Patent extracts from Journal of the Franklin Institute (1828-1837)
Journal of the Franklin Institute, Nov 1828, pp 331-338
Numerous applications are made at the Patent Office for information respecting the mode of taking out patents, and the tenure by which they are held; to answer these inquiries the subjoined directions have been drawn up and printed for distribution. The points which have been noticed, are those to which these inquiries ordinarily relate; and it will be seen by those who have been attentive readers of this Journal, that for much of the information given, the editor is indebted to the essays on the patent laws, written by his friend P.A. Browne, Esq.; it is indeed from an attentive study of these excellent essays, that he has derived a large portion of the knowledge which he possesses of the actual operation of the patent laws of this country, and of England.
Information to Persons applying for Patents, or transacting other business at the Patent Office
DEPARTMENT OF STATE -- PATENT OFFICE
The Acts of Congress which relate particularly to the granting of Patents for inventions and improvements are two in number; the first was passed February 21, 1793; and the second, on the 17th of April, 1800.
The persons who have a right to take out patents, are all citizens of the United States; and aliens who have resided therein for two years. In other cases they can be obtained only by a special act of the national legislature.
Joint inventors may take out a joint patent, and where two or more persons have concurred in perfecting any invention or discovery, it would seem necessary that they should also concur in taking out a patent, as neither of them can justly claim to be the sole inventor.
In case of the decease of an inventor, who has not taken out a patent for his invention, it may be obtained by "the legal representatives 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." "And when application for patent shall be made by such legal representatives, the oath or affirmation." etc. "shall be so varied as to be applicable to them." (Act of 1800, sec. 2)
The term for which a patent is granted, is fourteen years; a patent cannot be renewed at the expiration of its term, excepting by a special act of Congress.
The things for which a patent may be obtained, are, "any new and useful art, machine, manufacture, or composition of matter, or any new and useful improvement on any art, machine, manufacture, or composition of matter, not known or used before the application." (Act of 1793, sec. 1.)
The thing patented must be new. "Every inventor before he can receive a patent, shall swear, or affirm, that he does verily believe that he is the true inventor, or discoverer of the art, machine, or improvement, for which he solicits a patent." (Act of 1793, sec 3) In the case of a resident alien, it is required, that he declare on oath, or affirmation, in addition to what is required from a citizen, "that the same hath not, to the best of his or her knowledge or belief, been known or used in this or in any foreign country." (Act of 1800, sec. 1.) It thus appears that an alien is restricted from taking out a patent although he may be "the true and original inventor or discoverer," provided the thing has "been known, or used, in this or any foreign country."
ON THE FORMS, AND MANNER OF PROCEDURE, NECESSARY IN APPLYING FOR A PATENT
The method of applying for a patent is by petition, addressed to the Secretary of State, which is usually in the following form:
To A.B., Secretary of State of the United States
The petition of C.D. of -----, in the county of -----, and state of ------, respectfully represents --
That your petitioner has invented a new and useful improvement in [the machine for cutting and heading nails at one operation,] which has not been heretofore used or known, the advantages of which he is desirous of securing to himself and his legal representatives; he therefore prays that letters patent of the United States may be issued, granting unto your petitioner, his heirs, administrators, or assigns, the full and exclusive right of making, constructing, using, and vending to others to be used, his said improvement, art, invention, machine, manufacture, or composition of matter, etc. agreeably to the acts of Congress in such case made and provided; your petitioner having paid thirty dollars into the treasury of the United States, and complied with other provisions of the said acts.
THE DESCRIPTION OR SPECIFICATION
Accompanying the petition there must be a description, or, as it is usually termed, a specification of the thing intended to be patented; the words of the law are as follows, "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 fully explain the principle, and the several modes in which he has contemplated the application of that principle, or character, by which it may be distinguished from other inventions." (Act of 1793, sec. 3.)
The following form may be used for the preamble of the description, or specification:
To all to whom these presents shall come:
Be it known, that I, C.D., of ----, in the county of ----, and state of ----, have invented a new and useful improvement in [the machine for cutting and heading nails at one operation,] and that the following is a full and exact description of the construction and operation of the said machine, as invented or improved by me.
Here follows the description of "the art, machine, manufacture, or composition of matter." It is scarcely necessary to observe, that the phraseology of the specification must be such as to correspond with the nature of the thing patented, whether it be an art, machine, or composition of matter; by which last term is intended, what is usually called a compound, the recipe for which is to be given in the specification.
The necessity of the most particular attention to the requirements of the law, in drawing up the specification, cannot be too forcibly urged upon those who apply for patents. A number of those which have undergone judicial investigation, have been vacated in consequence of some defect in the matter or form of this instrument; it is, in fact, upon the averments of the specification that the validity of the patent must, in almost every instance, be decided. Many specifications which are deposited in this office, evince not only an ignorance of the laws regulating the granting of patents, and the decisions which have taken place under them, but also manifest a deficiency of that knowledge in mechanics, and the arts, which is necessary to an accurate and clear description of a machine, or process, and without which a patent must be evidently insecure; all that can be now offered, are a few directions embracing those points which appear to be of the most importance.
A patent is to be considered as a contract between the patentee, and the public; the former is to make known in full, clear, and exact terms, the nature of his invention, or discovery, so as to enable a person skilled in the art, to practise it, from this description; the latter, on condition of this being done, secures to the patentee, the exclusive right to use and dispose of his invention or discovery, for the term of fourteen years, in consideration of which it is afterwards to become public property. The necessity, therefore, of observing the following rules will be apparent.
In making the description, no part of the invention may be omitted, the whole must be described.
The whole process is to be made known; a less perfect mode of proceeding must not be inserted whilst a more perfect one is known to, and practised by, the patentee.
It is not sufficient, that the whole machine, process, or compound be given; if there be added any part, or ingredient, calculated to defeat the process, and intended to deceive the public, the patent is not good.
No more must be claimed in the patent, than what is new, and is the invention, or discovery, of the patentee.
Many patents have been vacated, in consequence of inattention to this last rule. In the specification it is perfectly proper to describe an entire machine, although most parts of it may have been long known and used, as otherwise, it may be difficult to make known the improvements; but after doing this, the patentee should distinctly set forth what he claims as new; and this is best done in a separate paragraph, at the end of the specification; which may commence in a form something like the following:
What I claim as new, and as my own invention, discovery, in the above described machine [art, manufacture, or composition of matter,] and for the use of which I ask an exclusive privilege, is etc. etc.
