to pay back to such appli-
cant two thirds of the duly he sh.all have paid into the
TreaBury on account of such appli<ation.

The riiflit of wiihilraw.-il. nH to any iKirtion of tho patent fee, in np-
pllcationH mode Hubnt-quont to Manli 2il, 18G1, is now takon away.
Aclof IHOl. S 9.

Sectio.n I't. And I" it fiirth'i' tiuirfriL, That in all
cases in whiih an oath is required by this act, or l)y tho
act to which this is a-ldilional, if the person of whom it
is required shall be conscientiously scrupulous of taking
an oath, affirmation may be substituted therefor.

PATENT LAWS. 169

ACT OF 1837, CHAP. 45, § 14.

1. The act referred to is that of 183R, section fi.

2. As t>) what persons may administer this oath, when the apphcant
is without the jurisdiction of the United ijtates, sec act of lb42, 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 the 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 payment of the salaries of the officers
and clerks provided for by said act, and all other ex-
penses of the Patent Office, including all the expendi-
tures provided for by tliis act ; and also for such other
purposes as are or may be hereafter specially pro^^ded
for by law. And the Commissioner is hereby authorized
to draw ujion 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 information of the state and condition
S

170 PATENT LAWS.

IX FORCE. ACT or 1839, CHAP. 88, §§ 1, 2.

of tho Piitent Office as may be useful to Congress or the
public.

Approved .AI;uvh 3(1, 1837.

The annual report of the Commissioner of Patents on mechanics is to
be prepared so that tho plates and drawings nhall be comprised in one
volume, not to exceed eight hundred pages. Act of 1859, § 4.

ACT OF 1839, CHAPTER 88.
(5 Statutes at L.vuge, 353.)

[This Act ttill in Force.]

An Act in addition to "An act to promote the progress

of the useful arts."

Section 1. J]e it enacted by the Senate and House of
Jicprcsc/itativis of the United States of America in Con-
gre-'in nssnnbkd^ That there shall be appointed, in manner
provided in the second section of the act to which this is
additional, two assist.'int e.vaminers, i-ach to receive an
aimual salary of twelve hundred and tifly dollars.

The O^mmiHsioner of Patents hat now authority to appoint exami-
ners, not to c'xi-ci'd four iu each clus.s. Act of 1801, tj 7.

Sbctiox 2. And be it furthtr ena<-ted. That the Com-
mlHsioner be authorized to t-niploy temporary clerks to
do any necessary Iranscril'incj, whenever the cnrrent busi-
ncHH of the iiWwo requires it; Pruvidrd^ hmrrrrr^ That
instead of salary, a compensation shall bo allowed, at a
rate not greater than ia charged fur uopieH now furnished
by the office.

Fco for copies is ten contu per hundred words. Act of 1836, § 4.
Act of 1861, g 10.

PATENT LAWS. 171

ACT OF 1839, CHAP. 88, §§ 3-6. IN FORCE

Skctiox 3. And he 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 deposited 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 tlie City Hall by the Patent Office.

Section 5. ylnd he it further e7iacted, That the sum
of one thousand dollars be ai)propriated from the Patent
fund, to he 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 {h) from the date or
publication of such foreign letters patent, (c)

172 PATENT LAWS.

IS rOBCB. ACT OF 1830, CHAP. 88, §§ 6, 7.

(a) For provision referred to, sec act of 1R3G. § 8.

(b) Patents are now granlod for the term of seventeen years. Act
of 18G1, 55 16.

(c) 1. The date of a patent may be altered to corre.<«pond with that
of a foreign patent, previously taken out by the inventor, where tho
mistake has not arisen from any fraudulent or deceptive intention.
Dctnwld's Cas^, 4 Opin., 3:55.— Ne'i^son. Atty.-Gen. ; 184-1.

2. Under this section, if the domestic jiatont, in a ca.se where a foreign
patent has been previously obtained, purports to give an exclusive
right for fourteen years from its date, instead of from the date of tho
foreign j).ntent, it is void, as liaving been issued witliout authority of
law ; but the error is not fatal, and m.iy be corrected on application
to tho Patent Office. Smilh v. Ely, 6 McLean, 78, 80. — McLka.v, J.;
Ohio, 1S49.

3. The proviso of this section as to when a homo patent shall bear
tho date of a foreign patent, relates only to such patents as are applied
/or here after the issue of a foreign patent Praich v. lixgers, MS. —
Kane. J; Pa., is.-)l.

4. Where, therefore, an application for a patent was made in this
country in April, 1833, and acted on in that month, but a patt>nt was
not actually issued until June 20tli, 1840, at which time the patent
was dated, and a foreign patent was obtained in August, 1838 ; Held,
•8 tho application )iere wa.s l»efore the foreign patent, that tho grant of
the patent Ix-ro wa.s under the general enactments of tho act of 1836,
And its term runs pr<)|>erly from its date. Ibiil.

6. A j)atent is not vnid Ix-causo it does not, on its face, l>ear tho
some date with a foreign patent. If it is not, for any reason, exempt
from the operation of the statute on such subji-ct, the only effect is to
limit the raonoiwly to fourteen years from tho date of the foreign pat-
ent O'lieiliij V. Morse, 16 How., 11*2.— Taxey, Ch. J.; Sup. Cl., 1803.

SEmox 7. fQnalifyinc: act of 1R3C, g§ 7, 15.] A?>(i be
H furthrr (nff'f,'(l^ Th;it every person <»r corporation who
ha«, or shall have, purchased or cotistnicted any newly
invented machine, niaimfacture, or comjiosition of matter,
prior to the application by the inventor or discoverer for
a patent, nhall he htM to pos.ness the ripht to use, and
vend to others to be u.scd, the specific machine, manufac-
ture, or composition of matter, so made or purchased,
without liability therefor to the inventor, or any other
person interested in stu-h invention ; and no patent shall
De held to be invalid by reason of such purchase, sale, or

PATENT LAWS. 173

ACT or 1839, CHAP. 88, § 7.

use prior to the application for a patent as aforesaid, ex-
cept on proof of ahaiulonment 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 appHcation for a patent, is in the nature of a statute
of limitations, novey v. Henry, 3 West. Law Jour., 155. — Woodbury,
J,; Mass., 1845.

2. It virtually extends the patentee's privilege to sixteen years in-
stead oC fouriecn, McCormick v. Seymour, 2 Blatchf, 254.— Nelson,
J.; N. Y., 1851.

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 any infringement by any other person. McClurg v. Kingsland,
1 IIow., 208, 20U.— Baldwin-, J.; Sup. Ct.. 1843.

4. This section relieved the patentee from the effect of the former
laws, and their construction by tlie court, wliile 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 hmited 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.
Ihid., 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 iL
Stimpson v. West Chester R. B., 4 How., 403.— McLeax, J. ; Sup. Ct,
1845.

8. This section allows tlie 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, witliout his consent, is no bar to the
issuing of a patent to the first inventor. HOdreaih y. Heath, MS. (App.
Caa.)— Cbanch, Ch. J.; D. C, 1S41.

174 PATENT LAWS.

ACT or 1839, CHAP. 88, §§ 7, 8.

9. Both before and since the act of IsriO, an inventor might exercise
a claim to .an inchoate ri;;ht to an invention, wiuoh wms capabk- of be-
ing perfccti'd to an exclusive right hj obt lining letters patent, ami llio
public may acquiesce in such claim. Sargeant v. Sewjravt, 2 (Juit.,
555. — ClRTlS, J.; R. I., 1855.

10. Before the act of 1830, he might, by way of experiment. briii„
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
IS-TO, he may sell any number Of his machines to the public, during
any period less than two years, accompanicjj by a claim to the inchoate
right sufficient to show an intention not to abandon it to the public
Ibid., 555.

11. Under this section the purchaser must bo a purchaser from the
inventor himself, l)cforo his application for a patent, and not from a
wrongdoer, without his knowlcilge or against his will. Pu:rs<m v. Eo/jle
Screw Co., 3 Story, 40t>, 407. — Story, J.; R. I., 1m44. Uovey v. Ste-
vms, 1 Wood. 4 Min., 301.— WooDncKY, J.; Mass., is%r,.

12. A surreptitious knowledge and uso ol" an invention, before tho
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.\niel,, J.; Sup. Ct.,
1858.

13. Tho sale of tho product of an invention is not a sale of the thing
invented within this section: the sale here spoken of is a sale of tho
invention or patented article. Booth v. GareUy, 1 Blatchf , 250. — N'Eii-
BON, J.; N. Y., 1.S47.

14. This section gives no protection to those who m.\v have seized
upon an invention or discovery disclosed in a patent, whose specifica-
tion may happen to bo defective or insufflciout. Goodyear v. Day, MS.
— Grikk, J.; N. J., 1H52.

15. This section provided a remedy for cases where the conduct of
tho party, as to the sale of his invcnlifin, did not show an actual aban-
donment It also Hccures the rights of those who may have punimsed
or constructed any newly invented machine, jtrior to the application
for a patz-nt. SaruUm v. Lixjun, 3 Wall , Jr. — Grikr. .1.; Pa., 1«C1.

IG. Tlio obvious const ruelion of it is, tiiat a purchase, sale, or prior
UBO, shall not invalidate, unless it amounts to an abandonment to tho
public. lOul.

Koo also I MOIST Pat. Cases, title Prior Use.

Sectio.n 8. And ht it further enacted, That bo intu-h of
the eleventh Hection of the above recite<l act as requires
the payment of three dolhirs to the Commissioner of
Patents for recording any assignment, grant, or convey-
ance of the whole or any part of the interest or right

PATENT LAWS. 175

ACT or 1839, CHAP. 88, g§ 8-10. IN FORCE.

imder any patent, be, and tlic same is hereby, repealed;

and all such assigmnents, grants, and conveyances shall,

in future, be recorded without any charge whatever.

Fees for recording assignments aro .ngain required, according to cer-
tain rates, by the act of 1843, section 2, and the act of 1861, sec-
tion 10.

Section 9. [Obsolete ; temporary enactment.] ApkI be
it further enacted^ That a sum of money not exceeding
one thousand dollars, bo, 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 relatiug to agriculture will there-
for© be inserted.

Sectiox 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 seiwed 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 assignee of an invention, by virtue of an assignment made

17« PATENT LAWS.

IK roRCE. ACT or 1839, cnxr. 88, §§ 10, 11.

before patent issued, may file a bill in his own name under section 16
of the act of 18.16, and thi.i section, against a patentee to whom a pat-
ent issued, upon an interference with complainant's assignor, for tho
purpose of having the patent so issued set aside, and one granted lo
llie complainant. Gay v. Cornell, 1 Blatchf., 507. — Nelson, 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, § 7.] And be it
further enacted^ That in all cases where an appeal is now
all«»wed by law from the decision of the Commissioner
of Patents to a board of examiners, providi-d f«>r 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 Coliiinhia ('0» W' gi^i"© "ol'fP thereof
to the Commissioner, and filing in the Patent Office,
within such time as the Commissioner shall api)oint (A),
his reasons of apjx-al, specifically set forth in writing; (c),
and also i)aying into llic 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 {d), at such early ami conve-
nient time as he may appoint, first notifying the Com-
missioner of the time an<l pl:ire of hearing, whose duty it
shall be to give notice thereof to all parties who appear
to be intrrcHted therein, in such maimer as saiil judge
shall prcbcril»e. The CommiHsioner shall also lay before
the said ju'lge all the original papers and evidence in tho
casp, together with the grounds of his decision, fully set
forth in writing, touching all the points involved by the
reasons of appeal, to which the revision shall be con-

PATENT LAWS. 177

ACT OF 1839, CHAP. 88, § 11. IN FOBCE.

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 sucli 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
Office ; and such decision, so certified, shall govern the
further proceedings of tlie Commissioner in such case (g) ;
Provided, hoicever, 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 wore afterwards allowed to be made to either of the
assii-lant judges of the Circuit Court of the District of Columbia. Act
of August 18th, 1852, § 1.

2. By the act of March Ad, 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.

{b) 1. The filing of the reasons of appeal is essentially the appeal
itself. Greenomjh v. Clark. MS. (App. Cas.)— Morselu J.; D. C, 1853.

2. Where the reasons of appeal are not filed within the time pre-
pcribea bv the Comiuissioner of Patents, the 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.
Jwtke V. Jone.% MS. (App. Cas.) — Meuiuck. .T.; 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.)— Mekiuck, 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 Couimissiouer was in opposition to a clear
apprehension of the merits of the case." Wiml w, Ex part^, MS. (App.
8*

178 PATENT LAWS.

IK FOROn. ACT OF 1839, CHAP. 88, § 11.

Cas.)— Craxcii, Ch. J.; D. C, 1850. Douglass v. Blakinton. MS. (App.
Cas) — Mkiirick, .1. ; D. C. isr)9.

•J. No reason of appeal can be considered as valid, which would not
ju.«tifv the Commissioner in refusing a patent. Wade v. MaWiewa, MS.
(App. Ca.s.)— <:kaxch. Ch. J.; D. C, 18,-)(i.

;!. No assignment is sunieientiy explicit which does not, with reason-
able certainty. ])oitit out tiie precise matter of alleged error. Douglass
V. Blaldnton, MS. (App. Cas.) — Mkkrick, J.; D. C, 18o9.

4. Tlie reasons of appeal should be so expressed that Die judge may
gather frt.m their language what is meant by them, but they need not
be according to any technical formula. Lai<jU<:y v. James, MS. (App.
Cas.)— Mekrick, J.; D. C. 18GU.

See iiho Digest Pat. Cases, title Appeals, B. 4.

{d) 1. The (juestions are to be decided by the judge according to the
evidence produced before the Commissioner. \Var)i*:r v. Goodijcar, MS.
(App. Cas.)— Ckascii. Ch. .1.; D. C, 184G. Perry v. Comeli, MS. (App.
Cas.)— CUANiU, ( h. J.; D. C, 1847.

2. The provision ret^uiring the judge to hear and detormmc nppe.ils
"on the eviden.e produced before the Commissiom r," is to be con-
strued with releroiice to section 7 of the act of \i<'M, providing tliat
rea.-onable notice sh;:ll be uivcn both to tlie party app< aliug, and the
Commissioner, "so that they may have an opportunity of furnishing
such facts and evidence as they may dctm necessary to n just deci>
sion." FuUz, J-Jx park, MS. (.\pp. Cas.) — Mor.sei.l, J.; D, C, 1853.

3. There is nothing in the act yf 1839. which takes away or impairs
that right, but there is every reason to infer that it was intended to bo
saved to the fullest extent. Ibid.

4. Where, therefore, a party has been prevented before the Commis-
sioner from producing hi.-i proofs to sujiport his claim, it is the duty of
the judge, by reasonable regulations, similar to those directed by sec-
tion 12 of the net of 1839, to pursue such a course, as will afford tho
party an opportunity to jiroduce such pro<jfs, an<l he may nmke an
order, authorizing the party to take and tile his proofs us to the origi-
nality ami utility of hi.s invention. Ibid.

{<:) 1. All the conditions prescribed by ihis section must be complied
with as i)rerefiuiMtes before the judge can take jurisdiction. His juris-
diction is H|K'<'ial and limited, and no other power can bo exercised ex-
cept that expressly given. Gretnvwjh v. Clark, MS. (App. C.is.) — MoR-
BKLi., J. ; I). C, 185::.

2. The powers and jurisdii'tion of tho judges on appeal, are special
and hmited, and must be exercised and construed strictly. J'onieroy v.
Counuin, MS. (.\i>p. Cas.) — CltAXilI, Ch. J.; U. C, 1842.

3. The j)Ower of the justices on appeal from the decision of tho Com-
missioner of I'aient.s is confined to the jmint.M involved in the reasons
ofnp[)cal. Kein]ii:r, hi parte, MS. (App. Cas.) — (Jrancii, Ch. J.; D. C,
1841. Arvol'lv. liishop, MS. (App. Cas.)- Cka.vcii, Ch. J.; D. C, 1841.
Smilh V. FUckinger, MS. (App. Cas.)— <3aAiJCii, Ch. J.; D. C, 1843.

PATENT LAWS. 179

ACT OF 1839, CHAP. 88, §§ 11, 12.

Cochrane V. Waterman, MS. (A pp. Cas.) — Cuancii, Ch. J.; D. C, 1844.

Warner \. Goodyear, MS. (App. Cas.)— -Craxch, Ch. J.; D. C, 1840.

Wiiislm, Ex parte, MS. (App. Cas.)— Craxcii, Ch. J.; D. C, 1S50.
Aiken, Ex parte, MS. (App. Cus.) — Cra.vcu, Ch. J.; D. C, 1850. Bur-
lew V. ffNeil, MS. (App. 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., must be considered in connection with section 7 of the
act of 18:!6, as to the powers of the old Board of E-xarainers. The
statute means that the explanation maj' 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 Umited to a mere expo-
sition of the terms used; and such explanations the judge is bound to
respect as a part of the case. Richardaon 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 1836, to require of the Com-
missioner and examiners information relative to the subject-matter un-
der consideration, and to the full extent. Stxley, Ex parte, MS. (App.
Cas.)— Morsell, J. ; D. C, 1853.

3. The oCBcor of the Patent OflBce 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.
I'ary v. Cornell, MS. (App. Cas.) — Cuancii, Ch. J.; D. C, 1847.

{g) 1. 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.)— Cranch, Ch. J.; U. C, 1841.

2. If, therefore, after the judge shall have decided in favor 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.] And be it further enacted., That the
Commissioner of Patents shall have power to make all
such regulations in respect to the taking of evidence
to be usfd in contested cases before him, as may be
just and reasonable. And so much of the act to which

180 PATENT LAWS.

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 tlie taking of evidem"e, gives no right to make new
rules of evidence, or to make new rules of law so as to divest vested
ri^'iits. Dyson, Export'-, MS. (App. Cus.>— DuNLOP, J. ; D. C, ISGi'.

•J. The rules as to evidence, made under this section by the Cominis-
Bioner of Patents, in conformity with tiie law, while tliey remain luiabro-
gated, are as binding as the law itself, nnd as well upon the Commi.s-
sioner as on otlicrs. Arnold v. Bishop, M.S. (App. ('as.) — Cranth, t^h.
J.; D. C, 1841. O'llara v. Uawes, MS. (App. Cas.)— MoRiiELL, J.;
D. C, 1859.

3. After a deposition haa been taken while the rules were in force, a
revocation of them cannot atllct such deposition. A revocation can
uflVct onlv subseiiiient |)roceedings. Arnold v. liuihop, MS. {.Vpp. Cas.)
— CuAXcil, Ch. J.; I». f., KS41.

4. The rules of the Patent Ofllco as to taking evidence, prescribed
iindcT tliis section, must be jwl and reasonable, according to the estalv
lished principles and precedents in like cases, AVc/toij v. Harru, MS.
(Aijp. t'iis.) — MuiusKLi., J. ; D. C, 1S.'^.4.

6. The power of tlie Commissioner to make rules as to evidence is
now extended to all cases pending before the Patent OQico. Act of
IbOl, g 1.

Sou also Digest Pat. Case.8, title Evide.sce, C. 3.

Se(.tion 1:J. [Obsolete: Uepe.iled by act of 1852, g 3.]
And bi it fid-dur martcd/Vh^X. there be p.iid annually,
out of the I*alent fund, to the naid Chief Justice, in con-
sideration of the duties lurein iiii|i<)sed, the sum of one
hundred flollars.

Approved March :J<1, 1h:?9.

Thifl HM-tion woh ropealiHl by Hcclinn 3 of the net of 18.'t2; and it wan
bIho provided that, ui e;i«o of an npp<>al to the chief justice, or to either
of tho aM»i«Uint juKti'vs, there tthould t>o paid to the judge to whom
appeal Khould be made, tho $25 ro^iuirod to be paid by this section.
Act of ld52, g 2.

PATENT LAWS. 181

ACT OF 1842, CHAP. 263, §§ 1, 2,

ACT OF 1842, CHAPTER 2G3.
5 Statutes at Laiige, 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, {a)

(a) Tliis act purports, from its title, to repeal all acts and parts of
acta 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. Stiriipson v. Fond, 2 Curt.,
50G.— CuuTis, J. ; Mass., 1855.

Sectiox 1. Be it enacted hy the Senate and House of
JReprescntatives of the United States of America in Co?i-
gresa assembled, That the Treasurer of the United States
be, and he hereby is, authorized to pay back, 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 Ofhce through piistake,
and which are not provided to be paid by existing Lxws,
certificate thereof being made to said Treasurer by the
Commissioner of Patents.

Section 2. [E.xtcnding act of 1837, § 3.] And he it
further enacted. That the third section of the act of
March, eighteen hundred and thirty-seven, which autho.
rizcs 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 liave been los^ subsequently : Provided,

183 PATENT LAWS.

ACT OF 1842, CHAP. 263, g 3.

hotcevevy The same shall not have been recorded anew
under the provisions of said act.

Sections. [Obsolete: Supersededby act of 18C1,§ 11.]
And be it further enactt (7^ 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 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,
Bilk, cotton, or other fabrics, or any new and original
design for a bust, statue, or bas 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 manufac-
ture, the same being formed in marble or other material,
or any new and useful pattern, or print, or picture, to be
either worked into or worked on, or ])rinted or ])ainted
or cast or otherwise fixed on, any article of manufacture,
or any new ami original shaj'C 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 copirs of the same, to others, by
them to be made, used, and sold, may make application
in writing to the Connnissioncr of Patents cxjjrcssing
such desire, and the Commissioner, on due proceedings
had, may grant a patent therefor, as in the case now of
api>lication for a p;itont : Provided, That the fee in such
cases which by the now existing laws would be required

PATENT LAWS. 188

ACT OP 1842, CHAP. 263, §§ 3-5. ix foece.

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 iu which
such applicant may be.

Oaths required by act of 18.36, section 6 ; affirmation 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 maile, 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 TATENl' LAWS.

IN roiiCK. ACT OP 1842, CHAP. 263, §§ 5, 6.

any word or words of like kind, meaning, or import,
with the view or intent of imitating 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 unpatented article, for the purpose of de-
ceiving the public {a), 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 penalty, as recovered, shall be paid to the
Patent fund, and the other half to any person or persons
who shall sue for the same,

(a) The i.cnalty mentioned in this section is incurred as to all arti-
cles made, and liavinp the word "patent" aflixed, with a K'>'''ty purpose
or intent. Stephens v. Caldwell, MS. — Si'RAdlK, .1.; Mass., ISGO.

(fc) 1. This section — thoujrh its phraseology, "a penalty of not less than
one liuudred dollars," is peculiar — authorizes liie inlliction ol" a penalty
of just one hundred dollars for the offence therein described and uo
more. Stiwpson v. I'ond, 2 Curt., 50G. — (Jcktih, J.; Mass., 1855.

2. The penalty may bo recovered in an action of debt. Jbui., 506.

(c) The two years' limitation of suits for penalties, contained iu sec-
tion 32 of the Crimes act of 1700 (1 Stat, at Largo, 119), is r.i>ealod
by implication by section 4 of the act of 1839 (5 Stat, at Larg-, 3J2),
which extends the time to five years. Jliid., 503.

SEf-riox «. [Superseded ])y act of IHOl, § 13.] An<l he it
fiirtUcr nidcti'd. That all patentees ar:d assignees of pat-
ents hereafter granted, arc hereby required to stamp,
engrave, (»r cause to be stamped or engraved, o.i each
ariicle vended, or offered for sale, the d ite of the [tatent;
and if any person or persons, patentees or assiiinees, shall
neglect to do so, he, she, or they, shall be liable to the
same j)enalty, to be recovered and disposed of in the
manner specified in the foregoing fifth section of this act.

Approved August 20th, 1842,

PATENT LAWS. 185

ACT 0^" 1848, CHAP. 47, § 1. IN FORCE.

1. Under this aection it was hold, that it was not tho selling tho
articles unstamped that made the party liable to tho penalty, but the
omitting to put the stump on. Palmer v. AUea, MS. — Betts, J. ; X. 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 per.-ious, unless the articles were
manufactured with their connivance. Ibid.

3. Held, also, that the penalty attaches for each separate article
sold. Ihid.

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 sufficient,
even if tho word ''patented" is abbreviated. Ilawley v. Bagk-y, MS.
—Betts, J.; N. Y., 1835.

ACT OF 1848, CHAPTER 47.

9 Statutes at Large, 231.

[TTiis 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 liejyresentatives of the ZTnited
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 hei'etofore 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 the principal examiners em-
ployed in the Patent Office shall receive an annual salary
of twenty-five hundred dollars, and eadi of the assistant
examiners an annual salary of fifteen hundred dollars (a) :

186 PATENT LAWS.

ACT OF 1848, CHAP. 47, § 1.

Provided, That the power to extend patents now veste«l
in the board composed of the Secretary of State, Com-
missioner of Patents, and Solicitor of the Treasury, liy
the eigliteenth 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 refer 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, an<l particularly whether the invention
or improvement secured in the patent was new and pat-
entable when patented ; and thereupon the said Commia-
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 than seven years, (r)

(a) 1. Tlic ('oii)niis.sionor of Patents is now oulhoriwd to apiKiint,
from time to time, exaiuiucrH, not to cxcocd four in each clu.s3. Act
of 18t;i, S5 7.

2. Ah to the ^fradation and pay of cxaminorB and clorks in tlio Pat-
ent Ollioc, SCO act of 1853, chapt<'r 'J7, section .1. and act of 1800. sec-
tion 5, and act of iHtil, section 7.

(6) i. ThiM a»'t in not a repeal of section 18 of tlio act of ISGCi, pro-
viding for tho ( xti'iiftion of |>at4Mit.s, and the on.'iclmcnt of a m-w svhtom
for thiit purpoMo, hut nimply a rr|M'al of ho much of it nn relati'd to tlie
action of tlio Secrt'Liiry of Stat*', and tJio Solicitor of tiio Treasury,
h-aviii;; the ConimisHionor of Patents alone to go on in the execution
of tl)o fhily. (oU V. Y"Unrf. 2 lUatciif., IT.'l.— Nki.sox, J.; X. Y., 1^:.2.

2. WJierc an application for an extension of a patent under section
18 of the act of I8:iii was |>ending at the time of the ))assago of tho
net of IMIS, wliich cnrnferred upon tho roinininsioner of Patents solel}',
the power previously vosto<l in the Board cieatetl by tho act of 18.'{6,
Jkld, that it was not necessary to renew tiie application, but that the
Commissioner had tho power to go on with the proceedings as having

PATENT LAWS. 187

ACT OP 18 IS, CHAP. 47, §§ 1-4. IK FORCE.

been already properly institiued, and complete them by granting the
eitensioii. Ibid.. -173.

3. For reference to other decisions bearing upon the extension of
patents, see section 18 of the act of 18:i(3, and the notes thereto.

{C} Tho extension of all patents granted subsequently to March 2d,
1861, except patents for designs, which may be extended for seven
years, is now prohibited. Act of 1861, § 16.

Section 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
part 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 sliall exceed three hvm-
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. Tliat 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 farther enacted. That there shall
be appointed, in manner aforesaid, two clerks, to be era-
ployed in copying and recording, and in other sers'iccs in
the Patent Office, who shall each be paid a salary of one
thousand two hundred dollars per annum.

Section 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 which he is empowered to
send letters and packages relating to the business of the
Patent Office.

Approved May 27th, 1848.

188 PATENT LAWS.

ACT OF 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 encicted. 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, 617.

{This Act Kfill in Force.]

Extract from the act entitled "An Act making appropria-
tions for the civil and diplomatic expenses of govern-
ment," &c.
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 Oflice.
Api)roved 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 piomote the progress of

the useful arts.

Section 1. [Enlarging act of 1839, §11.] Be it en-
acted by the Senate and House of Representatives of the
Tin ited States of America in Congress assonbled, 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," api)roved 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 Columbia, 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 abolished, 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 and exer-
cise the jurisdiction now possessed and exercised by the judges of the

190 PATENT LAWS.

CJ FOUCE. ACT OF 1862, CHAP. 108.

Circuit Court. Under this act, appeals are now taken to the justioes of
the said Supreme Court.

2. As to appeals, who may make, and when, see nole.«i to flections 7
and 8 of the act of 1S3G.

3. As to tlic power of tlie judpes on appeal, and the effect of their
action, see section 1 1 of the act of 1839, and the notes thereto.

Sectiok 2. A/ul be it further euacteJ, That in case
appeal pliall be made to the said chief judge, or to either
of tlie said assistant judges, the Commissioner of Patents
shall pay to such chief judge or assistant judge the sum
of twenty -five dollars, nquired to be paid by the appel-
lant into the Patent Office by the eleventh section of said
act, on said ajipeal.

Section 3. [Kepealing act of 1839, § 13.] And be it
further ftiartid. That section thirteen of the aforesaid
act, apj)roved March the third, eighteen hundred and
thirty-nine, is hereby repealed.

Approved August 30th, 1852.

ACT OF 1852, CHAPTER 108.
10 Statutes at Lakge, 05, 00.

\ThU Act itill in Forrt.]

Extracts from the act entitl»'<l "An .\ct making appro-
priations for the civil and diplomatic expenses of the
(ioveniment," tfcc.
F<»r comitensatioD of tin- lihrari.in of the Patent Office,

twelve himdred dollars, to bt,- jtai<l out of the Patent

Fund. ('/)

For books f )r the library of the Patent Office, to be

paid out of the I'atoiil Fund, one thousand five himdred

dollars.

PATENT LAWS. 191

ACT OP 1853, CHAP. 97, §§ 1, 3. IN POROB,

For fitting up tlie library 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 d(jll:us each, to be paid out of the Patent Office
Fund ; and that hereafter the disbursing clerk shall be
required to give bond, with approvdl 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 appointe<l 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 salary of the hbrarian is now fixed at one thousand eight
hundred dollars. Act of 13G1, § 4.

ACT OF 1853, CHAPTER 97.

10 Statutes at Lajige, 209, 210, 211.

[TTiis Act still in Force.]

Extracts from "An Act making appropriations for the
c'wil and diplomatic expenses of the Government," &c.
Secttox 1. For the purchase of books for the library

of the Patent Office, to 1)0 paid out of the Patent fund,

one thousand five hundred dollars.

Section 3. And be it further efiacted, That from and

after the thirtieth of June, eighteen hundred and HtXy-

three, the clerks in the Departments of the Treasury,

192 PATENT LAWS

ACT OP 1853, CIIAP. 176, § 10.

War, Navy, the Interior, and the Post Office, shall be
arrani^ed into four classes, of which class number one
shall receive an annual salary of nine humlrcd dollars
each, class imniber 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 anrmal salary of one thousand eight
hundred dollars each.

This section also ])rovides for eight clerks of the second
class, twelve (includinu^ 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.

Ai)i)rovid March 3d, 1853.

1. Tlio Ci>mniiMHionor of Putonts is now niitliorizcd to appoint oi-
aminerH, not to uxccod four in each class. Act of 18G1, § 7.

2. Ah to tlio i)uy of exaiuinore, bco also act of 1800, section 5, and act
of 18C1, section 7. *

3. Tho salary of the cliief clork is now fixed at two thousand five
hundred dollars. Act of 18(U, § 4.

ACT OF 185.-,, CIIAP T E U 175.
10 Statutes at Largk, 070, 074.