Where the machine or instrument is old, but is applied to an entirely new purpose, this fact must be stated; as the patent in the case cannot be for the instrument, but must be for the application of it only.
Where a patent is taken for an improvement upon a machine previously patented by some other person, the right to use the original invention must be obtained from the first patentee; nor can he use the improvement without the consent of the improver.
"And be it further enacted, That any person who shall have discovered an improvement in the principle of any machine, or in the process of any composition of matter, which shall have been patented, and shall have obtained a patent for such improvement, he shall not be at liberty to make use of, or vend, the original discovery, nor shall the first inventor be at liberty to use the improvement; and it is hereby enacted and declared, that simply changing the form or proportions of any machine, or composition of matter, in any degree, shall not be deemed a discovery." (Act of 1793, sec. 2)
When an inventor obtains a patent for an improvement upon an article previously patented by himself, the right to the first article, (a machine for example) will become public at the end of the term for which the first patent was taken. The improvement cannot have the effect of renewing the original grant.
The specification must be signed by the applicant, in the presence of two subscribing witnesses.
THE OATH OR AFFIRMATION
Subjoined to the specification, there must be an oath, or affirmation, administered by some duly qualified person. This, when the applicant is a citizen, may be in the following form:
County of -------- )
State of --------- )
On this ---- day of ---- , 18--, before the subscriber, a justice of the peace, in and for the said county, personally appeared the aforenamed C.D. and made solemn oath [or affirmation] according to law, that he verily believes himself to be the true and original inventor, or discoverer, of the machine (art, invention, or improvement, composition of matter, etc.) above specified and described for [cutting and heading nails at one operation;] and that he is a citizen of the United States.
------ -------- , Just. Peace
If not a citizen (or citizens,) to the oath or affirmation that he verily believes himself to be the true and original inventor or discoverer of the machine, etc., the following addition must be made: "and that the same hath not, to the best of his [or her] knowledge or belief, been known or used either in this or in any foreign country; and that he [or she] hath resided in the United States for two years."
Every application for a patent will thus consist of three distinct instruments of writing: the petition, the specification, and the oath or affirmation. The petition ought to state in clear, but concise terms, the nature, or object of the improvement, etc. for which a patent is claimed; in the specification the invention or discovery should be fully and completely described; and this, in its words and tenor, should agree with the object concisely stated in the petition; and the oath or affirmation ought also to correspond with the preceding instruments.
OF DRAWINGS, MODELS, AND SPECIMENS OF INGREDIENTS
The law declares that the patentee "shall accompany the whole with drawings, and written references, where the nature of the case admits of drawings." (Act of 1793, sec. 3.) Great difficulty has been sometimes experienced in preparing specifications, from a prevailing idea, that it is necessary to describe a machine in words, without any reference being made to the drawing, in the body of the instrument. Neither the words of the law, or the practice of the office, lend any aid to this opinion. References to the drawing may be made throughout, and in most instances the description may be much shortened by so doing; observing that whenever references to the drawings are made in the specification, two copies of the drawings must be forwarded, one of which will be returned, attached to the patent, and the other retained in this office.
The drawings ought, in general, to be in perspective; and these should be accompanied by representations in section, or in detail, or such parts as may not otherwise be clearly understood.
They should be well executed, and rarely need exceed the size of a page of letter paper.
A model will, hereafter, be required in all cases where it is believed that the nature of the machine will be more clearly shown by it, than by drawings alone. The law says, "and such inventor shall moreover deliver a model of his machine, provided the Secretary shall deem such model to be necessary." (Act of 1793, sec. 3.) These models should be neatly made, and as small as a distinct representation will admit; they ought to have a permanent label affixed to them, by engraving, painting, or otherwise. They will be carefully kept, for the advantage of the patentee, and the information of the public.
When the invention is a composition of matter, the law requires that specimens of the ingredients shall be deposited; the words are, "or with specimens of the ingredients, and of the composition of matter, sufficient in quantity for the purpose of experiment, where the invention is a composition of matter." (Act of 1793, sec. 3.)
OF INTERFERING APPLICATIONS
Requests are frequently sent to this office, that patents may not be granted, or that, in certain cases, they may be delayed; these requests are founded in a very prevailing, but erroneous opinion, that there is such a judicial or discretionary power, vested in this department. In the United States, the patent is a constitutional right, which the citizen, or the qualified alien, may demand, and which the officers of government have no power to withhold. Should a patent issue to an individual today, another person who shall have complied with all the requirements of the law, may tomorrow, obtain a patent for the same thing. The validity, in either case, is a question for a court and jury to decide. The patent secures to the patentee, the exclusive right to his own invention, or discovery; but it confers no right to the thing patented, where he is unable to sustain the allegation, "that he has invented a new and useful art, machine, manufacture, or composition of matter;" "or a new and useful improvement," etc. (Act of 1793, sec. 1.)
When there are two applicants at the same time, for a similar patent, the law has provided for the appointment of three arbitrators, one by each party, and one by the Secretary of State. Where there are more than two applicants, and they do not concur in the appointment of arbitrators, the whole may be appointed by the Secretary of State, and their award is "final as respects the granting of the patent." (Act of 1793, sec. 9.) This, however, does not render the patent valid, as the question of its validity may afterwards be examined in a court of law.
In order to justify a reference, it has been determined, that each party must have complied with all the legal requirements; that it, they must each have paid thirty dollars into the treasury, and their papers have been regularly filed. As this rarely occurs, the remedy sought, is, in general, that pointed out in the 10th sec. of the Act of 1793, which provides, that "within three years after issuing the patent upon an oath or affirmation being made before the judge of the district court, where the patentee, his executors, administrators, or assigns, reside, that the patent was obtained surreptitiously, or upon false suggestion, the court, upon motion made, if the matter alleged appears to be sufficient, may grant rule to show cause why process shall not issue to repeal the patent."
FEES PAYABLE IN THE PATENT OFFICE
The first step, in applying for a patent, is the payment of thirty dollars; "every inventor, before he presents his petition to the Secretary of State, signifying his desire of obtaining a patent, shall pay into the Treasury, $30, and the money thus paid shall be in full for the sundry services to be performed in the Office of the Secretary of State." (Sec. 11, Law of 1793.)
For copies of patents, or parts thereof, there is a charge of 20 cents for every 100 words; and the legal allowance for copying a drawing, is $2. The actual charge is frequently less than this, but in many instances, the drawings are so complex that they cannot be executed for this sum.
The average expense of recording a transfer is about one dollar; the fees being the same as for copies of patents.
For certified copies of patents there is an extra charge of 25 cents, but these are furnished in litigated cases only, to be used as evidence. All payments must be made previously to the deliver of the papers to the applicant.
OF A CAVEAT
Caveats are not known in law. There is a prevalent, but erroneous idea, that a caveat may be entered, which will secure the right for a certain time. It is the practice of the Office to put on file, such accounts of inventions or discoveries, as may be forwarded for that purpose; -- these are not exhibited to others, but may be used as evidence when required by the depositor. It is also the practice to inform him, should a similar application be made. This, however, is not to be expected, excepting in recent cases, as such descriptions are not recorded, and the number on file renders a general examination impracticable.
TRANSFER OF A PATENTEE'S RIGHT
An inventor may transfer his right before a patent has issued, and the assignee may take out a patent; or he may obtain his patent, and afterwards assign it. The assignment, in either case, must be recorded in the Patent Office. (Act of 1793, sec. 4.)
Those applicants for patents who are desirous of having them issue immediately, may have this done by sending on two complete sets of papers, neatly written; in this case, one copy of the specification should be upon parchment, of the size of foolscap paper, opened out; or it may be written upon such paper, of a strong texture.
All communications to, and from, the Superintendent of the Patent Office are free of postage; the petition to the Secretary of State; the fees to be paid into the Treasury; and all other matters on the subject of patents, may be addressed, directly, to this office; and all business relating to patents, may, in general, be as well done by writing, as by a journey to Washington.
When models are demanded, a reasonable time for forwarding them, is allowed to applicants who live in remote situations, and the patent is issued, upon a bond being given providing that the model shall be delivered at the office within a time specified.
Those who are unable to obtain good drawings at home, may have them executed at Washington, by persons unconnected with the office. In some cases, a rough sketch, and in all, a good model, will serve as a guide. Care will be taken that the charges shall be moderate.
Thomas P. Jones, Superintendent
From Journal of the Franklin Institute, Dec 1834, pages 373-380
Information to persons having business to transact at the Patent Office
Department of State
September 30th, 1834
The Acts of Congress of a general nature which relate to patents for inventions and improvements in the useful arts, are those of February 21st 1793, April 17th 1800, February 15th 1819, July 3 and July 13th 1832.
Patents are granted for any new and useful art, machine, manufacture or any new and useful improvement in any art, machine, manufacture, or composition of matter, not known or used before the application (Act of 1793, sec 1.).
The term for which a patent is granted is fourteen years. A patent cannot be prolonged or renewed beyond that term, except by a special act of Congress.
Patents may be granted to citizens of the United States (Act of 1793, sec 1) to aliens who shall have resided therein for two years (Act of 1800, sec 1) and to aliens "who, at the time of petitioning for a patent, shall be resident in the United States, and shall have declared their intention, according to law, to become citizens thereof" (Act of July 13th, 1832, sec 1).
A Patent granted to an alien of the description last mentioned, will be void if the invention is not introduced into public use in the United States within one year, or if for any period of six months after the introduction, it shall not continue to be publicly used and applied in the United States, or if the inventor shall fail to become a citizen of the United States at the earliest period at which he may be entitled. (Act of 13th July 1832).
Joint inventors are entitled to a joint patent, but neither can claim one separately.
A patent obtained surreptitiously, or upon false suggestion, will be set aside upon application to the proper court (Act of 1793, sec 10)
In case of the decease of an inventor before he has obtained a patent for his invention, "the right of applying for and obtaining such a patent shall devolve on the legal representatives of such person, in trust for his devisees in as full an ample manner, and under the same conditions, limitations and restrictions as the same was held or might have been claimed or enjoyed by such person in his or her lifetime, and when application for a patent shall be made by such legal representative, the oath or affirmation shall be so varied as to be applicable to them." (Act of 1800, sec 2)
It shall be lawful for any inventor, his executor or administrator, to assign the title and interest in the said invention, at any time; and the assignee having recorded the said assignment in the office of the Secretary of State, shall thereafter stand in the place of the original inventor, both as to right and responsibility, and so the assignees of assignees to any degree (Act of 1793, sec 4)
On the application for a patent
The application for a patent must be made by petition to the Secretary of State, signifying a desire of obtaining an exclusive property in the invention and praying that a patent may be granted therefore (Act of 1793, sec 1) which petition may be in the following form:
To the Secretary of State of the United States
The petition of --- in the county of --- and state of --- respectfully represents
That your petitioner has invented a new and useful improvement in --- which has not heretofore been known or used, the advantages of which he is desirous of securing to himself and his legal representatives; he therefore prays that letters patent of the United States may be issued, granting unto your petitioner, his heirs administrators or assigns, the full and exclusive right of making constructing using and vending to others to be used his said invention (improvement, art, machine, manufacture or other composition of matter as the case may be) agreeably to the acts of Congress in such case made and provided, your petitioner having paid thirty dollars into the Treasury of the United States, and complied with the other provisions of the said Acts.
(The name of the petitioner to be subscribed)
The Description or Specification
Before the petitioner can receive a patent, "he shall deliver a written description of his invention, and of his 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 of 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 fully explain the principle, and the several modes in which he has contemplated the application of that principle, or character by which it may be distinguished from other inventions." (Act of 1793, sec 3)
The following form may be used for the preamble of the description or specification:
To all to whom these presents shall come: Be it known that I ---, of --- in the county of --- and state of ---, have invented a new and useful --- and that the following is a full and exact description thereof: (Here follows a description of the art, machine, manufacture, or composition of matter)
In drawing up the specification, particular attention must be paid to the requirements of the law. The following general directions upon this subject embrace these points which appear to be most important.
If the specification does not contain the whole truth relative to the discovery or if it contains more than is necessary to produce the desired effect, and if such concealment, or addition shall fully appear to have been made for the purpose of deceiving the public, the patent will be void.
No more must be claimed in the specification than is the invention or discovery of the applicant. Many patents have been vacated in consequence of inattention to this last rule. In many cases it may be proper for the applicant to describe a whole machine in the specification, although parts of it may not have been invented or discovered by him, or may have been previously known, as it might otherwise be difficult to make known the improvements, but after doing this, he should distinctly set forth what he claims as not previously patented. This may be done best in a separate paragraph, at the end of the specification, as follows:
What I claim as my own invention, and not previously known in the above described machine, is etc.. etc.