I Thin Art at it I ill Forff.]

Extracts fr<ini".\n Act niakiiiLC :i|iiirii|iri:iti<inH for the
civil and di|ilonKitic cxponses of tlic ( iovcriun<'iit," &c.
Sk'IIo.v 10. Ami 1)1' tt fiirtlii r i mirdil^ That there
sliall he appointcil and paid in tin; manner now provided
by law, four piincipal examiners and four assistant exam-
iners of jjatfiitH, in adilition to the examining force now
authorized by Iiw, to be so em])luycd in the Patent

PATENT LAWS. 103

ACT OF 1866, CHAP. 129, § 9.

Office ; and should the necessities of the public service,
in the ostimiition 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," &c.
Sectiox 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 LAWS.

IN FORCE. ACT OP 1859, CHAP. 80, § 4.

Section 10. [Obsolete — only temporary.] And be it
furthci' enacted^ That the Comrnksioner of Patents is
hereby authorized to pay those employed in the United
States Patent Office from April first, eisxhteeii hiuulred
and fifty-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 gratles : Pro-
vid>'(f, 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 assi>t:int examiners of patents for the same period.

Approved August leth, 1856.

ACT OF 1850, CII A P T E R 80.
11 Statutes at Lakoe, 422.

[Thi« Act at ill in Forrr.]

Extract from "An Act making appropriations for the legis-
lative, executive, and judicial expenses of the Govern-
ment," <fcc.

Skotion 4. Ami be it further ennrfed, 'J'hat the Secre-
tary of the Interior be, and he is herel»y, directed to
cause tlie annual report of the CommisHiont'r of Patents
on mechanics hereafter to be made to the Senate and
Hou<*e of Kepresentatives to be prepared and submitted
in such mnriner as tlirit the plates and drawings neC'Ssary
to illustrate each subject shall be inserted so as to com.
prise the entire report iu one volume not to exceed eight
hundred piigcs.

Approved March 3d, lb50.

PATEXT LAWS. 195

ACT OF 1860, CHAP. 211, § 5.

ACT OF 1860, CHAPTER 211.

12 Statutes at Large, 110.

[Ohsolete: Temporary Enactment.^

Extract from " An Act making appropriations for sundry

civil expenses of the Government," &c.

Section 5. And be it further enacted^ That the Com-
missioner of Patents is hereby authorized to pay those
employed in the Patent Office from April first, eiichteen
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 tlie 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 37.
12 Statutes at Large, 130.

[This Act still in Force.]

An Act to extend the right of appeal from the decisions
of Circidt Courts to the Supreme Court of the United

States.

Section 1. [Enlarging act of 1 836, § 17.] Be it enacted
by the Senate and House of Iifpres€7itat ives of the United

190 PATENT LAWS.

Ef rOnCE. ACT OP 1861, CHAP. 8S, § 1.

Staff's of America in Congrcsa asactnbhd^ That from all

judf^nients and dccrcea of any Circuit Court rendered in

any aotion, suit, controversy, or case, at law or in equity,

ari^^ing under any law of the United States granting or

confirming to authors the exclusive right to their resj)ec-

tivc writings, or to inventors the 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 ])rovided by law in other judgments and decrees of

t^uch Circuit Courts, without regard to the sum or value

in cfnitroversy in the action.

Approved February 18th, 1861.

Tho provision as to writs of error or appeals from judgments and
decrees rendered in actions arising under the patent laws, previous lo
the passage of this act, is contained in the act of 1836, section 17,

ACT OF 18C1, CHAPTER 88.
12 Statutes at Large, 246.

[Thi» Act still in Force.]

An Act in addition to "An act to promote the progress
of the useful arts."

Sb^tion 1. [Enlarging act of 1839, g 12.j Jie it en-
acted h\j the Senate and IIoxMe of Representatives of the
United Stnten of Atneriea in Congress assembled, That
the Commissioner of Patents may establish rules for
taking affidavits and depositions required in cases pend-
ing in the Patent OOice (a), and such affidavits and deposi-
tions may be taken before any justice of the peace, or

PATENT LAWS. 197

ACT OF 1861, CHAP. 88, § 1.

Other officer authorized by law to take depositions to be
used in tlie courts of tlie United States, or in tlie State
courts of any State where such officer shall reside ; and
in any contested case (/>) 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 the 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 subpcena ad tcstificandion 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:
JProi'ided, also, That no witness shall be deemed guilty
of contempt for refusing to disclose any secret invention
made or owned by him : A>id jyrovided, further. That

PATENT LAWS.

IN FORCE. ACT OP 18G1, CUAP. 88, §§ 1, 2.

no \vitnes3 shall be deemed guilty of contempt for dis-
obeying any subpCBna directed to him by virtue of this
act, unless his foes for going to, returniiiLj from, and one
day's attendance at the place of examination, t^hall be
paid or tendered to him at the time of the service of the
subpa-na.

(a) By the act of 18.'?9, section 12, the Commissioner was empowered
to make regulations as to taking evidence in contested cases. Tliis act
extends to all cases pending in the Patent OiBce.

(b) Whether, under this act, the power to compel the attendance of
witnesses is not confined to "contested cases" — as cases of interference
— <iuerij.

(c) Witnesses are allowed one dollar and fifty cents per day, and tive
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 1853,
chap. 107, g '^.

Section 2. A/id he it further enacted, That fortlie jtur-
poses of securing grcatt-r uniformity of action in the grant
and refu>al of letters patent, tiiero bhall be appointed by
the President, by and with the advice and consent of tlie
Senate, three examiners-in-chief, at an annual salary of
three thousand dollars each, to be composed of persons
of competent legal knowledge and scientific ability, whose
duty it Hhall be, on the written p<'tition of the api)licant
for tliat jiurijose being filed, to revise and determine upon
the validity of decisions ma^le by examiners when adverse
to the grant of letters patent ; and also to revise and de-
termine in like manner upon the valiility of the decisions
of examiners in interference cases, and when recpiired by
tlie Commissioner in applications for the extension of pat-
ents, and to perform such other duties as may be assigned
to them by the Commissioner; that from their decisions
appeals may be taken t<; the Commissioner of Patents in
person, upon payment of the fee hereinafter prescribed;
that the said examiners-in-chief 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. («)

Section 3. u4nd be it further enacted. That no appeal
shall be allowed lo 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 (c/) ; 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 ((6), 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 and 3.

(a) 1. Previous to this act, all judicial acts done in the Patent Office
by the primary examiners or the board of appeals were, in intendment
ol' law, the judicial acts of the ('ommissioner, and had no legal validity
uulil sanctioned by him. They were the organs of the Commissioner
to inquire and enlijhien his judgment, and till the Commissioner gave
validity to their judicial acts, by his fiat, they had no legal evidence as
judgment. Snowden \. Pierce, MS. (App. Cas.) — Dunlop, J.; D. C.,
18G1.

2. Under the act of 18G1, the primary examiners and cxaminers-in-
chief are recngnized a.s judicial officers, acting independently of the Com-
missioner, who can anly contml them, when their judgment in due course
comes before tlie Commissioner, on appeal. Ibid.

3. Their acts are not tlie acts of the Commissioner, but their owu
acts. Thoy are no longer mere organs of the Commissioner, but inde-
pendent officers. He can only reach and overrule them, when their
judgments come regularly before him, on appeal. Ibid.

4. The 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 exaininers-in-ciiief. Ibid.

(b) The renewal oath dispensed with in all cases by act of 1SG3, § 1.

Section 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.

IN FORCJS. ACT OF 18C1, CHAP. 88, §§4 '7.

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 Coramissiouor had been three
thousand dollars per aunum (act of 1S3G, section 1); that of tlie cliief
clerk, seventeen liundred dollars per annum (act of 183G, section 2);
and the compensation of the librarian, one thousand five hundred dol-
lars jx^r annum (act of 18o3 ; act of lS5u, section '25).

Sficriox 5. yi/id be it further enacted.. That the Com-
missioner of Patents is authorized to restore to the re-
8j)ective a])plieants, or when not removed by them, to
otherwise dispose of such of the models belonging to
rejected applications as he shall not think necessary to be
])rcserved. The 8an)e autliority is also givrn in relation
to all models ac'eom|ianyiiig applications tor designs. lie
is further authorizecl to dispense in future with models of
designs when the design can be sufficiently represented
by a drawing.

Skction 6. [Repealing act of 1837, § 10.] And be it
further c/tacttd, That the tenth section of the act aj>-
proved the third ol" Mareh, eiglitein hundred and tliirty-
seven, authorizing the appointment of agents for the
transportation of models and Bj)eeimens to the Patent
Office, is hereby repealed.

SEcno.v 7. .in«/ be if fi/rfhrr r/i>irfrd, That tlie Com-
missioner is furtln-r'authorized, from time to time, to
aftpoint, in the manner already ))rovided for by law, such
an additional number of j)riniipal examiners, first assist-
ant examiners, and second assistant examiners as may bo
required to transact the current business of the office
with dispalih, provi<led the whole nund)er of additional
examiners shall not exceed four of each class, and ttiat

PATENT LAWS. 201

ACT OP 1861, CHAP. 88, §g 8, 9. IN FORCE.

the total annual expenses of the Patent Office shall not
exceed the annual receipts.

Section 8. A)id be it further enacted, That the Com-
missioner may require all papers filed in the Patent Office,
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 j^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 farther
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. (/>) 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.

ACT OP 1861, cn.vp. 88, § 10.

(o) The right of withdrawal was ^ven to American applicants by
the act of 18l}<:, section 7 ; and was extended to foreigners by the act
of IS.'n. section 12.

(6) The right of having a caveat fee applied as part of the sum to be
paid upon a subsequent application, was given by the act of 1836, sec-
tion 12.

Section' 10. And be it further 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 Stales 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, fifteen dollars.

On issuing each original patent, twenty dollars.

On every ap|)cal 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 dollars in addition, on the granting of
every extension.

On filing each disclaimer, ten dollars.

For certifieil copies of patents and other papers, ten
cents per hundred words.

^^ For recording every assignment, agreement, power of
attorney, and other j>a[>ers of three hundred words or
under, one dollar.

For recording every assigii^ient, and other papers, over
three himdred and umler one thousand words, two dollars.

For recording every assignment or other writing, if
over one thousand words, three dollars.

PATENT LAWS. 208^

ACT OP 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, eftbrt^i, 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 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 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: Pro i-u/t'c/. That the fee to be paid in such

204 PATENT LAWS.

IX FORCE. ACT OP 1861, CHAP. 88, §§ 11, 12.

application shall be for the term of three years and si.\
months, ton dollars, for seven years, fiftcciv. dollars, and
for fourteen years, thirty dollars: And, provi(leii,That
the patentees of dcsicrns under this act shall be entitled to
the extension of their respective patents for the term of
seven years, from the day ou 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 utUili/ in order to secure the benefits of
its provisions. WoosUrr v. Crane, il.^. — Bkxkuict, J.; N. Y., 18G6.

2. But it (loos require that the shape produced shall be the result of
iadustry. effort, penius, and ciponse. jbid.

3. ScnihU, That the shape or i-onfi|rurntion souf^ht to be secured
Fho\ild be new and original, as applied to articles of manufacture.
Ibid.

4. W. obtained a patent for 'the dtsign and confijfurntion of a reel"
for eontainiiifr ruflics, 4c., and which consisted <>f two parallel disks of
pasteboard, ctit in the form of a rhombus, with the comers rounded,
and connected by four wood cross pieces, ou whicli the rullles wore
wound. Held, tlie sliajK* bein^^ a well-known matiietnntic;d flpiro,
and a common one in many articles of nianiifactiirc. that its application
to a reel could not be said to bo the result of industry, genius, eflbrta,
and expense. Iliid.

6. Under the present prnctii-c of the Patent Office, names, titles, bill-
heads, and other matters inlcndc<i for use na circulars or trade-mnrka,
if printed in the ordinary iiiuvaMe ty|>e, are not held to Ik- patentabla
as desijfns.

6. But when any such matt<<r is tlie sp«»cial work of an artist for a
Bi*ciliod ])nrp<jse, as when cnj^ruvcd, it may l>c patented as a desig^n.
Hence, when a patent is desire<l for a ilesifrn to l)e used as a trade-
mark, it ifl recommended that it shoidd l)e oni^raved.

SK<rnON 12. [Aineiulin^' act of l«3fl, § 18.] Atul f>, U
further tnnifrd^ That all applicat ions for patents shall bo
completed and prepared for examination within two
years after the filing' of the petition, and in <lef;»ult there-
of, they shall he rcj^ard*.! as abandoned by the parties
thereto; utdess it be shown to the satisfaction of the Com-
missioner of Patents that such del.ay was unavoi<lable ;

PATKNT LAWS. 205

ACT OK 1861, CHAP. 88, §§ 12, I.{.

and all applications now pernling shall he treated as if

tiled 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.

Tlie previous provisions as to the extension of patents are contained
in seciion 18 of the act of 18:50, and section 1 of the act of 18'tS,
amending tlie former act of 1836.

Section 13. [Repealing act of 1842, § 6.] Afid be it
further enacted^ That in all cases where an article is
made or vended by any person under the protection 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, either by fixing thereon the word patented, together
with the day and year the patent was granted ; or when,
from the character of the article patented, that may be
impracticable, by enveloj>ing one or more of the said
articles, and aftixing 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 infringement of letters patent by the party failing so
to mark tlic article the right to which 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 addition ti) an act to promote the
progress of t!ie ust-ful 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 a pcnnlty of one lumdrcd dollars on eac>

206 PATENT LAWS.

IN FORCE. ACT OF 1861, CHAP. 88, §§ 14-16.

article vended or offered for sale, not having the date of the patent
stamped or marked upon it ; but the neglect to do so did not affect the
right of the patentee in any action of infringoment brought by him un-
der his patent.

Section 14, [Obsolete: Hepcaled by act of 18G2.]
And be it further enacted. That the Commissioner of
Patents be, and he is hereby, authorized to print, or in
liis 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 drawings of the same,
when drawings shall accompany the patents : Provided,
The costs of printing the text of said descriptions and
claims shall not exceed, exclusive of stationery, the sura
of two cents per hundreil words for each of said copies,
and the cost of the drawing shall n(»t exceed fifty cents
per copy; one copy of the above number slial! be printed
on j)arcliment to be affixed to the letters patent; the
work shall be under the direction, and sulyect to the
approval, of the Commissioner of I'atents, and the ex-
pense of the said copies shall be paid for out of the
Pat<;nt fund.

Section 15. And be it further cnactid, That pritUed
copies of the letters patent of the United Slates, with the
seal of the Patent Office aflixed thereto and certified and
signed by the Commissioner of Patents, shall be legal
evidence of the contents of said letters patent in all
cases.

Section 10. [Modifying act of 1830, § 5 ; Superseding
act of 1836, § 18]. A?id be it further enacted, That all
patenn hereafter granted shall remain in force for the
term ofeeventcen years from the date of issue; and all
exteueion of such patents is hereby prohibited.

PATENT LAWS. 207

ACT OP 1862, CHAP. 182.

Section 1 7. And be it further enacted^ That all acts
an<J parts of acts heretofore passed, which arc inconsist-
eut witli 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, 683.
» {This Act still in Fo)'ce.]

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.

[This Act still ill 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.] He it
enacted by the Senate and House of Eepresentatives of

208 PATENT LAWS.

Uf FXJRCE. ACT OF 1 8G3, CHAP. 102, §§ 2, 3.

tJie United States of America in Congress assembled^
That so much of section seven of the act entitled "Au
ftct to promote the progress of the useful arts," approved
July f lurth, eigliteon hundred ami 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 compensation of the examiners
ami clerks, or other eniphnees in the office, after the
thirty-first day of August, eighteen hundred and sixty-
one, that the Commissioner of Patents be, and he is
liereby, authorized, whenever the revenue of the office
will justify him in so doing, to pay them such suins, in
addition to what they shall already have received, as will
make their compensation the same as it was at that time.