This is necessary to a compliance with the 3d section of the Act of 1793, which requires the inventor to distinguish his invention from all other things before known.
In regard to improvements, the 2d section of the Act of 1793 provides that "any person who shall have discovered an improvement in the principle of any machine, or in the process of any composition of matter, which shall have been patented, and shall have obtained a patent for such improvement, shall not be at liberty to make, use or vend the original discovery" and that the "first inventor shall not be at liberty to use the improvement;" and the same section declares that "simply changing the form or proportions of any machine, or composition of matter, in any degree, shall not be deemed a discovery." The 3d section requires that the specification, or description, should be signed by the applicant, and attested by two witnesses, and that it should be filed in the office of the Secretary of State.
A defective description or specification may be amended, or it may be withdrawn, and another substituted by the applicant before the issuing of the patent. If, after the issuing of a patent, the inventor shall discover that his specification or description is imperfect, or that he has in any particular omitted to comply with the terms and conditions of the 3d section of the Act of February 21st, 1793, he may surrender such Patent and receive another, agreeably to the 3d section of the Act of July 3d , 1832,which provides that whenever a patent "shall be invalid or inoperative by reason that any of the terms and conditions prescribed in the 3d section of the said first mentioned act" (that of February 21st, 1793) have not, by accident, inadvertence or mistake, and without any fraudulent or deceptive 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 the said inventor, for the same invention for the residue of the period then unexpired, for which the original patent was granted, upon his compliance with the terms and conditions prescribed in the said 3d 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 Executor, administrator, assignee or assignees."
Every inventor if a citizen of the United States, before he can receive a patent, must swear or affirm that he does verily believe that he is the true inventor or discoverer of the art, machine, or improvement for which he solicits a patent, which oath or affirmation may be made before any person authorized to administer oaths. The oath or affirmation may be in the following form:
County of ---) ss
State of --- )
On this --- day of ---, in the year 18--, before the subscriber (insert the official designation of the person administering the oath) personally appeared the within named --- and made solemn oath or affirmation according to law that he verily believes himself to be the true and original inventor of (insert the title of the invention or improvement) and that he is a citizen of the United States.
If the applicant be an alien but shall have resided for two years in the United States the words "and that he is a citizen of the United States" must be omitted and the following substituted:
"And that the same hath not, to the best of his knowledge or belief, been known or used in this or in any foreign country and that he hath resided for two years in the United States."
If the applicant, being an alien, shall not have resided for two years in the United States, but shall have given notice of his intention to become a citizen thereof, instead of the words "that he hath resided two years in the United States" must substitute the following:
"And that he hath given legal notice of his intention to become a citizen of the United States."
When application for a patent is made by the legal representative of a deceased inventor, the oath or affirmation is to be varied as to be applicable to them. (Act of 1800, sec 2)
Of drawings, models and specimens of ingredients
The law requires "that the applicant for a patent shall accompany" his "application, with drawings and written references where the nature of the case admits of drawings." (Act of 1793, sec 3)
These drawings should be according to the rules of perspective, and neatly executed, and such parts as cannot be shown in perspective should, if important be represented in section or detail. When the specification refers to the drawings, duplicates of them are required. Drawings are necessary even though a model be sent.
Where the application is for a Patent for a machine, the law requires that the inventor shall moreover deliver a model of his machine, provided the Secretary shall deem such model to be necessary (Act of 1793, sec 3) By a regulation prescribed by the Secretary of State some years ago, and still continued, a model is required in all cases. The model should be neatly made, and as small as a distinct representation of the machine, and its intended properties will admit, and the name of the inventor should be printed upon or affixed to it, in a durable manner.
Where the invention is of a "composition of matter," the law requires that the application be accompanied "with specimens of the ingredients, and of the composition of matter, sufficient in quantity for the purpose of experiment."
Of interfering applications
"In case of interfering applications, the same shall be submitted to the arbitration of three persons, one of whom shall be chosen by each of the applicants, and the third person shall be appointed by the Secretary of State, and the decision or award of such arbitrators delivered to the Secretary of State, in writing, and subscribed by them, or any of them, shall be final as far as respects the granting of the patent, and if either of the applicants shall refuse or fail to choose an arbitrator, the patent shall issue to the opposite party. And where there shall be more than two interfering applications, and the parties applying shall not unite in appointing three arbitrators, it shall be in the power of the Secretary of State to appoint three arbitrators for the purpose. (Act of 1793, sec 9)
Before an application can be referred, the applicant must have done all which the law requires him to do previously to issuing of a patent.
Fees payable in the Patent Office
"Every inventor before he presents his petition to the Secretary of State signifying his desire of obtaining a patent, shall pay into the Treasury thirty dollars, and the money thus paid shall be in full for the sundry services to be performed in the office of the Secretary of State. (Act of 1793, sec 11)
This requirement of the law will be complied with by a payment made to the Treasurer of the United States at Washington or to his credit at any one of the selected deposite banks. In either case duplicate receipts must be taken, stating by whom the payment is made, and for what object, one of which receipts must accompany the petition.
The practice which has heretofore existed in some cases, of sending the money to the Secretary of State, or the Superintendent, is not in conformity with the law, and is to be discontinued.
"For every copy which may be required 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." (Act of 1793, sec 11)
For authenticating a copy of any paper under the seal of the Department, a fee of twenty five cents is required by law to be paid. The recording of transfers is charged at the same rate with the copying of Patents.
The fee for copies of patents and of papers or drawings relating to them, and for recording transfers must be paid at the time the copying or recording is ordered.
Of the renewal of patents
The 2d section of the Act of July 3, 1822 provides "that application to Congress to prolong or renew the term of a patent, shall be made before its expiration, and shall be notified at least once a month for three months, before its presentation, in two newspapers in which the laws of the United States shall be published in the state or territory in which the patentee shall reside. The petition 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 expenditure of the patentee so as to exhibit the profit or loss arising there from."
Caveats are not recognized by the patent laws of the United States. But papers containing descriptions of discoveries or inventions claimed as new, may be filed in the Office at any time, before an application for a patent is made. They will be so far useful to show subsequent applicants whether they have been anticipated in their inventions. These papers, when filed are open to the inspection of the public in the same manner as those relating to patents.
Patents are issued in the order of time in which the proper documents are received at the Patent Office, but this rule applies only to cases in which the documents are complete.
Communications to and from the Superintendent of the Patent Office are free of postage, and the petition to the Secretary of State with the accompanying papers, may be transmitted directly to the Superintendent.