Section 3. [Extended by acts of 1HG4 and 18G5.] And
be it further enacted^ That every patent slinll 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 th« final fie for such
patent V>e not paid within the said six months, the j)atent
shall be withheld, and the inventi*)n therein described
phall become public property as against the applicant
therefor : Providid, That in all cases where patents have
been allowed previous to the passage of this act, the
said six months shall be reckoned from the date of such
passage.

Approved March 3d, 1863.

PATENT LAWS. 209

ACT OF 1364, 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.] Be it enacted by the Sen-
ate and House of Mepresentatives of the United States
of America in Congress assembled. That a'.iy 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, shidl have
the right to make the payment of such fi-e, 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 : /><>-
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.

IN rORCK. ACT or 18C6, CHAP. 112.

ACT OF 18G5, CHAPTER 112.

13 Statutes at Large, 533.

[Thii Act stiU in Force.]

An Act amendatory of "An act to amend an act entitled
an act to promote the jtrotjiess of tlie useful arts," ap-
proved ]\I:irch third, eighteen hundred and sixty-three.
[Enlarging act of 18G3, § 3.] Be it enacted hi/ the
Senate and House of Ri present at ices of the United
States of Annricii in Com/nss assenthhd^ That any per-
son having an interest in an inventii)n, whether as in-
ventor or assi>,Miee, for which a patent was ordered to
issue upon the payment of the fmal f».'e, as jjrovided in
section three of an act approved March third, eigliteen
hundred and sixty-three, but who has failed to make pay-
ment of the linal fee, as provided in said act, shall have
the right to make an application for a patent for his in-
vention, the same as in the case of an original aj)])lica-
tion, provided such application be made within two years
after the date of the alhnvance of the original a})plica-
tion: l*roviiled,'?\v.\i nothing iiereiu shall be so construed
Efi to hold responsible in damages any persons who have
nKmufaclurcil or usctl any article or tiling for which a
patent aforesaid was ordered to issue. This act shall
.ipply to ail cases now in the Patent Office, and also to
such .-IS sIimII hereafter be fded. And all .acts or parts of
ails iiicr>nsi>le!it with this act are hereby repealed.
App uved .March ;'.d, 1805.

F O R M S'

UNDER THE PATENT LAWS.

1. Caveat.

2. Application for Patent, by ktvektor.

3. Application for Patent, by executor or administkatob.

4. Application for Patent for a design.

5. Application for reissue, by patentee.

G. Application for reissue, by 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 Coluhbia.

1 2. Depositions.

13. Assignment of intention before Patent: Patekt to issue

to assignee.

14. Assignment of invention before P.vtent: Patent to issuk

TO inventor and another.

15. Assignment of entire ok partial interest in a Patent.
IG. Assignment of undivided interest in Patent.

17. Exclusive license to make and use an invention.

18. License 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,

Eespectfully represents :

That he lias invented a new and improved mode of prevent-
ing steam hollers from bursting, and that he is now engaged in
making experiments for the purpose of perfecting the same, pre-

216 FORMS UNDER THE PATENT LAWS.

pnrntory to his applying for letters patent therefor. ITe tliere-
lorc i)ray9 tliat the suhjoincd (les(;rii)ti()ii of his invention may
be tiled as a caveat -in the confidential archives of the Patent
Oflice. aproeably to the ])rovisi(>ns of the act of Congress in tliat
case made and provided; he iiaving paid ten dollars into the
treasury of the I'nited States, and otherwise complied with tho
requirements of the said act.

JOHN FITCH.
Pini.ADEi.pniA, March 1, 1856.

Dtsrrtption of In ven t ion.

To A!.L WHOM IT MAT COM RUN :

Be it known that I, John Fitch, of Philadeljihia, in the county
of Philadeli)hia. and State of Pennsylvania, have invented a new
and itnprov».'(l mode of preventing steam boilers 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 tiiat made for the safety-valve; and
in tilling or closing such aperture with a plug or disk of some
lilloy, w hich will fuse at any given degree of heat, and i>ermit
the steam to escape, should the safety-valve tail to pertorm its
functions.

Thf steam boiler is constructed in any of the known forms.
an<l may iiave applierl to it gauge-cocks, a safety v.-iivo, and other
usual ap|»endages. To obviate any danger that may arise from
the adhesion of the safety-valve or from any other cause, 1 make
in the top of the boiler an opening simihir to that made for tho
•afety-valve, and 1 fill such opening with a plug or disk of fusi-
ble alloy, secured in any sufhcietit uuiniier. Such fusihlo l>Iug
may be made so as to melt at a given temperature, which will
be that to w hich it is desired to limit the pre>*sure of the steam.

When the tem(>erature of the steam in the boiler rises to such
limit, tiie alloy will melt and allow the steam to escape, thua
prevcnliutf all danger of explonion.

JOHN FITCH.

Witnesses —

HonKirr Filtos,
Oliveu Evanh.

Tho dpBcriptioD in a cnvout nceil not be os particular on is reqiiisito
in a Hpei'itleuijon; hut chould )m> HufnciotiUy prueisc to enable the Pat-
ent OlBoc to judgt) M to any probahlo inlcrfereace when a gubaequent
application ia filed.

FORMS UN"DER THE PATENT LAWS. 217

APPUCATIO.V FOR PATENT, BT IXVENTOR.

Oath.

OiTT AND CorXTT OF PlIII.ADBI.PniA, }

State of Pexxsylvaxia, ( **"

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 for affirmationj that he verily
believes himself to be the original and first inventor of the mode
herein described fi>r preventing: steam boilers from bursting, and
that 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 OEKT Justice of the Peace.

: IJCT. RKV.
BTAMP.

2. Application fok Patent, by inventor.
Petition.

To THE COMMTSSIOXER OF PATENTS :

The petition of John Fitch, of Philadelphia, in the county of
Philadelphia and State of Pennsylvania,

Respectfully 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 tlierefore 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 PATENT LAW3.

APPLICATION FOB PATENT, I)T IXVENTOR.

Specification.

To ALL ■wnOM IT MAT CONCERN :

Be it known tliat I, John Fitch, of Pliiladclpliin, in the countj
of I'liila(ki|)lii:v, in tlio ^^tato of reiinsylvania, have invented a
new anil improved mode of preventing: !<team boilers from bnrst-
iiiiT |or, a ni'W and useful maclii'ie for (stating; the use and title
of the machine); or, a new and useful improvement on a, or on
the, maciiine, «S:c.); and I do hereby declare that the following
is a full and exact ilcscription thereof", reference beinjr had to the
accompanying; drawinjrs, and to the letters of reference marked
tiiereon. making a part of tiiis spccitication.

The nature of my invention consists in jirovidin;: the upper
part of a steam boiler witli an aperture in addition to that for
tlie safety-valve; which aperture is to be closed by a plug or
di>k of iiiloy, which will fuse at any givi-n degree of heat, and
I).rn.it the steam to escape, should tiie safety-valve fail to per-
form its functions.

To enalde others skilled in the art to make and use my inven-
tion, 1 will proceed to describL- its construition and operation.
1 c )n'truct my steam boiler in any of the known forms, and ap-
ply tjiorrlo gauge-cocks, a saft-ty-valve, and the other api)endag<s
«>f >uch boilers; Imt in onler to obviate the danger arising from
tin- ailliesioti of the safety-valve, and fnim other causes, 1 mako
a second ojn-ning in tlie top of the boiler, similar to that made tor
I'll- safety valve, lus shown at A, in the accomi)anying drawing;
and in tiiis opening 1 insert a plug or <lisk of fusible alloy, so-
« iir.n.,' it in its place by a metal ring and screws, or otherwise.
This t'usible metal 1, in g« lural, compose of ii nuxture of lead,
tin, and bi><mwlh, in such pro|)ortions as will insure its melting
at a given teiiliieratiire, which must be that to whi<h it is in-
ten<led to limit the steam; and will, of course, vary with the
pressure the boiler is intended to sustain.

1 surround the opening containing the fusible alloy by a tube
H, intended to conduet olf any slean> which may be discharged
tlierefrom. Wlieii tlie temperature of the steam in such a boiler
rises to its assigned limit, the fusible alloy will melt, ami allow
the steam t<» es<ape freely, thereby securing it from all danger
of explosion.

Wbat I claim as my invention, and desire to secure by letters
patent, is the appliiation to steam-boilers of a fusible alloy
which will melt at a given tcmi)eraturc, and allow the steam to
escape, an herein described, using for that purpose the aforesaid

FORMS UNDER THE PATENT LAWS. 210

APPLICATION POK PATE^rr, BT INVENTOR.

metallic compound, or any other substantially the same, and
which will produce the intended effect.

JOHN FITCH.
Witnesses —

ROBEKT FlI.TON,

Olivek Evans.

Oath.

City and County of Pmi.AnELrniA, |
State of Pennsylvania,

On this first day of January, 1857, before me, the subscriber,
a justice of tlie peace, personally appeared the within-named
John Fitch, and made solemn oath [or athrmationj that he verily
believes himself to be the original and first inventor of the mode
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 tiie case may be].

: : BENJAMIN FRANKLIN,

6 oEjsT : Justice of the Peace.

: INT. EEv. :
: BTAMi-. :

If the application is made through a solicitor or other person, there
will be required a Power of Attorney, whicli may be as followa

Poicer of Attorney.

Know all Men by these Presents, That I, John Fitch,
hereby constitute and appoint Robert Morris, of the city of
Phihidolpliia, or his accretlitod agent, my Attorney, to prosecute,
befi>re the Patent Otlicc 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 tlierefor; and
to do all things proper and necessary in the premises, with full
power of substitution and revocation.

Witness my baud, this first day of January, a. d. 1857.

': 60 CENT ': JOHN FITCH.

: 1ST. BKv. :
BTAMP. :

220 FORMS UNDER THE PATENT LAWS.

ATPUCATION rOB PATEXT, BY IXECCTOB OR ADMrNlSTUATOR.

.3. .fVpPUCATlON FOE PaTENT, BY EXECUTOR OB ADHIN-
I8TRAT0K OF INTEXTOU.

Petition.
To THE Commissioner of Patents:

The petition of Ilobort Murris, of Philadolpliiii, in the county of
PhiijKlflphiii, and State of Pennsylvania, executor of John
Fitch, of the same place,

Respectfully represents:

That, 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 improvt-d mode of preventing steam
boilers from bursting, which your petitioner believes hail not
been known or used jjrior to the inventioa thereof by said
Jolm Fitch.

.That said John Fitch tiled, at the said city of Philadelphia, on
or about tlie first day of January, 1857, and that your petitioner,
upon due and ftrojier j/roceeilings being had, and having com-
j)lied with all tlie reiiuirenieiits of the law in such cases made
and jirovided, was ajipointed executor [or administrator of the
goods and etlectsj of liiiii, said Fitch.

Your petitioner liierefore prays that letters patent of the
I'nited States may be granted to him therefor, vesting in him,
in trust for the heirs at law |or devixees] of said Fitch, the exclu-
sive right to the said invention, upon tiiu terms and condition
expressed in the act of Congress in tliat case made and pro-
vided ; he having paid fifteen dollars into the troaaury, and
complied with tho other provisions of the said act.

KOHKUT MORKIS,

Executor of John Fitcb.

PniLADKLrniA, July 1, 1857.

Specification.
To ALL wnoM it may concern:

Ho it known that John Fitch, of Philadcl|)hia, in the county
of I'hila'lelphifi, and State of I'ennsylvania, invented a now and
improved mode of preventing steam boilers from bursting, and
Uiat the following is a full and exact description thereof, refer-

FORMS UNDER THE PATENT LAWS. 821

APPUCATIOK FOB PATENT FOB A DESIGN.

enoe being had to tlie accompanying drawings and to tlie letters

of reference marked thereon, making a i)art of this specification.

Tlie nature of tlie said invention, &.c. [The speciiication will

be the same as before, except that it will be in the third person.]

• KOBERT MORRIS,

"Witnesses — Executor of John Fitch.

RonERT^rr.TON,
OuvKJi Evans.

Oath.

City and CorN'TT of PniLAOELPniA, )

State of Pennsylvania, \ **"

On this first day of July, 1857, before me, the Bubscriber, a
justice of the peace, personally appeared the within-named
Robert Morris, and made solemn oath [or affirmationj that ho
is the executor [or administratorj of John Fitch, deceased, late
of said city and State, that he verily believes the said John
Fitch was the original and first inventor of the mode herein de-
scribed for preventing steam boilers from bursting; 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 CENT : Justice of the Peace.

. IJIT. BIV.
STAMP.

4. Applicatiox for Patext for a design-.
Pttltio?}.

To THE COMMISSIONEK OF PATENTS :

The petition of Benjamin West, of the city and county of Phila-
delphia and State of Pennsylvania,

RESPEOTFULtY 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 TIIE PATENT LAWS.

APPLICATION FOB PATENT FOR A DESIGN.

tlie proJuction tlicreof by your petitioner. lie therefore prays
that let'ers I)aterl^of tlie United States may he granted to liiin
tlierefor, for the term of three and a half [or seven, or fourteen]
years, vestin<^ in him and liis le^ral representatives the exehisivo
right to tlie same, upon the terms and conditions expressed in •
the act of Congress in that case made and provided, he having
paid ten [or lifteen, or thirty] dollars into the treasury and com-
plied with the otlier provisions of the said act.

BENJAMIN TVEST.
PiiiLADELPniA, January 1, 18CG.

Sjiei-'ijT cation.

To ALL WHOM IT MAY CONCERN :

Be it known that I, Benjamin West, of tlie city of Pliiladel-
pliia, in the county of Philadelphia and State of Pennsylvania,
Lave originated and designed a new jiattern for carpets or other
fabrics [or design for a trade-mark], of which the following is a
full, clear, and exact description, reference being had to the ac-
companying specimens or drawings, making i)art of this specili-
cation.

[Here follows a description of the design, with reference to
the specimen or drawing, the s[iecification to conclude luj fol-
lows:]

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.

BENJAMIN WEST.
Witnesses —

NoAii Wehstku,
Natiianiei. BowniTCH.

Oath.

City and Cuintv of Pjiilaiielimiia, )
State of Pennsylvania, (

On this firi*t day of January, IKfiC. before the subscribor, a jus-
tice of the peace, jiersonally appeared the within-named Heiijaniin
West, and made Holt-mn oath [or alhrmation, as the case may he]
that ho verily believes himself to be the original and lirst invun-

FORMS UNDER THE PATENT LAWS. 228

APPLICATION FOR REISSUE, BY ORIGINAL PATENTEE.
■V

tor, or producer, of the design or pattern for carpets [or design
for a trade-mark] heroin described, and that he does not know
or believe that the same was ever before known or used, and
tliat lie is a citizen of the United States.

'■ BENJAMIN FRANKLIN,

: 6 CENT : Justice of the Peace.

: INT. RRV. ;

: STAMP. :

5. Application for 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 represents :

That he did obtain letters patent of the United States for an
improvement in the bnilers of steam-engines, which letters
patent are dated on the first 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 recjuests tliat new letters patent may
issue to him, for the same invention, for the residue of tlie
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 Congress in that case made and pro-
vided.

SAMUEL MOREY.

PniLADELPniA, January 1, 1860,

Specification.

To ALL WHOM IT MAY CONCERN:

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.