Secretary of State
Notice to persons having business with the Patent Office
The Patent Law directs that "every inventor before he presents his petition to the Secretary of State signifying his desire of obtaining a patent, shall pay into the Treasury thirty dollars; and shall take duplicate receipts, one of which receipts he shall deliver to the Secretary of State when he presents his petition."
It has been the practice, in many cases, to send the money above mentioned to the Secretary of State or to the Superintendent of the Patent Office, but in future all applications for patents will conform to the directions of the law on the subject and make the required payments into the Treasury.
It will be a compliance with the law, in this respect, to pay the money to the Treasurer of the United States at Washington, or to his credit at any one of the selected deposit banks. The receipts should state by whom the payment is made and for what object.
It has also been the practice to transmit to the Patent Office papers describing new inventions and improvements, which the inventors have not yet completed, or for which they are not prepared to take out patents, and it has been erroneously supposed by those inventors that by filing such papers in the office, they would prevent any other person from obtaining patents for the like inventions or improvements. Sometimes the persons sending such papers have claimed to have them received as their private property and as not liable to be seen by any one except with their consent.
Caveats not being recognized by the present laws of the United States no papers will hereupon be received under such a claim, and those which have been heretofore deposited, if permitted to remain, will be open to public inspection. Persons, therefore, who have transmitted papers to the Patent Office papers relating to inventions or improvements, unaccompanied by applications for patents for the same which papers they claim as their private property, and as not subject to be seen by others, are requested to withdraw them.
Secretary of State
Department of State, Oct 3, 1834
Notice respecting the foregoing Information to Persons applying for Patents -- by the Editor
In the number of this Journal for November, 1828, vol 2, new series, p 332, we published the circular of the Patent Office, giving "Information to persons applying for Patents, or transacting other business at the Patent Office.["] The information then given has been re-modeled by the Secretary of State, as will be seen in the preceding articles. This had become necessary in consequence of the passage of certain laws upon the subject, since that circular was issued, and also in consequence of some alteration directed to be made in the manner of transacting the business of the office, particularly as respects the payment of the Patent fee, and the disposition of papers lodged in the office by inventors previously to their being prepared to obtain patents, and usually denominated Caveats. Such papers were formerly kept private upon request being made to that effect; they are henceforth, if placed on file, to be open to the inspection of those who wish to examine them, and will, therefore, be considered in the nature of public notices that the thing described has been invented by the inventor named in them.
The change which has been made in the manner of paying the Patent fee, in order to make it conform with the legal provisions upon this subject, will be attended with considerable inconvenience to persons residing, at a distance from any Deposite Bank. Several persons have, in consequence, transmitted the money to the Editor, for the purpose of having it paid into the Treasury of the United States; and he will very cheerfully transact this business for any of his correspondents, provided their letters come free of postage, and the money is such as will be taken in the Bank of the Metropolis, in Washington. As no fee will be charged for this, the whole transaction must be at the risk of the person remitting the money; the offer is made for the accommodation of those in whose pursuits the editor feels an interest, and is therefore willing, at the expense of a little trouble to himself, to relieve them from the difficulty above noticed, his residence in Washington, connexion with, and proximity to, the public offices enabling him to do so.
From Journal of the Franklin Institute, August 1830, p 113-117
Some observations on the Patent Laws of the United States intended to call public attention to that important subject. Addressed to the Managers of the Franklin Institute
I have, gentlemen, noticed in the public prints, the appointment of a committee on the part of the Franklin Institute, to enter upon inquiries respecting the causes which have produced so many steam boat explosions and, if possible to discover a remedy by which their future occurrence may be prevented, and was much gratified to find this inquiry undertaken by an institution expressly organized for the purpose of improving the mechanic arts, and composed of gentlemen well qualified for the undertaking; in such hands there can be little doubt that a remedy as effectual as the nature of the case will admit of, will be discovered.
The writer of the present communication is anxious to call the attention of the Institute to another subject which, so far as property is concerned, he believes to be of equal importance to the community, and equally within the purview of your society. He alludes to the patent laws, the glaring defects of which are proverbial, as they are neither calculated to stimulate, or to protect the inventor. They appear not to be well understood, even by the best counsel, and are so differently interpreted by the courts, that it is next to impossible for a specification of a patent to secure any right to the proprietor of a valuable invention; it consequently so happens that men of genius and talents aware of these facts, feel no disposition to risk their time and capital in making new or useful discoveries, or even putting those into operation which they have discovered. The expense usually attending the bringing them to perfection is very great, as numerous trials, and frequently the erection of expensive machinery are requisite, and, if at last successful, the invention is open to infringement as soon as it shall be known to afford remuneration to the investor; and the pirate, availing himself of it, proceeds to work with every advantage, without previous cost, loss of time, or even a claim to ingenuity. It is, therefore, the opinion of every man informed upon the subject, that the patent laws require to be revised and corrected, if not entirely re-modelled. A committee appointed by the Franklin Institute, could not, it is believed, be better employed than in digesting some mode of securing to the inventive mechanic his just reward. I know not where such a measure could originate with equal advantage to the community at large, or where it can be expected to be better understood. Congress, it cannot be doubted, would listen to, and be ready to act upon, any well digested plan that might be presented to them which should appear well calculated to secure the important ends for which the patent law was originally passed. I will call to your recollection a fact which is well known to you, and appears to me illustrative of the opinion which I would enforce. I allude to the premium offered by the managers, or superintendents, of the rail-road constructing between Manchester and Liverpool, as it will at once demonstrate the advantages which are attainable when a certainty of indemnity is presented to those who may succeed in perfecting a valuable invention. Five hundred pounds were offered for a certain purpose, and the result produced by it was not only unexpected in regard to its value, but wonderful and extraordinary in itself as a proof of science and ingenuity. What was the charm which could produce so sudden an effect? did not the patent laws of England, like our own, hold out the prospect of a reward much above five hundred pounds? they did, but the uncertainty involved in their construction destroys them as a guarantee to the mechanic; they are, like our own, indefinite. The premium was otherwise, it was comprehensive and comprehended. It was a happy thought in the person who first suggested the experiment; he was, no doubt, well acquainted with the springs of human action, and the history of man. We are not, however, to suppose that it was the bounty alone which produced the effect, for it was trifling in comparison to the expenses to be incurred. It was the certainty that if the party succeeded, he would be remunerated by the extensive use of the machinery, and a claim secured to all the fame and reputation which were sure to follow in the train, as they did not rest upon the frail tenure of the patent laws alone. If, however, they were such as they ought to be, the bona fide inventor, or discoverer, would require no adventitious reward; the fruit of his own talents and industry would satisfy him were these secured to him.
Every inventor of this description would be willing to submit his claim to a jury of scientific men, who were at the same time practically acquainted with the mechanical and chemical arts, and thus competent to the undertaking. They having decided on the merits and originality of an invention, should pronounce judgment accordingly, and the claim be made to rest upon it. In this way there would be every thing to hope, and little to fear; instead of this, however, we are referred to laws which are acknowledged by the judges themselves to be so framed as to be quite indefinite; and liable to be differently explained by different persons. It is notorious that the judges have decided the same points in a way the very opposite of each other, relying upon antiquated precedents made to operate indifferent ways, according to the sapient reasonings which have been laid down by men perfectly destitute of all mechanical knowledge. The merits of an invention, in all cases, should be decided upon the principles of equity.
One lawyer tells you that an effect cannot be patented, because some great counsellor has held that opinion, or that some judge has pronounced upon it. Let us try this maxim by the rule of common sense. If an effect be produced which is new, and of great public value, and perhaps discovered at great expense to the inventor, why shall it not become his property, even though the materials employed, and the method of operation, have both been long known and in use, but not so combined and employed as to produce the same effect. But one judge invalidates, or negatives one thing, and another a second, so that an inventor has scarcely a tenter hook left him upon which to hang a single assurance of protection. It has been repeatedly stated that if a patentee discovers an error in his specification, he may amend it by cancelling his patent, that is, by surrendering it and petitioning the secretary of state to issue it anew. Such is the doctrine of some of the judges presiding in the United States courts; and many patentees under this impression, and trusting to such advice, have surrendered their rights, and paid an additional thirty dollars into the treasury, to be better secured; but will they believe that other judges equally eminent for their legal knowledge, have declared that such patents are void on the face of them? It was so declared not many days ago in the District Court of the United States in the city of New York; but, said the judge, you can appeal to the Supreme Court, and in the mean time you may proceed to try the merits of your claim for damages. The case was opened, and a violation of the patent proved. It was also held that the patentee was the original inventor. It was also in evidence that whilst the plaintiff, who was an alien, was waiting for the completion of the two years, the time prescribed by law before a patent could be granted to him, his invention was betrayed, for a bribe of ten guineas, in a foreign country, by which it appeared that the public became possessed of it, and this was held to be good reason for voiding the patent; neglect was charged to the plaintiff in omitting to take out his patent sooner than he did, although it was proved that it was during the period when he did not possess that privilege, that it was betrayed.
A good invention is, to the inventor, frequently a bill of expense only, since it may be stolen from him, or violated with impunity. If he make a change in any of the parts connected with his machine, or improvement, although such change shall enhance, materially, the value of it, without at all altering its principle, this is deemed sufficient to void it, on the ground that he has himself abandoned it, and introduced changes not mentioned or contemplated in the specification; or it will be said that he has secreted from the public the best method within his knowledge, and therefore has failed in complying with the law; now though this sort of argument might be good in respect to certain compounds, or quack medicines, good or bad, and which the public have no means of analyzing, yet it cannot be applied to the mechanic arts; there is no secret mystery in a place of mechanism; no magic power can give it motion, but those laws which govern natural causes, and produce corresponding effects; and yet this jargon is held and applied indiscriminately in all cases involving rights, secured, as it is termed, by the patent laws. It sometimes happens that an invention is of so singular a nature that the most learned lawyers have been heard to say that it was in particular cases impossible to make a specification which they could not themselves destroy. The lawyers say that two or more parts of an invention must be new, when it may really happen that a valuable invention may consist of a single ingredient matter or thing; sometimes it may consist of one or more parts which are really old, but by certain modifications they have been applied to a use entirely new, and have become extremely valuable, but you are told that merely varying the shape of a thing will not be good for a patent. In short it is impossible in the greater number of cases, owing to the uncertain phraseology of the laws, and the various opinions of the judges, as to their meaning, to secure any property under them; and it is almost impossible, where the rights of an inventor are violated, for him to obtain an injunction to restrain the violating party from further proceedings. How stands the matter in regard to all other property? is it not necessary for a person claiming a right to property in the possession of another, to sue for it, and to procure a verdict before he can take possession of it? does justice distinguish betwixt property consisting in houses and lands and that which is acquired at greater risk and toil, and by the exercise of genius and talent? If there is any distinction to be made, it should be reversed, because a useful invention is valuable to the whole community.
From these and other considerations, it is, in common with many others, the opinion of the author of the foregoing remarks, that something should be done to effect a total change in the patent laws, so as to give to a most useful class of men, that security which was no doubt intended by the framers of the existing laws, but which from various causes have been found totally inapplicable, failing to effect the purpose. It is, therefore, believed that if the Managers of the Franklin Institute would undertake to investigate and point out the inconveniences of the present laws, and suggest such alterations and revisions as would render them available to the inventor, they would perform a service invaluable to the community at large, and one which would be honourable to our national character.
I am, with great respect, etc., etc.
A Friend of the Mechanic Arts
Remarks by the Editor -- With the main proposition of the writer of the foregoing observations we agree perfectly, namely, that the law for granting patents for useful inventions is defective, and requires revision. While, however, we admit this most fully, we do not believe it to be possible, or were it possible that it would be proper, to enact such a law as would be satisfactory to patentees. We are convinced from long experience, and careful observation, that the complaint about not having their rights defended, is made, in a very large majority of cases, by those who have no rights, of the kind in question, to defend. Every man when he has obtained a patent, feels as though, by the payment of the fee, he had acquired a right to the thing patented, and that this right is violated if the law does not protect him. Now this is altogether a false view of the question. The greater number of patents are obtained for things which are either old or frivolous, and have no claim, therefore, to respect; almost every one will admit this to be true in the abstract, but no one in his own case; the public, however, must be the arbiter, and the hopes which had their foundation in error be disappointed.