APPLICATION FOB BEISSUE, BT A88I0KEB OB EXECUTOR.

enpines; and I do hereby declare that the followinjr is a full
and cxuct description thereof, reference beitij: ha<l to the accoin-
piinying drawings, and to the letters of reference marked
thereon.

[Tlie specification will conform snbstantially 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, § 13), care
should be taken not to make any such alterations or changes
as will e-xpand the invention beyond that originally described
or represented, as such enlargement of the invention will vitiate
the patent, even if granted.]

Oath.

CiTT AND COINTY OF PllIL.\I)EI.PIlIA, \
Statk ok PeXXSVI-VAXIA, J

On this first day of January, 18C0, before tlie subscriber, a
justice of tlie j^eace, personally ai)peared tho above-named
Samuel Morey, and made solemn oatli [or aflirmation] that he
verily believes that, by reason of an insufhcient or defective
specification, his aforesaid patent is not fully valid and avaihible
to him; and that the said error has arisen from inadvertence,
accident, or mistake, and without any fraudulent or deceptive
intention, U) the best of his knowledge or lu-lief.
JA.MKS I)ALL.\S,

': 6 rit.sT Justice of the Peace,

iirr. BKT.

■TAMr.

6. Application for ukissuk hy the assightkk^ ob

EXECUTUiJ, OF Till: OKKa.NAI, I'ATKXTEE.

Petition.

To THE C'O.MMISSIONKH OK pATE.NTS :

The petition of James C Fisher, of Philadelpliia, in the county
of Philadelphia and titate of Pennsylvania,

FORMS UNDER THE PATENT LAWS. 225

application for reissue, by as8ignbb ob executor.

Respectfully represents :

That Samuel Morey, of said city, did obtain letters patent of
the United fStates for an inii)rovetuent in the boilers of steam-
engines, which letters patent are dated on the first day of Marcli,
1850; that your petitioner, by an assij,'nment duly made and
executed, bearinijj date the first day of Januar}', IHoo [or by
mesne assignments duly made and executed], and recorded in
the Patent Office of the United States, has become the owner
and holder of said letters patent [or that the said Samuel Morey
departed this life on the tenth day of May, 1858, and that your
petitioner has been duly appointed his executor]; and your
petitioner now believes that the said letters patent are inopera-
tive and invalid, by reason of a defective specification, whicli
defect has arisen from inadvertence and mistake, lie thereforo
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 tlie act of Con-
greas in that case made and provided.

JAMES C. FISHER.

Philadelphia, January 1, 1860.

SpeciJicatio7i.

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.J

Oath.

CiTT AND County of PHiLADBLPniA, )

State of Pennsylvania, j ***

On this first day of January, 1860, before the subscriber, a
justice of the peace, personally appeared the above-named
10*

226 FORMS UNDEPw THE PATENT LAWS.

APPLICXnON FOR EXTENSION, BV PATENTEE.

Janic3 C. Fisher, and iiiiule solemn ontli [or afVirniation] that ho
verilv believes that, hv reason of an insuflicii-nt or detective
spocitication, the aforesaiil patent 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 j Justice of the Poace.

INT. REV.
STAMr.

V. Application for extension, by Patentee.
Petition.

To THE COMMISSIOWEB 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 i)atent of the United States, for improvements
in machines for manufacturing weavers' lieddles; that said
letters ])atent were issue<l in the name of your petitioner [and
were duly reissued to him on tiie first day of August, ISdO, if
such was the fact • : that your jtetitioner verily believes himself
to bo the original and first inventor of said improvement; that
ho has made diligent exertions to put said invention into general
use, and to realize compensation from tlie public therefor, but
that, without neglect or fault on his part, lie lias failed to obtain
from the use an<l sale of said invention a reasonable remunera-
tion for the time, ingenuity, and expense bestowed upon the
same, and the introiluction thereof into use.

Your petitioner therefore prays, that the said letters patent
may bo duly extended, according to law.

SEBASTIAN CABOT.

Oabotbville, January 1, 1803.

FORMS UiTDER THE PATENT LAWS. 227

APPLICATION FOR EXTENSION, BY PATENTEE.

Statement.

In the matter of the application of
Sebastian Cabot, for tlie exten-
sion of letters patent of tlie
United States granted to him
on the 10th day of April, 1849,
for improvements in machines
for manufaoturing wire heddles.

Before the Commissioner
of Patents.

Statement and Account, prepared and submitted under the provisions of
§ 18, of the act of mQ.

The Statement of. Sebastian Cabot, of Cabotsville, county of
Hampden and State of Massachusetts, the above-named appli-
cant, respectfully shows:

[Such statement shodld 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 eftorts that have been made to effect its introduc-
tion into use; and such facts as go to show or ])rove the ascer-
tained value of the invention; and all receipts derived from and
expenditures paid out in connection witli such invention, which
receipts and expenditures should 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 the expenditures and receipts con-
nected with the invention, and set out in the statement.]

SEBASTIAN CABOT.

Cabotsville, January 1, 1863.

Oath.

State of MAssAcursETTS, )
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 hia be-

J28 FORMS UNDER THE PATENT LAWS.

DISCLADfER.

fore-mentioned invention and letters i)atent, and of the ascer-
tained value of such invention, and that he has, without neglect
or fault on his part, failed to obtain from tlie use and sale of his
said invention a reasonable remuneration for the time, ingenui-
ty, and expense bestowed upoa the same, and its introduction
into use.

JAMES NEWBOLD.

: 5 CBNT : Justice of the Peace.

: I."<T. BET. ".

: 8TA.MP. :

An ap[)lication for an extension, made by an eiecutor or administra-
tor of the patentee, will be substantially like the above, eicept that
changes will be made in the petition and oath similar to such as are
set forth aud contained in Form 3.

8. Disclaimer.

To THE Commissioner of Patents :

The petition of Sebastian Cabot, of Cabotsville, in the county
of Hampden and State of Massachusetts,

RESrECTFlLLY REPRESENTS :

That letters patent of the United St.ites, bearing date the first
day of March, 1850, were granted to your petitioner for certain
improvt'tiients in tlie steam-enpine [or, "that he has, by assign-
ment, duly recorded in the Patent Othce, become the owner of
a right for the reveral States of Massachusetts, Connecticut, and
Rhode Island, to certain improvements in the steam-engine, for
which letters patent of the United States were granted to John
Doe, of Boston, in the State of Massacluisetts, dated on the first
day of March, 1850 "J; that lie has reason 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 said patentee] was not tlie first in-
ventor. Your [letitioner, therefore, iiereby enters his disclaimer
to that part of tlie claim in the aforenamed specification which
is in tiie following words, to wit: "1 al.so claim the jiarticular
manner in wliich the piston of the above-described engine is
constructed xo as to insure the close fitting of the packing

FORMS UNDER THE PATENT LAWS. 2o-j

APPEAL TO EXAMINERS IN CHIEF: TO COMMISSIONER OF PATENia

thereof to the cylinder, as set forth ;"• wliich disclaimer is to
operate to tlie extent of tlie interest in 8«iid letters patent vested
in your petitioner, who lias paid ten dollars into tiie TreasiTry of
tlie United States, agreeably to tlie requirements of the act of
Congress in that case made and provided.
C.vBOTsvii.LE, January 1, 1860. SEBASTIAN CABOT.
Witnesses —
Joiix Doe,
Richard Roe.

0. Appeal to examiners ix chief.

To THE Commissioner of Patents :

Sir : In conformity with section third of the act of Congress
dated 2d March, 18G1, I hereby make application for an appeal
from the decision of the principal examiner in tiie matter of my
application for a patent for an improvement in the manner of
tripping tlie valves of steam-engines, rejected a second time on
tentii day of December, 1863, and request that the same may be
heard by the examiners in cliief, tlie renewed oath required in
such cases having been taken.

Dated, January 1, 1864. Respectfully,

JOUN ERRICSON.

10. Appeal to the CoiTMissioNER of Patents.

To THE Commissioner of Patents :

Sir: In conformity with section second of the act of Congress
dated 2d Marcii, 1861, I hereby make ap[)lication for an appeal,
in the matter of my application for a patent for an improvement
in tiie manner of tripping the valves of steam-engines, from tiie
decision of tlie examiners in chief, made therein, on the third
day of February, 1864. and request that the same may be heard
byyou, in person, the fee required by said act having' been duly
paid by your pemiuu«r.

JOEN ERRICSON.

Dated, March 1, 1864.

230 FORMS UNDER THE PATENT LAWS.

APPEAL TO JUSTICES SUPREME COUKT, DISTIUCT OF COLUMBIA.

11. Appeals to the justices of the Supreme Court
OF the District of Columbia.

1. hi case of refusal of Patent.

To THE IIox. Judges of the Supreme Court of the District
OF Columbia :

The petition of Cliarles Marshall, of New York, in the county
of New York and State of New York, re-speotfiilly slioweth, that
he has heretofore invented a new and useful improvement in
machines for cru.sliin<,' ore, and has applied to the Patent Ortico
of the United States fi>r a patent for tlie same, and has conii)lied
with the re(iuirements of the several acts of Congress, and with
the rules of llie Patent Utlice prescribed in sucli cases; that his
said ai)])licati()n has heen rejected by the Commissioner of Pat-
ents; tiiat he lias filed in said otlice liis prayer for an apiieal
from said decision, and notice thereof to said Commissioner, and
his reasons of appeal, ami paid into the same tlio sum of twenty-
five dollars upon said appeal; all which will appear from the
certificate of said Commissioner of Patents hereto annexed.

And tlie said Charles Marshall prays that his said appeal may
be heard and determined by your Honors, at sucli time as may
be appointed for that purjiose; and that tlie Commissioner of
Patents may be duly notified of the same, and directed in what
manner to give notice thereof to the parties interested.

[

Patent Office, Wasiiinotok, D. C,
January lUth, 186(5
I hereby certify that the above-named Charles Marshall has
complied with the requisites of the law necessary to perfect liia
aforesaid ai)peal.

T. C. TIIEAKER,

Commissioner of Patents.

To THE Hon. T. C. Theaker, Commissioner of Patents:

Cliarles Marshall, of New York, in the county of New York
and State of New York, prays tliat an apjjeal may be allowed him
from the decision rif your I)epartment, rejecting his application
for ft paieiit for improvements in machines for crushing ore, and
of tbia you are respectfully requested to take notice.

FORMS UXDER THE PATENT LAWS. 231

APPEAL TO JUSTICES SUPREME CXJUBT, DISTRICT OF COLCMDIA.

And the suid Charles Marshall assigns the following reasons
for appealing from the said decision of the Coinmissioner of Pat-
ents, viz.:

2. In case of rejection on Interference,

To THE IIoN. Judges of the Supreme Court of the Distbict
OF Columbia:

The petition of Charles Marshall, of New York, in the 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 w itli
tlie requirements of the several acts of Congress, and witli the
rules of the Patent Office prescribed in such cases; tliat after-
wards it was declared by the Commissioner of Patents that your
petitioner's claims interfered with those of James King, of Aus-
burn, in the county of Monroe and State of New York, an appli-
cant for a patent for a similar invention, and the (piestion of
priority of invention was determined by him in faviu- of tbe
said James King; that your petitioner has filed in said (jffice hn
prayer for an appeal from said decision, and notice thereof to
said Commissioner, and his reasons of appeal, and paid into t!ie
same the sum of twenty-live dollars upon said appeal; all which
will api)ear 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 the same, and directed in what
manner to give notice thereof to the parties interested.

CHARLES MARSHALL,

New York, Feb. 1, 1866.

Patent Office, Wasiiixgtox, D. C, [
February 4th, 1866. \
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.

832 FORMS UNDER THE PATENT LAWS.

DF.P0SITI0X3.

To THE Hon. T. C. Theakeh, Commissioner of Patents :

Charles Marshall, of Xew York, in the county of New York
and .State of New York, i)rays that an aiipeal may ho allowed
him from the decision of your Department u|inn tiio interference
declared between the said Charles Marshall and James Kin;.', and
deterruiniii^ the question of priority in favor of the said .Inmea
Kinjr, and of tiiis yon are respietfnlly reijuesled to take notice.
And the said Charles Marsiiail assigns tiie following reasons
for appealing from the said decision of the Commissioner of
Patents, viz. :

12. Depositions.
1. Notice of taking.

Iq the matter of the Interference
between the application of
E. F. for a Patent for Im-
provement in Skirts, ajul the
application of 1. K. tor a Pat-
ent for tlio same invention.

Before the Commissioner
of Patents.

8ic: Please take notice tliat 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. Stillwell, Nos. 41 and
4;J Chambers Street, in said city, before li. S. Stilwell, ( nited
States Commissioner, or some person authorized to take dopo-
sitiotis, and tiiat said examination will commence on tiie tirst
day of .January, isdO, at ten o'clock in llie forenoon, aid that
the saujc will i)e adjourned from time to time, if neyessary, un-
til the witnesses produced shall be examined. y .^

You ran attend, and cross-examine the witnesses produced,
if you tlesire. Yours, i\;c.,

Dated, Nkw Yokk, Dec. 2t, ISC.tJ. KL'Fl'S ClloATE,

Counsel for E. F.

To ClIAltl.Kfl Sri. I.IVAN, F,S(|.,

Counsel for I. K., 'J.') Wall Street, New York.
Such notice in required only in interrorciice aud other coiitoi^ted cases.
It rDual b« served a reusoiiulde time bel'uro the time ot taking the
deposition, tiy deliverint; a copy to the adverse party; or, if lie can-
ti<>\. I>e found. HU<li Hervic«' may lie ina<le U|)Oii liis agent f>r attorney, or
by leaving a c<>{>y at his nsu:il pl;ice of residence, with Boino member
of Ilia family arrived at years of di>;crct;on.

FORMS UNDEIi THE TATEXT LAWS. 233

DEPOSITIONS.

D> pos it ion , form of.
1

In the matter of tlie Interference
between the application of |

E. F. for a patent for Ln« I Before the Commissioner
proveinent in Sliirts, and the | of Patents.

application of I. K. for a pat-
ent for the same invention.

Depositions of witnesses, produced, sworn, and examined in
the above matter, on the part of E. F., before me, R. S Stil
well, United States Commissioner, at my office, Nos 41 and 4:j
Chambers Street, in the city of New York, on the first dav of
January 18fi6 pursuant to the foregoing notice liereto annexed,
marked Exhibit A.

Present : RUFUS CIIOATE, Esq.,

Counsel for E. F., and
CHARLES SULLIVAN, Esq.,
Counsel for I. K.

A. B., a witness produced on the part of said E. F.. beinj?
duly sworn, doth depose and sav, in answer to interro'^itoric'^^
propounded to him by Rufus Choate, counsel for e" F. as
follows : '

1. Interrogatory. What is your name, age, residence, and
occupation ?

1. Answer. My name is A. B. ; my age is 45; I am a car-
penter, and reside in Boston, Massachusetts.

And in answer to cross-interrogatories proposed to him by
George bullivan, counsel for L K., as follows, viz. :

1. Cross-Interrogatory, &c.

(Signed) A. B.

State of New York, )

City and Cocnty of New York, f '*'

io^' V'^- ^'""^ *^'^-' ^"^ ^•ounty, on tlie 1st day of Januarv, a d.
18b(., betore me personally appeared the above-named' A. B..
and made oath that the fore-oing deposition, bvhim subscribed
contains the whole truth, and nothing but the'trnth.

Ihe said deposition is taken at il:e request of E. F , to bo
used upon the hearing of an interfcifuct between the claims of

234 FORMS UNDER THE PATENT LAWS.

ASSIGNMENT OP INVENTION BEFORE PATENT, TO ASSIGNEE.

the said E. F. and those of I. K., before the Commissioner of
Patents of the United States, at his oHice, on the first Monday
of Feliniary next. The said I. K. was duly lujtilied. as ai)i)ear9
by the original notice hereto anne.xed, and attended by George
Sullivan, his counsel.

Certified bv me,

: 5 TEST : ' K. S. STILWELL,

: INT. KEY. : u j^^ Commissioner.

Certijicak on the envelope contoinxng the depositiona.

I hereby certify that tlie depositions of A. B., C. D., &c., re-
lating to the matter of interference between E. F. and G. H.,
were taken, sealed up, and addressed to the Commissioner of
Patents bv me.

R. S. STILWELL,

U. S. Commissioner.

13. Assignment of invention before Patent:
Patent to issue to assu-.nee.

Whereas I, Jethro Wood, of Scii)i(), in tlie county of Cayuga
and State of New York, liave invcnti-d certain new and useful
improvements in Ploughs, for which I am about to make api»li-
cation for letters patent of the I'nited States ; anil whereas
L)iivid Peacock, of Ihirlington. New .Fersey, has agreed to pur-
chase from me all the right, title, and interest which I have, or
may have, in and to the 8ai<l invention in consequence of the
grant of letters |)atent therefor, and has i»aid to me, the said
Wood, the sum of five thousand (h.Uars. the receipt of which is
hereby acknowledged: Now this indenture witnesselh, that for
and in consideration of the said sum to me paid, I have assigned
and transferred, and do hereky assign and transfer, to the said
David Peacock, the full and exclusive right to all the improve-
ments made by me, as fully set forth and described in the speci-
fication wlii<;h I have prepared and executed prepar.-itory to the
obtaining of letters |):itent therefor. And I do hereby authorize
an<l request tne Commissioner of Patents to issue the said letters
patent to the said David Peacock, as the assignee of my whole

FORMS* UNDER TUE PATENT LAWS. 235

ASSIGNMENT BEFORE PATENT, TO INVENTOH AND ANOTHER,

right and title, thereto, for the sole use and behoof of the said
Diivid Peacock and liis lepal representatives.

In testimony wliereof, I have hereunto set my hand and affixed
my seal tliis Kith day of February, 185(3.

Sealed and delivered ; JETIIRO WOOD, [sbal.]

in the presence of \
George Clymek,
David Rittenhouse.

State of New York, )
County of Cayuga, f **'

On this 16th day of February, 1856, before me, a jnstice of the
peace, within and for said county, personally 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.

: 6TA.MP. :

An acknowledgment is not required by the statute, but it is most
advisable to have it made.

14. ASSIGNMEJTT OF IXVEXTIOJf BEFORE PaTENT : PaT-
EXT TO ISSUE TO INVENTOR AiTD 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, aiid in any letters pat-
ent that may be obtained therefor, and has paid to' me, the said
Wood, the sura of tive thousand dollars, the receipt of which is
hereby acknowledged: Now this indenture witnessetli, 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

2.3ti FORMS UNDER THE PATENT LAWS.

ASSIGNMENT OF ENTIRE OR PARTIAL ISTEHKST IN A PATENT.

in the Bpecification ^liich I have prepared and executed pre-
paratory to the obtaininfT of letters patent therefor. And I do
hereby autliorizo and request tlie ('Dintnissioner of Patents to
issue tlie said letters patent to tlie said l)avi<l Peacock and to
myself, as the assignees of tny whole ritflit and title thereto, for
the sole use and behoof of the said David Peacock and myself,
and our lejial representatives.

In testimony whereof. I have hereunto set my hand and afBxed
my seal, this 10th day of February, IBofi.

Sealed and delivered { JETIIRO WOOD, [beal.]
in presence of i : :

(iEOKOE ClYMER, '■ 6 0«I«T j

David Ritteniiocse. : Bxiiir.

Acknowled^ent, as in No. 13.

15. Assignment of the ektire or of a partial

IXTEllEST IN A r.VTENT.

Whereas I, Jethro Wood, of Scipio, in the county of Tavngftt
and State of New York, did obtain letters patent of the United
States for certain improvements in Plouj^hs, which letters ftatent
bear date the 1st day of March, IBft-O; and whereas David Pea-
cock, of Hurlirigton, New .lersey, is desirous of ac<iuirin|if ail
interest therein: Now this indenture witnesseth, that for and
in consideration of the sum of two thousand dollars, to mc in
hand f>aid, the receipt of which is hereby acknowledj^ed [or to
be paid according to the tertns of a certain aijreement, of oven
date herewith, iiiadt- by and between sai<l Peacock ancl myself j,
I have assi(;ne(l, sold, and set over, and do lu-reliy assijjn, sell,
and set over, unto the sai<l David Peacock, all the ri^rht. title,
and interest whicli I have in the said invention, as secured to
me by said letters patent, for, to, and in the entire territory of
the l.'nited States [or in the several States of .New York, New
Jersey, and Pennsylvania, ami in no other place or places); the
same to be held and enjoyed by the said David Peacock, for his
own use and beh<n»f. and for the use and behoof of his lejr.-d rep-
resentatives, to the full end (»f th<.' term for wbirii said letter*
patent are granted |if it is intended to assign fur any «'Xton<led
term, then add— and for the term of any extension tiiercof J, as

FORMS UNDER THE PATENT LAWS. 237

ASSIGNMENT OF AN UNDIVIDED INTEKEST IN A PATENT.

fully and entirely as tlio Huino would have been hold and enjoyed
by rae liad this assii^nmont and sale not been made.

In testimony whereof, I hereunto set my liand and affi.x my

seal, this 10th day of February, 1850.
Sealed and delivered in ) JP:THK0 WOOD, [seal.]

tlie presence of \ : •

Jacob Perkins, f)rr.sr

Benjamin Franklin.

INT. RKV.
ST AMI".

AckDowledgment, as in No. 13.

16. Assignment op an undivided interest in a
Patent.

Whereas I, Jethro Wood, of Scipio, in the county of Cayuga
and State of New York, did obtain letters patent of the United
States for certain improvements in Ploughs, which letters patent
bear date the 1st day of Marcli, 1855 ; and whereas David Pt-a-
00*^1;, of Burlington, New Jersey, is desirous of acijuiring an in-
terest therein : Now this indenture witnes.seth, that for and in
consideration of tiie sum of two tliousand 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, ami set
over, unto the said David Peacock, the full and ecpial undividi-d
one-half part of all the ritjht, 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 representatives, to the full end of
the term for which said letters patent are granted |if it is in-
tended to assign for any o.ttended 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 m« had this assigu-
meut and sale not been made.

It is hereby covenanted and agreed,, by and between the par-
ties hereto, that neither of said jtarties, 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.

EXCLCSIVE LICBX8E TO MAKE, USE, IJfD SELL AN INTENTION.

sell said invention, without the written con-ient of the other
party first had and obtained.

It is fui-ther covenanted and agreed, by and between the par-
ties hereto, and for themselves, their heirs, executors, adminis-
trators, and assis!:ns, tliat in case they, or either of them, shall
manufacture and sell jiloughs under said letters [)atent, and con-
taining the invention tlierein described, that the party so making
and selling such ploughs shall and will pay to the other party
hereto, or his representatives, as royalty or patent fee, the sura
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 tiiat correct booi<s of account of all
plougiis so made shall 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 athxed their seals, this 16th day of February,
1856.

JETIIRO WOOD. [SBAL.J

Sealed and delivered in ( DAVID PEACOCK. [sbauJ
the presence of

Jacob Perkins, 5 cent

BT'. , . INT. REV

EN.IA.MI.\ rUAXKLIN. 8TAMP.

Acknowledgment, as in No. 13.

17. Exclusive licexse to make, use, and sell an

INVEXnON.

Whereas letters patent of the United States, bearing date the
Ist day of January, Ift.'iO, were granted to Jethrti Wood, of
Scipio, in the county of Cayuga and State of New York, for
certain improvements in Ploughs, as by reference to said letters
patent will m<)re fully appear;

And whereas, John Brown, of Boston, State of Massachusetts,
is desirous of obtaining tlie right to make, use, and sell the said
invention witliin and for tlie Slates of Massacimsotts, Connecti-
cut, and Rhode Inland, and has agreed to pay tlierefor tiie sum
of tiiree ttiousand iloUars.:

Now this indenture witnesseth, 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 tho two promissory

FORMS UNDER THE PATENT LAWS. 239

EXCLUSIVE LICENSE TO MAKE, tJSE, AND SELL AN INVENTION'.

notes of tlie said Jolin Brown, eacli bein.ir for the sum of one
thousand dollars, and bearing even date witli these presents, and
I)ayable in one and two years from the date thereof, with in-
terest, the recei|)t 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 tliem, 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 elfect 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 sliall
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 LICKNSB TO >IAK£, USE, AND SKLL AN IXTENTIOX.

construction of tlie said invention to be made and used eUe-
wiiere tiian in tlie territory aforesaid.

Should it be decided, before tlic .nuid notes or either of them
sliali become due as aforesaiil, by any court having jurisdiction
to pass upon the validity of letters patent, that tlic said letters
patent so j^ranted to said Jethro Wood, are invalid and null and
vuid, the said party of the second part shall be thereby released
and discliarged of and from the jjaynient of such of the said
promissory notes as then remain unpaid; and if either of said
notert shall then be paid, said ])arty of the first part covenants
with said party of the second part to rei)ay the one-half of what-
ever sums shall have been so i)aid : Proiiilcd, hmcerer, that if
such adjudication, as to the validitN* of such letters patent, shall
not liave been made by the court of lust resort, and the said
Wood or his representatives shall determine to carry sifch
decision to such court of last restfrt, t.iat then the payment of
any note so remainiuf? unpaid shall bo suspended until the
determination of such court of last resort as to the valKlity of
sucli patent, and such note shall be payable or otherwise, ac-
cordiii-j as said letters patent shall be finally held to be Valid, or
null and void.

It is further agreed botwocu the i)arties hereto, that in case
any i)erson or i)ersons shall intringe the said letters patent within
the said territory, tlie said John Hrown, his executors, adminis-
trators, and assi;,Mis, may and shall have the rij^ht, for his and
their benefit, in tiie name of the said Jethro Woocl, his execu-
tors, administrators, and assi<;ns, to commence, sue, and prose-
cute all such suits an<l actions, as shall be deemed expedient,
apainst any i)erson or persons who shall be f^uilty of any such
infringement; and for this purpose the said Jethro Wood con-
stitutes the saiil .Inhn Brown, his executors, a<lministrators, and
ussi^jns, the lawful attorney or attorneys irrovocalile of him, the
«aiu Jetliro Wood, at tlie costs and'to the use of the said John
IJrown. his executors, administrators, and assi;^ns. to commence
and jirosfcutc, in the name of the said Jethro Wood, all such
suits and actions aforesai<l.

in witnesM whereof, the [tarties to these presents have hereunto
set their hands and seals the dav and vear first above
written. JHriip.iJ WnoD. [.skal.J

Sealed and delivered ) JUllN IJIiUWN, [skal.J

in presence of \

^ cKirr

Ackno wit-dement, as in No. 13. • "*''■ ■■'^- .

FORMS UNDER THE PATENT LAWS. 241

license to use an invention on payment of royalty.

18. License to use ax invention on payment of

ROYALTY.

Whereas certain letters [)ateiit of the United States, bearing
date the 10th day of May, 1800, were issued to Rufus Button, of
tlie city and State of New York, for improvements in Harvest-
ing Macliines, whicli said letters patent were afterwards surren-
dered, and new and reissued letters patent, for the same inven-
tion, issued to said Rufus Dutton, on the 1st d.iy of June, 1863,
as by reference to said letters patent will more fully appear;

And whereas, Robert Brown, of Providence, Rhode Island, 13
desirous of obtaining a license to use the improvements so pat-
ented to said Dutton in and upon mowing and reaping macliines,
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 jiatent, the said improvements so patented
under and by said letters patent, upon the terms and conditions
herein contained, and ui)on the 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, .idministrators, and assigns, as
patent fee or royalty, 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 : upon
each and every one-horse machine, the sum of five dollars ;
upon each and every two-horse machine, six dollars; and upoQ
eacii mowing and reaping machine combined, the sum of sevea
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 tlie said invention,
which said books of account shall be open, at all rAsonable
11

242 FORMS UNDER THE PATENT LAWS.

LICENSE TO USE AN INVENTION ON PAYMENT Of ROYALTY.

times, to the inspection of said Riifiis Diitton and his representa-
tives, or ids or tiieir attorney, and on the tirst day of September
of each and every year to make a true return, under oatli, of all
such machines manufactured and sold by liim or tliem during
the past year, and also remaining unsold; and witliin thirty
days thereafter to pay to said Ilufus Dutton, or his representa-
tives, upon all such machines so manufactured and sold, the
I)atent rent or royalty, as hereinbefore i)rovided, and agreeable
to tlie returns herein re(iuired.

3d. The said Robert Brown further covenants and agrees, for
himself, his executors, admini.strator.-s, 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 thereof^
the words and figures, "Patented, May 10, IBCO; June 1, 1S63."

4th. The said IJufus Dutton, for himself, his e.xecutors, ad-
ministrators, and assigns, covenants and agrees, that he or they
will not grant licenses to any other parties, to make and sell
machines using or emjiloying said invention, f<>r a less patent
rent or royalty than above sjiecitied, without making correspond-
ing reductions to the said party ot the second part.

5th. Upon the failure of said pirty of the second part, h\a
executors, administrators, or assigns, at any time to faithfully
carry out and i)erform any or either of the said herein contained
conditions and ])rovisions, the said Rufus Dutton, his exec-
utors, ailministrators, or assigns, may revoke and annul this
license, lirst giving said Robert Brown thirty days' notice there-
of, in which case this license, and all rights and privileges here-
under, shall forever cease and determine.

In witness whereot', the said liufus Dutton has liereunto set
liis hand and seal, this tenth day of May, a. d. 186G.

Sealed and delivered / liUFl'S DUTTON. [l. s.]

in presence of (

I, the said Robert Rrown above nameil, hereby accei)t the
above liceiiHC, and bin<l myself, my executors, administrators,
and aHsiguH, to observe faithfully all and each of the obligations,
jonditions, and covenants tlierein contained.

In witness whereof, I have hereunto set my hand and seal,

tliirt tenth day of May, A. i). iHfJU.
Sealed and delivered I ROBERT BIIOWN. [l. b.J
ill presence of (

Acknowlc'lgmont, as in No. 13. : ,^t*^*'^v :

STAMP.

INDEX

PATEl^TT LAWS

References thus (*) are to sections; otherwise, to notes.

F.EF.

Actions respectikg Patents — ^^°^

U. S. Circuit Courts have orij^inal cognizance of . . . . 147 *17

jurisdiction of such courts exclusive as to 147 1

may be brou-jrht at law or in equity 148

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 * 1 5

special matter given in evidence with 139 *15

special pleas allowed in place of notice 141 2

both notice and special pleas not permissible 141 3

for inlringcment of patent 137 *14

assigiiets 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 too broad 164 *9

common-law rule as to, modilicd 165 a 1

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 LA"U'S PRIOR TO ACT OF 1836.

Actions tiespecting Patents —

on the case, for infringement 83 *4

on the case, for infringement 89 *5

on the case, for infringement 100 *3

jurisdiction in equity conferred 101

Circuit Courts U. S. to have original cognizance. ... 101

244 INDEX -TO PATENT LAWS.

REFERENCES THUS (*) ARE TO 8ECTI0NB ; OTHERWISE, TO NOTES.