The patent is not intended to confer any right, but to confirm those already existing. A man has discovered, or invented, something new, and he has a natural and inherent right to it, he may in many cases practice the thing secretly, and in all he may suppress it; the idea is his own, and no man has a right to extort it from him. That this kind of property may become available both to the inventor and to the public, a law has been passed giving to him an exclusive right for fourteen years upon condition that it become public property at the end of that time. From the very nature of the case the allegations upon which a patent issues must be ex parte. The applicant states that he has effected a certain object, and that it is new; and the patent is then granted. What could be more monstrously unjust than that such a claim should not be liable to be traversed. In most cases the patentee is deceived, or is a deceiver, and the public is not, in either, to be made the victim. If I enter a tract of new land, and obtain a patent for it in the proper office, and put my patent upon record, will this make the land mine, and will the defence of my claim be a public duty because I have paid the fee? certainly not; it I have lapped upon, or taken another man's property, or that of which the public had no right to dispose, neither my patent nor its record will do me any good.
The project of a Board of men of practical science, is a favourite one, and has been frequently advocated; when the idea is pursued, however, we meet with difficulties upon the very threshold of the inquiry. The main object proposed by the establishment of such a Board, is the final security of the patentee; but it must be recollected that there is another important interest to defend, that of the public, and this would be felt by such a Board, by the discomfiture of a host of applicants, who, if justly dealt by, would complain more loudly than they now do. How will you contrive to make such a Board infallible? and if you cannot make it so, will you yet allow it to pronounce final decrees? to declare that the invention of one man is old, and that of another new? Before this is done we must repeal our free constitution, and abrogate the right of trial by jury.
These are but hints, and we have not time for more, nor indeed do we wish to enter the lists at present, although we are anxious that the question should be fully discussed. It may be imagined by some who read these remarks, that we are lukewarm on the subject of revising the patent law; such, however, is not the case, and it may hereafter appear that it is one in which we have engaged with untiring zeal.
Should our friends write upon this subject, as we hope they will, if they wish their essays to be read, they should be brief. Three or four pages at a time are as many as can with propriety be devoted to such a question.
Journal of the Franklin Institute, Nov 1837, pages 326-328
THE PATENT OFFICE
The notices of Patents, granted by the United States, have been omitted since the destruction of the Patent Office, with all its Records and Models, on the 15th of December last; these notices we now resume, and on doing this, the Editor offers the following remarks and explanations, upon certain points, which appear to him to be of interest to those in any way concerned in patents for useful inventions.
It has long been the practice of the Editor, to delay a particular notice of patented inventions, for several months after the time of their being granted: a course necessary from various considerations, but more particularly for the two following: First, Patents are not granted in foreign countries for inventions, descriptions of which have been previously published; the arrival of this Journal in England, or in France, one day before the sealing of a patent, would destroy the grant, and cause the loss of the large amount of fees paid into the offices. In applying for such patents, there is usually much delay from the want of proper information; and a considerable length of time must necessarily elapse, in the foreign offices, between the times of application for, and that of the sealing a patent. This alone, would be a sufficient reason for the delay; but there is a second of some personal importance, to the Editor himself, as well as to patentees. It is the practice of the Editor, to give his own opinions, freely and fully, respecting the value of inventions, and it is his wish, not to interfere with the interests of the inventor, by forestalling public opinion, before he shall have had time to test the value of his supposed improvements, by a practical test.
Under the operation of the acts of July 4th, 1836, and of the 3rd of March, 1837, by which all former laws relating to patents, were repealed, all applications for patents are subjected to a critical examination in the Patent Office, and if the things claimed, are known to be old, or if that which is proposed to be done, contravenes the established laws of Mechanical and Chemical Philosophy, the patent is refused; subject, however, to an appeal from the decision of the office. Under this law, there are two examiners appointed, of whom the Editor is one, and it will, therefore, be manifest that the tone of his animadversions, must be modified by the existence of these circumstances. Under the official examination, a large class of applications, will be rejected, and never, therefore, meet the public eye; this will be a source of sufficient mortification to those who have dreamed of reaping a golden harvest, without the lash of criticism. It must not be inferred from these remarks, that our list of patents will become a mere detail of approved inventions; the fact will be far otherwise; for although the office is now possessed of judicial power to a certain extent, and can arrest what is old, what is contrary to the laws of nature, and what is deemed altogether trifling, it would be stepping out of the line of its duty, and transcending its legitimate powers, to refuse a patent for an alleged improvement or invention, because the Examiners, or the Commissioner, may believe the thing worthless. They are not to act under the guidance of mere opinion, but must, and ought to, give the sanction of the office in all cases where there is apparent novelty. The utility is a question to be subsequently settled between inventors and the public. Nor is the absolute amount of novelty, a question for this office, as a very large amount of utility, not unfrequently results from a trifling change in the construction of a machine; the duty of the office in this case, is to see that the claim does not embrace more than the invention of the applicant; and, wherever there is a doubt respecting the propriety of rejection, the decision of the office will always will be given in favor of the claimant, who, in such case, has an undoubted right to a final determination of his interests, by a Court and Jury.
The number of patents hereafter issued for quack medicines, will, under the operation of the existing law, be much diminished, and, perhaps, it would be for the public benefit, could they be entirely cut off from the sanction of an exclusive right; but this cannot be done in all cases. Where compounds substantially the same with those known to the practicing Physician are attempted to be patented, they will, of course, be excluded, but they must be granted when the compound appears to possess novelty, and is not manifestly of such a nature as to produce public injury; the Journal, however, will fully make known every recipe for a patent medicine, accompanied by such remarks as appear just and proper.
The enquiry is frequently made, what proportion of the applications, under the present law, are successful? Without taking the trouble to estimate the precise number, it may be stated, that not one third pass as originally presented, a large number being returned for amendment, and modification of the claim; probably about one half of those applied for, are eventually granted.
The next number of the Journal will contain some information respecting the restoration of the records, and models of the office, as it appears that the circular issued upon this subject, has not, generally, been clearly understood.
Journal of the Franklin Institute, Jan 1833, pages 1-5
Abstract of the several acts passed at the last session of Congress relative to Patents for useful Inventions, with remarks thereon. By the Editor.
The following resolution was passed by both houses, and approved by the President, March 7, 1832.
"Resolved, by the Senate and House of Representatives of the United States of America, in Congress assembled. That the Secretary of State,out of the proceeds arising from the fees on patents for useful inventions, discoveries, and improvements, procure the necessary books, stationary, and other accommodations for recording the patents issued, and unrecorded, as well as those hereafter to be issued, and that he employ, and pay at a rate not exceeding twelve and a half cents for every hundred words, so many clerks as may be requisite, with convenient despatch, to record the same." And in a general appropriation bill, approved May 5th, fourteen thousand six hundred and twelve dollars were appropriated to defray the necessary expenses. In compliance with this resolution, a considerable number of extra clerks was appointed, and the specifications, amounting to about five thousand which had never been recorded, are all now on record, in proper books.