Actions respecting Patents — continued. i'a'J" »w.

cosLs in, when in discretion of court 140 *16

costs in, when not recoverable 1»5 ♦S

Additional Ish'rovements —

patent for, ma_v he annexed to oripinal patent 13 1 *13

to have same efl'ect as if embraced in sucii original

patent 1:M ♦is

fee. in granting 134 •is

original claim subject to re-examlnation, on applica-
tion for 1C3 *8

new patent may be taken for. if preferred 137 dl

patents of additions no longer allowed 201 *9

Administrators, see Kxecutors.

Affirmation, see Oath.

Agents, Patent —

Conmiissioner may refuse to recogniee 201 'S

reasons therefor to be recorded and approved 201 *3

Agents to transmit .Models —

Commissioner may ajjpoint not over twenty 167 •10

authority to ajipoint revoked 200 *6

Aliens —

may receive patent same as citizens 114 *G

fees payable by, on ap]>lication 128 *9

residents for one year may secure caveat. ... l.'tL *\2

must put liis invention on sale wiihin 18 months. . . 140 *15

need not endiavor to force a sale 143 A3

American assignees of, not subject to such coudiiion 143 h2

entitled to return fee on witinlrawal 1G8 *12

residents for one year may patent design Is2 *3

residents lor one year may i)atent design 203 *1 1

pay same fee as citizens, when 202 *10

Antedating of Patent.s —

allowed, not to exceed six montlia 12G •S

Appeals in Actions iiKsrECTiNo Patents —

to Sup. f'ourt from Circuit Court 147 *17

as from other judgments and decrees 147 •H

in other cases deemed reasonable 147 *17

Hucli cases must relate to construction of patent laws 148 b 1

INDEX TO LAWS PRIOR TO ACT OF 1836.

Actions respecting Patent.s —

citizenship of parties immuterial 102 2

assignee of part of a patent cannot maintain S»0 c 1

such assignee may join with pateniee 00 c 2

wiien {'ircnit Courls may declare patent void 92 e'2

when Circuit Courts hove exclusive jurisdiction .... 92 « 3

INDEX TO PATENT LAWS. 245

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

Appeals in Actions respecting Patents — continued. '•*'•'= '"^'•

such appeal takes up the whole case 143 b 2

from all ju(l:,Mnent3, without regard to sum or value

in coiit rovcrsy 196

Appeals in Cases of Applications for Patents —

from Examiners to Examiners-in-Chief 193 *2

not allowed until after second rejection ,. 199 •S

from Examiners to Commissioner not permissible . .1 1!>9 3, 4

from Examiiicrs-in-Chief to Commissioner 193 *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 179 *12

from Commissioner to Chief Justice Cir. Ct., Dist. Col . 1 7«5 *11

from Commissioner to Ass't Justice Cir. Ct., Dist. Col .190 *2

from Commisj^ioner to Justice*! Sup. Court, Dist. Col. 125 2

may be taken, when no o])posing party 125 3

may be taken by either iuterferant 127 7-9

in case of granting as well as refusing a patent .... 127 7

no limitation as to time of 125 6

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

filing 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 1"8 di

Commissioner to produce original papers and evidence 176 *11

powers of judges in, to be strictly construed 178 c 2

judges to be confined to points in reasons of appeal. 178 e3

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 6

general issue and notice in 90 *6

objects of notice of special matter 91 12

what defences, not enumerated, allowed 92 d 1,^2

Patent, prima facie evidence in 83

246 INDEX TO PATENT LAWS.

references thus (*) are to sections ; otherwise, to notes.

Appeals im Cases op Applications for Patents — pa"* *«»•

are uot counsel for Patent 0;lice, or parties 179 /3

foes on appeal from Examiner.-i-inChief to I'oramis'r 202 *10

fees on appeal from Co;nmissioner to Justices Sup- Ct. 1 7G * 1 1

Applications fou Patents —

may be made by citizens or aliens 114 *6

dcsciiption of invention, how to bo set forth in 114 *G

description in, adapted to ordinary comprehension . . 117 /i 1, '2

description must be of record 117 /* 3

object of description 117 /i4

drawings and model to be furnished with 116 *<j

Torilic.ition of, wiiat required in 115 *o

two distinct invcnti ns eaunot be included in 117 g

but different modes of applying invention may be in-
cluded 113 t 1

on filing of, examination to be made 120 *7

when patent to issue 120 *7

if defective, applicant to have notice I'JO ^7

applicant may amend or withdraw 120 *7

if rejected, applicant may appeal 121 *7

interfering, appeal may be taken 125 *8

intt-rfering, remcd}^ by ijill 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 *i 1

to be completed within two years 204 *12

when to be regarded as abandoned 204 *13

Art —

patent may bo granted for 114 *6

does not mean art in abstract 115 1

means a useful art or manufacture 115 1

can \)C protected only in mode described 115 1

word "art" not used in Knglish patent laws 116 2

ASbllfNKK OF InVKSTIOV OR PATENT —

I)atent may issue to ICO ♦G

may surrender and reissue patent 134 *13

when must join with patentee in surrender 136 6 3

benefit of renewal, when extouda to 150 *18

INDJ-:X TO LAWS PRIOR TO ACT OF 1836.

Actions kkspk(tin<! Patkm

to Hct aside patent falsely obtained 82 *5

to set aside patent falsely obtained 94 *10

in what lasi-s may bo brought 94 1

objects of such a'^tiotis 94 2

damages rccoTCable in, for infringements 81 *i

INDEX TO PATENT LAWS. 247

REFEREXCK3 THU3 (*) ARE TO SECTIONS ; OTHEHTVISE, TO NOTES.

Assignee op Invention or Patent — continued. '•*«''- '"'-''•

extont of such benefit of renewal 151-2 /1-6

may maintain action for infrinfremeut 1 -'{I *14

but must be assignee of an exclusive right 133-9 c 1-5

wlien cannot maintain sueli action 139 c 6, 7

when may have action, if patent too broad 164 *9

to put date of patent on articles sold 184 *Q

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 *11

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 *1 1

when subsequent recording sufficient 131 1

of lost patents, when to be recorded anew 154 *1

fees for recording 202 *10

BoABD OF Examiners —

creation of, and who to compose 121 *7

duties of. in case of appeal to 121 *7

repeal of act creating 179 *12

Chief- Justice Cir. Ct., Dist. CoL, substituted in place of 1 76 *1 1

C.
Cateat —

who may file 131 *12

what to set forth 131 *12

what need not show 132 b 3

to be preserved in secrecy 131 •! 2

rights secured by 132 ^12

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-s^

resident for two years may receive patent 98 *1

right to patent extended to all resident aliens 105

248 INDEX TO PATENT LAWS.

RBFFBRENCE8 THL'g (*) ARE TO 8BOTION3 ; OTHERWISE, TO KOTES.

Caveat — continued. »•*«■ »«'•

may be renewed from year to year \'-'>'2. a 2

is for the bcnelit of the inventor 132 ft 1

notice to Commissioner aa to what l'!2 b'i

power of ( ommissioner as to 133 4

neglect of Commissioner to give notice aa to effect of 133 8

purposes effected by 133 5

how far evidence of invention 133 6

not evidence that invention is not perfected 133 7

wlieii caveator may be required to complete invention 132 ♦ll

time of completion, how computed 201 *9

fee on, originally 131 *1 2

fee on, considered a part of patent fee 131 *1 2

fee on, no longer part of patent fee 201 *9

fee on, reduced 202 •lO

Chief Clerk of Tat^t Office —

how appointe<l, 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 oath, and give bonds 110 *3

salary of, originally 109 *2

salary of, as increased 200 *i

Chief-Justice (,'iucriT Covrt, District Columbia —

when appeals may be made to 17*) •! 1

compenoation of, on appoalu, per year 180 ♦IS

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 specify and point out 115 *6

conclusive as to rights of patentee 118 j I

most material part of specification 118 j 2

embraces equivalents, though not named 118 ji

too broad, patcntoo may disclaim 161 *^

too broad, when patent will be held good 161 *0

Clirks in Patent Okkice —

how appointoil 109 •2

INDEX TO LAWS PRIOR TO ACT OF 1836.

Aliinb —

must introdu<^ patent within one year, not intermit

it« use for six months, and become a citizen ... 105
Appeaij to Sihrehe Cocut —

from judgments of Circuit Court 101

Afplicatioits for Patents —

may b« made by any person! who are inventora ... 19 *I

INDEX TO PATENT LAWS. 249

BBFERENOES THUS (*) ARE TO SECTIONS ; OTHERWISE, TO KOTES.

Clerks in Patent Office — continued. ''*°" ■"''•

required to take oath 110 *3

prohibited from acquirinfj interest in patents 109 *3

disbursing clerk to give bonds 191

temporary and other, appointment of Itj8 *1 1

temporary and other, appointment of If *2

temporary and other, appointment of 1S7 *3

temporary and other, appointment of 19^

COMMISSIONKR OF PATENTS

how appointed lOG *1

general duties of I'^'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 furnish copies of records, when applied to Ill bl

to furnish copies to all asking for same Ill 62

to countersign letters patent 112 *5

to make annual report 1G9 *14

to prepare lists of patents 171 *3

may frank papers connected with his office 107 *1

may frank Patent Office reports 187 *4

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-i

power as to, taken away 207

may direct papers illegibly written to be printed . . . 201 *8

when, may refuse to rcco<rnizo j)atent agents 201 *8

may make rules as to evidence in contested cases . . 179 ^12

may make rules as to evidence in all cases 19G *1

cannot make new rules of evidence or law 180 1

is liimself bound by such rules ISO 2

duties of, on fllins; of c:iveat 132 *12

wliat acts can perform on it i;!3 •!

neglect to give notice on, effijct of 133 10

duties of, on applications for patent for inventions . . 120 *7

duties of, on applications for patent for designs .... 203 *1 1

bound to issue patent, when 120 *7

INDEX TO LAWS PRIOR TO ACT OF 1836.

APPLICATION'S FOR PATENTS —

conlined to citizens of United States S-t *1

right to make extended to aliens 5*7 *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*

250 INDEX TO PATENT LAWS.

RIFERENCES THUS (*) ARE TO SECTIONS : OTHERWISE, TO NOTKS.

OOMMISSIOXER OF Paten'TS — Continued. '*"■ ■»'•

when patent issncd. power ceases. 124 d2

power remains, until patent issued 124 d 3

duties of, in 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 *1.'}

must act, has no discretion 135 G

may allow reissues in several parts 158 *5

duties of, as to extensions 149 *1 3

lenjjth of notice required in such cases 186 *1

duties of, on withdrawals, to refund part fee 120 *7

duties of, extended to applications by foreigners. .. . 168 *12

duties of, as to patents issued prior to Dec. 10, 1836 154-5 *1, 2

Composition' or mattek —

patent may be pranted for lit *Q

specimens of ingredients on application for 115 *6

every ingredient need not bo new 116 cl

combination only required to be new 116 c 1

diflen.'nee between it and process IIG c2

Congress, tower over rxiKXTS —

can grant privileges only to inventors 9 1

canuot grant privileges to introducers 9 1

ascertains and defines property iu iuventions 10 6

does not regulate its use 10 5

such use regulated by the States 10 5

laws of, superior to those of the States 10 3, G

may determine when 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 rights and privileges to assignees 11 16

may confer further term, and even after expiration

of llrst 11 n

may grant a second extension 12 2

fraud in acts ol', not presumed 11

INDEX TO LAWS PRIOR TO ACT OP 1836.

ARUiTnATons. in cases of Interference —

how and by whom appointed 93 9

award of, to be final 93

refusal to submit to, eflect of 93 o

AssiGNKE OF Invention on Patent —

stands in place of original inventor 89 4

may maintain action for infringement 81 4

INDEX TO PATENT LAWS. 251

KErE»ENCB8 THUS (*) ABE TO SECTIONS ; OTHEBWTSE, TO NOTES.

Congress, power over Patents— continued. '*«■ ref.

may renew a patent, or decline so to do 11 21

may grant riglit;^, by general or special law3 12 24

private acts are considered part of the general ones. 12 25

both to be construed together 12 26

Copies op Papers —

any one may have Ill *4

Commissioner required to give Ill 61,2

certifled, evidence when originals would bo Ill *4

originals cannot bo required Ill a I

copies must be received when offered Ill a 2

prima facie evidence of correctness of originals Ill a 3, 4

defective, how corrected Ill aH

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, Jurisdiction in Patent Cases — Supreme Court —

appeals and writ of error to. as in other cases 147 *17

and in other cases deemed reasonable 147 *17

what are reasonable cases 148 6 1

whole case goes up in such cases 148 b 2

from all judgments, without regard to sum or value

in controversy 196

Courts, Jurisdiction 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 148 4

jurisdiction of^ depends only on subject-matter 143 5

may issue injunctions 147 *17

equity jurisdiction same as in England 147 2

jurisdiction irrespective of right to injvmction 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

INDEX TO PATEJTT LAWS.

BEFKRENCES THUS I*) ARK TO SECTIONS; OTUEBWISR, TO NOTES.

Courts, Jurisdiction in Patent Cases — Circuit Courts — 'aoi k».

when may declare patents void 145 *1G

extended in such cases 175 *10

jurisdiction exclusive in such case 147 4

assii^nee may maintain such action 146 3

power to order patent to issue 14G ♦IS

when may trubio damages 137 *14

Buch power discretionary 133 2, 7

may treble damages, though costs not recoverable . . 138 8

Damages ln Acrioxa for Infiunoeuent —

jury to find actual damages 137 ♦H

actual, those fixed by verdict 138 3

not to bo exemplary or puiiitorj' 133 4

only compensatory 138 6

cannot include counsel foes 138 6

court may treble the damages 137 *14

discretionary wliether so to do 138 2, 7

may be iuoreased, though costs not recoverable .... 138 8

object of increasing 138 9

Defences, see General Issue.

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 *1 1

fees, on issue of 204 *1 1

utility of, not necessary for a patent 204 1

must bo result of iiid\i8tr3', genius, Ac 201 2

titles, trademarks, Ac, when patentable as 201 5,

DiOKsr OK I'ATEsrs —

(.'oinmiHsioner authorized to publish 171 *3

INDKX TO L.\WS PIUOR TO ACT OF 183G.

Copies of Patkhs —

copy specification, how far evidence 81 *2

copy 8|K'cification, how far evidence 8S *3

copies iK't aliowt'il to every one OG 'i

feOM on o)>tni[iiiig "J5 *10

Courts, .IrRisniCTios of — Supremo Court —

npppnlH and writs of error to 101

lie aa from other judgmentB 101

INDEX TO PATENT LAWS. 253

references thus (*) are to sectioks ; otherwise, to notes.

Disclaimer op Patent — pagb ekf.

who may make IGl *7

to state the interest of disclaimant IGl *7

to be in writing, and witnessed, and recorded IGl *7

to bo considered as a part of patent IGl *7

how far aflects pending actions IGl *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 1C3 *8

law as to, penal and not remedial IGl 1

when patentee must disclaim 163 2

what may be disclaimed 1G2 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 may be received in evidence 163 5

disclaimed part may be covered by reissue 1G3 6

should be tiled 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 op 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 ife 2, 3

may be signed by inventor, or his attorney 118 i4

duplicate required IGO fi

photographs, when permitted, in place of 119 7

INDEX TO LAWS PRIOR TO ACT OP 1836.

CoiniTS, 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 crises in equity and at law 101

jurisdiction of, not exclusive 102 3

jurisdiction not enlarged as to subject-matter 102 2

Courts, Jurisdiction of — District Courts —

power to repeal letters patent 82 *6

264 INDEX TO PATENT LAWS.

BSFKBEirCBS THUS (•) ABB TO SECTIONS ; OTHEBWISB, TO K0TE8.

EviDEVCE rx Cases before the Pa text Office — ^*o» ««f.
Commissioner, may make rules as to, in contested

cases 179 ♦12

power to make rules extended to all cases 196 *1

new rides of, cannot bo matle 180 1

Buch rules bind Commissioner 180 2

revocation of, affects only subsequent proceedings . . 180 3

Buch cases must be just and reasonable 180 4

before whom may be taken 196 1

witnesses may be comi>elled to give 197 *1

how far witnesses privileged from giving 197 *1

fees to be paid to witnesses 198 *1

how far copies of papers are Ill *4

how sudi defective copies corrected Ill a 5

printed copies of patents, when evidence 206 *15

Ejcamlxkbs in Patent Office —

board of, to determine appeals, created 121 *7

duties of, transferred to Chief-Justice Cir. Ct., D. C. 176 »ll

duties of, may be i)erformcd by Assistant Justices. . 190 *i

DOW exercised by Justices of Supremo Ct., D. C. . . . 177 o2

in chief, appointment of 198 ♦2

to revise decisions of primary examiners 198 *2

governed by rules of Commissioner 198 *2

appeals from, to Commissioner 193 *2

appeahi to, from primary, when 199 *3

are judicial ami independent officers 199 2

Commissioner can overrule their acts only on appeal. 199 3

salary of 198 ^2

principal, appointment of, one 1 09 *2

principjvl, ajipointmont of, two 185 '1

principal, apj)ointment of, two 1 89 *'i

principal, nitp'iiiitmcnt of, four 192 *10

principal, nppointinout of, two 19:i *9

Commiasionor may appoint 200 ^7

are judicial and independent odli'crB 199 2

ConiriiisHiomr can contr(4 licta of, only on appeal ... 199 3

rated aa fourth-cluss clerks 1 93 ^25

INDHX TO LAWS PRIOR TO ACT OF 183ft.

COCBTB, JcBiHDifTiOH OF — District Courts —

power to repeal letU^rs patent 94 'lO

extent of jurisdiction in such cases 94 1

objects of such pn>ooedingfl 94 2

restoration of suspouded suits in 96-7

INDEX TO PATENT LAWS. 865

EEFEEENCES THUS (*) ARE TO SECTIONS ; OTOERWISB, TO NOTES.

ExAJfiNEns IN Patent Ofhce — continued. '"*<'" R'-'-

salary of 109 *2

ealary of 191 *3

assistants, appointment of, two 170 *1

assistants, appointment of, two 185 *1

assistants, appointment of, two 188 *2

assistants, appointment of, six 191 *'i

assistants, appointment of, four 192 *10

assistants, appointment of, two 193 *9

Commissioner may appoint 200 *7

rated as third-class clerks 193 *25

salary of 170 *1

salary of 191 *3

power of, as to interference 198 *2

power of, in extensions 198 *2

Extension of Patents —

patentee may apply for 149 *18

patentee same as inventor 150 a 1

administrator may apply for 150 a 2

■ and thougrh patentee had no interest in existing

patent 151 3

application to be made to Commissioner 149 *18

Board appointed to determine as to 149 *18

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 ♦IS

extended patent gives same rights as original 151 e 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.SW'S PRIOR TO ACT OF 1836.

Damagzs in Actions fob Infringehent —

such as jury may assess, and forfeiture of thing made 81 ♦!

equal to three times amount of license price 89 *S

equal to three times actual damage sustained 99 *3

256 INDEX TO PATENT LAWS.

RSFERENCE8 TnU8 <*) ARE TO SECTIONS ; OTUEEWISB, TO NOTES.

Extension of Patents— continued. pao" ■"'•

.except as to patents for designs 204 *11

not granted after expiration of patent 150 *18

benctit of in favor of assignees 1 50 *18

how fur inures to assignees 151-2 /1-6

applies to past as well as future patents 151 el

but one extension provided for 151 e 2

may be again extended by Congress 151 e 6, 7

fee on application for 202 *10

fee on granting of 202 *1

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 ♦lO

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 application for reissue 134 *13

fee in sucii case increased 202 *10

on application for extension 149 *18

. fee increased in sucli case 202 *10

on granting extension 202 *1

on application for patent for designs 182 *3

fees in such cases modified 203 *! 1

on filing disclaimer ICl *7

on filing dischiimor 202 *10

on a|)peal3 to Commissioner 202 'lO

on appeals to Justices Supreme Court 122 ♦!

for recording assignments 130 *11

incroaned iu such cnaes 187 *2

re-enactment of provision aa to 202 *10

for copies 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 PRIOE TO ACT OP 1836.

Extension or Patints —

by application to Congress 102 *2

requiHiles of appli<-ation 103 *3

previous oxtvasion only by private acta 103 8

INDEX TO PATENT LAWS. 257

HEFEREN'CES THCS (*) ARE TO SECTIONS ; 0TUEKWI8B, TO N0TE9.

Fees — continued. pack sek.

paid by mistake, may be refunded 181 *.l

of witnesses on examination 198 *1

Foreign Patents —

not to be obtained over six montlis prior to home

patent 126 *8

such issue of no longer affects home patent, provided

invention not put in public use in U. S Ill *i»

home patent to run from date of foreign 171 *6

in what cases this proviso applies 172 3, 4

date of home patent ma}' be altered to correspoud . . 172 1

misilatiiig home patent not fatal 172 a2. C

FEANKIXG privilege of COMJtISSIOXER —

may frank letters, ic, connected with his oCQce. . . . 107 *1

may frank Patent OUice reports 187 *-4

General Issue —

defendant may plead, with notice special matter. . . . 139 *I5

is enlargement of mode of defence 140 (i 1

but defendant may plead specially Ill a 1, 2

notice and special pleas not botli permissible 141 a 3

order of court not necessary to file notice ... 141 b I

defective notice may be corrected 141 b'l

covers depositions taken before notice filed 141 b 3

notice special matter not proper in equity suits .... 141 65

object of notice 1 43—4 » 1 , 2

how particular notice must be 144 3-6

what defences may be set up by notice 139 *15

Infringement of Patent, see Actions and Damages.

Interfering -(\j'PLiCAriONS —

parties 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 PRIOR TO ACT OF 183G.

Fees —

on obtaining letters patent 83 *7

on deposit of petition ;i5 *1 1

for copies o*" specification and model 81 *3

for copies of papers and drawings 95 *11

258 INDEX TO TATEXT LAWS.

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

Interfkrixo a prLiCATiovs— -continued. '*o» ««'•

may exi.«t between application and reissue 126 3

second may be declared between same parties 120 4

Fccond only a rehearing of first 127 S

appeal in cnses of 125 ♦S

remedy as to, by bill in equity H5 *1<>

assignee may file such bill 146 <r 3

when caveator entitled to notice of 132 *12

Introducer or Invention —

not protected t»y acts of Congress 9 1

tlio several Slates may grant privileges to 9 2

Invention, wiikn rATENTAiu.E —

must be new and useful lit *6

not known or used by others than inventor 114 *Ij

not in use or on sale witli inventor's consent 114 *6

not known so as to bo accessible to the pul)lic 117 e3

use for two years before application permitted 172 *7

such use extends patent two years 173 2

object and efl'ect of such provision 173 3-8

Librarian of Patent Office —

appropriation to pay 190

rated as u clerk of the third class 193 ♦25

salary of, established 1 99 *4

Lidrauy of Patent Office —

establishment of, and appropriation for 152 *19

appropriation for 190-1

in.

tlACIIINR, patent for —

principle and m-Kles of application of to be stntod ... 1 15 'G

includes all nierhniii<'al devices or combinations. ... 116 61,6

one patent inny include all modes conteiniilatod .... 118 t 1

inventor must doscribo the different modes 118 1 2

INDEX TO L.VWS I'UIOU To ACT OF 1836.
Gbs'krai. IsaiK —

plf»adnblo, witlj notir-o of special matter 83 '6

pleadable, with notice of special matter 90 *r,

object of Huch jifovision 91 a 2

such Dotico for socurity of plaintiff 91 03

INDEX TO PATENT LAWS. 259

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

Machine, Patent for— continued. »•*"" kkf.

abstract effect or function of, not patentable 116 62

is the result of invention 116 i5

"improved macliine" and "improvement on ma-

cliino " equivalent IIG dl

Machinist in P.vtent Office —

appointment of, and salary 109 *2

rated as a tliird-class clerk 103 *25

Manufacture, article of —

patent may be prantod for 114 *6

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 *-t

when may be restored by Commissioner 200 *5

are part of the letters patent 119 11

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 Officse may bo refunded 181 *1

Notice op Existing Patent —

patentees and assignees to give 20 j *13

effect of not doing so 205 *13

Notices of Interkerences, see Interferino Applications.

Notices or Special Matter, see General Issue.

Oath in Patent Proceedings —

required on applications for patents 115 *6

not essential to validity of patent 119 ml

INDEX TO LAWS PRIOR TO ACT OF 1836.

Interfering Api-lications —

submission of, to arbitrators 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.

REFERENCES THUS (*) ARE TO SSCTI0X8 ; OTHERWISK, TO NOTES.

Oath in Patent Proceedint.s — contiuued. »'*''■ »«'•

extends to wliole of specification 119 m'l

" declaration " cannot be substituted for 119 m 3

nlTirniation may bo substituted for 108 *13

before whom may be taken 115 'fl

before whom taken, out of United States 183 ^4

renewal oath, enactment as to 121 *7

renewal oath, no longer required 208 ♦l

Commissioner, and other officers to take 110 *3

Patent Office —

establishment of 106 *1

ntlaolied to Department of State 106 ♦[

attached to De[)artraont of Interior 188 *'2

oHicers in, U> have no interest in patents 109 *2

oflicers in, tu take oatli 110 ♦S

seal of, to bo provided 110 *-4

Patents for Invkntion.s, rbquisites of, ic. —
applications for, see Applications.

to be issued in the name of United States 112 *5

no warrantee in reai)ect to 113 7

does not bind Ciovernment more than others 113 7

validity of, may be contested by Govornment 113 7

issue subjects to all legal objections 113 8

what to contain 112 *5

embraces specilicaiion, model, and drawings 113 9

when new ones may issue 1 '>G *3

to bo signed by Secretary of State 112 *5

now signed by Secretary of Interior 183 *2

countersigned by (.'ommissionor of PatLiits 112 'S

♦.-i

recorded in Talent (Jfllcc 112

when may bo recorded anew ir> I *l

issue to the ajiplicant or applicants 112 *5

may issue to assignees of inventor 159 *6

couaot issue to assignee and inventor together IGO 2

INDEX TO LAWS PRIOR TO ACT OF 183G.

Machines, Patents for —

j)rinciples of, to bo sot forth in specification 87 *3

Boveral mndc^i of application of stated 87 *3

UODBI.8 f)K ISVKNTIOSa —

required on ni)pliiuitionfl 80 *2

required on applications 88 *3

INDEX TO PATENT LAWS. 261

RBFERENCES THUS (*) AVE TO SECTIONS ; 0TI1ERWI8K, TO NOTES.

Paten'ts for Isvextioxs, reqlisites of, Ac. — continued, paoz ««»'•

must issue to assignees of whole interest 160 . 2

cannot issue to assignee of part interest IGO 3

assignee becomes, in law, party applicant KiO 4

may issue to legal representatrves 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 hy laws of different States 10 5-11

is prima flick evidence of facts stated in it 113 10

term of, originally fourteen years 112 *5

extended to seventeen j^ears 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 *15

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, wlien issued, and term of 1S2 *3

for designs, term of varied 203 *] 1

Commissioner may cause to be printed 206 *14

prin ing of, no longer allowed 207

reissue of, see Kkissue.
extension of, see Extension.

classified list of, to be pubhshed 171 *3

annual list of^ 169 *14

fee on obtaining, see Fees.

Patented Articles —

to be marked with date of patent 134 *6

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 1S3G.
Oath 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 SO 85 *1

to be recorded in ofiBce of Secretary of State 8U, b5 *1

202 INDEX TO PATENT LAWS.

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

Penalties respbctixo Patents — paok mf.

for marking articles patented when not so 183 *j

incurred, as to all articles marked with guilt)* intent. 184 a

penalty is just one hundred dollars *. 184 I I

may be recovered in action of debt 1 S4 6 2

to bo sued for within live years 184 c

for neglecting to stamp date of patent on articles sold 1 84 *G

Printing Specifications, Drawings, ic. —

Commissioner may direct to be printed 20G *14

cost of, limited 206 * 1 4

expense of paid out of patent fund 2015 * 1 4

printed I'Opies to be evidence '20»'. * *15

autiiority to print revoked 207

papers illegibly written may be printed 201 *3

cost of, to be paid by parties liling 201 *8

Process —

not eo nomine subject of patent 1 1 G 3

included under term "useful art" . .' 116 3

is the result of discovery 116 fc3

there may be invention in, irrespective of machinery 116 64

Reissue of Patknt —

when may he had, and for what errors 133 ♦IS

who may apply for 134 *i;!

who may apply for 136 1, 2

reissued j)atent must be for same invention ........ 134 *13

several reissues may bo had on same patent 158 *5

original claim subject to revision and restriction. . . . 163 *i
reissued patent to have same effect as if originally

filed 134 ♦IS

reissued patent relates back to original 136 c 1

is a continuation of the original 136 c 3

cannot alfect prcviou-* grantees 1.16 c4

there may be more than (juo reissno 135 3

only remedy to correct mistakes in patent 135 4

cotnlition on which allowed 135 6

INDKX TO LAWS PRIOR TO ACT OF 1836.

Patents for Inventions —

term of fourteen years 70, 85 *1

surreptitiously obtained, how repealed 82 *5

Burreptiliously obtained, how repealed 93 ♦lO

object of ^ucL proceeding 93 2

INDEX TO PATENT LAWS. 263

REFERENCES TUL'S (*) ARB TO SECTIONS ; OTHERWISE, TO NOTES.

*5
*10

*14

Reissue of Patent — continued. taqk kef-

duty of Commissioner to grant 135 6, 7

may be had on patent, extended by Congress 135 8

cannot embrace a dilTurent subject-matter 135 9

when assif^nee and patentee should join as to 136 6 3

licensee cannot have 136 b 4

as to wliat conclusive 137 5

fees on applications for 134 *1^3

fees on applications for, increased 158

fees on api)lication3 for, confirmed 202

Report of Patent Office —

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 114 *6

to be accompanied by drawings and specimens ... . 114 *G
description in such that ordinary mechanics can un-
derstand it 117 hi, 2

no description except of record 117 h 3

need not describe operation of known machinery ... 1 1 8 5

objects of description 117 hi

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 5-1

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 SECTION'S ; OTHEBWISE, TO KOTES.

States, powers of as to Patents— continued. '*■<>* ««'•

wlien may restrain nso of patents 10 7

may lax patent property 10 8

action of, must be in harmony with power of Congress 10 3
action of, inoperative, if conflicts with power of Con-
gress 10 6

"WiinDUAWAi, OF Patevt Fee —

wiien aliowed. and in what proportion 1 20 '7

right of extended to foreigners 163 •l2

right of prohibited as to applications subsequent to

March2. 18(J1 201 *9

WlTKE.SSES IS MaPTEIIS BEFOIIE PaTENT OFFICE —

may bo compelled to testify 107 •!

penalty for refusing 107 *1

not required to attend more tlian forty miles from

where served 197 *l

not comi>olled to disclose any invention made or

owned by him 107 *l

entitled to foia for attendam-o l'J7 *1

Writ of Kriuua in Patent .\cnoNs —

lies as from judgments in oilier cases M7 *17

lies in uU cases, without regard to sum or value in

controver.ny 196

INDEX TO LAWS PRIOR TO ACT OP 1836.

BpiaPicATioH or Patent —

what is set forth PO *2

what is set forth 87 *3

States —

patents granted by, surrender of 92 *7

Writ or Kiinon in Patent Cases — ,

when will lie 101

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