The universal impression appears to have been, that the patent law actually required that the specification should, in every case, be copied, and attached to the patent, and that it should also be placed on record in the department of state; under the influence of the practice of the office, and of this general impression, we had repeatedly read the first section of the act of 21st February, 1793, without perceiving, as we think we now do, that such is not the fact. This section provides that after the proper petition has been presented to the Secretary of State. "It shall and may be lawful for the said Secretary to cause letters patent to be made out in the name of the United States, bearing test by the President of the United States, reciting the allegations and suggestions of the said petition, and giving a short description of the said invention or discovery, and thereupon granting," etc. "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 the purpose, in the office of the Secretary of State, and delivered to the patentee, or his order." The third section provides that the person soliciting a patent "shall deliver a written description of his invention," "which description, filed by himself, and attested by two witnesses, shall be filed in the office of the Secretary of State, and certified copies thereof shall be competent evidence in all courts where any matter or thing, touching such rights shall come in question."
It is evident that what the law contemplated, was the inserting in the body of the patent a short description of the invention, and that the patent containing this description should be recorded; the practice, however, is merely to insert in the patent the title of the specification, without any description of the thing patented; and to record the description, but not the patent. We certainly think the practice better than the law, and that the latter ought to be made to conform to the former. This practice probably arose, in the first instance, from the difficulty, and often, in fact, the impossibility, of giving a short description of the thing invented; as the patentee very frequently neglects, or is not able, to give anything of the kind, it is not possible for the office to supply this deficiency, in a specification; it has therefore in all cases been appended to the patent.
By an act of the 19th of May, the patent granted to Jethro Wood, of the state of New York, for improvements in the construction of the plough, dated September 1st, 1819, was extended for the additional term of fourteen years from its expiration in 1833.
The following is "An Act for the relief of Horatio Gates Spafford." "Be it enacted by the Senate and House of Representatives of the United States in Congress assembled, That in issuing letters patent in the usual form to Horatio Gates Spafford, a citizen of the United States, for his alleged discoveries in mechanical philosophy, carried into practical operations by appropriate machinery, it shall be the duty of the Secretary of State, upon application to him, within one year after the passage of this act, to file in the confidential archives of his department, and there preserve in secret, for one year, the descriptions, specifications, and drawings, illustrating the discoveries and inventions aforesaid: and the patent which shall be thus issued, shall have the same force and effect as if conformable in all respects to the provisions of the 'act to promote the progress of the useful arts, and to repeal the act heretofore made for that purpose.'" Approved July 3, 1832.
Since the passing of this act, the individual in whose favour it was enacted, has fallen a victim to the spasmodic cholera; but for this circumstance we should have animadverted very freely upon his pretensions and claims; being in possession of the information which would have enabled us so to do, without violating any confidence, either real or implied, reposed in us. As the matter stands, our remarks on the subject will be brief, but at the same time, believing that it is intended, on the part of his executors, to take advantage of the act for the benefit of the heirs of the patentee, our duty to the public forbids our passing it over unnoticed; as, however, the Congress of the United States has, by the foregoing act, provided for the sealing of the specification for one year, we do not think it proper to describe the mode in which the patentee pretended to have accomplished his object.
The thing proposed to be done is one which has been very frequently attempted, but which has always failed; the following is an outline of it -- the descent, to a certain distance, of a given weight, is to raise a greater weight, say twenty per cent more, to the same height, in the same time; (water being the agent in the present case.) This is a somewhat startling proposition, and to the few who are well grounded in the principles of mechanics, will do something more than throw doubt upon the whole scheme. The great mass, who are easily deceived by the exhibition of pretended perpetual motions, or who, at least, believe that such a thing may be eventually discovered, would venture their money, in the present instance, with as great a probability of success, as upon any plan likely to be devised for the same purpose; for ourselves, we should be most unwilling to buy a ticket in a lottery, where we believed that all must draw blanks.
The sealing of patents either for a part or for the whole of their term, appears to be, in some cases, very desirable; still there are objections to it which cannot be easily obviated. What one man has invented or discovered, another may likewise invent or discover; and how is an applicant to know that he is not interfering with rights vested in another having a sealed patent? One of the most desirable features in the patent law is an effective caveat, which should allow time for the completion of an invention, and defend the inventor from those prowling, epicurean cannibals who are seeking to live upon the brains of their fellow men. The English have a caveat, but it is worthless; we have none, nor do we believe that there is any where an existing model by which to frame one; The object, however, we consider as of easy attainment.
In the case before us, we can perceive but one motive on the part of the applicant for wishing a sealed patent, as it was not pretended that the time asked for was for the purpose of completing the invention. This is manifest from the provision of the act, that "the descriptions, specifications, and drawings, illustrating the discoveries and inventions," shall be placed on file, at the time when the patent is issued. The motive is indeed set forth in the memorial of the applicant, in which he states that the passing of the act in his favour, would enable him to raise "money power;" or, in other words, would have the effect of inspiring that confidence in the validity of the invention as should induce persons to encourage the thing by investments of money; and such is the necessary effect of the passing of such a law, the public not recollecting, or not being aware, that those who passed the law knew no more than themselves respecting the merits of the proposed invention.
An act, bearing the same date with that last noticed, was passed, directing the issuing of three patents to three foreigners: one to Thomas Knowles, of Manchester, England, for an improvement in cotton spinning; one to James Long, of Greenock, Scotland, for spinning rope yarn and duck twines; and one to William Steel, of Liverpool, England, for an atmospheric reacting steam-engine. The proper models and specifications for obtaining these patents are to be deposited in the patent office within six months from the time of passing the act; and the rights are to cease and determine if the inventions are not introduced into public use within two years, or upon their being discontinued, at any time for the space of six months.
Whilst it is very desirable that special legislation should be avoided as far as consists with justice, and congress have actually, on this principle, rejected many propositions, but these acts leave the door wide open for applications on the part of foreign non-resident inventors, and we shall find that numbers will, in consequence, seek an entrance. Comity, we think, requires that whilst Americans can obtain exclusive rights in foreign countries, foreigners, under proper regulations, should be enabled to obtain patents here; but this, if proper to be done, should be done by a general law, which should place all upon an equal footing. Among other considerations, it seems scarcely fair that whilst an American must pay fifteen hundred dollars for a patent extending over the British empire, and Englishman should obtain the same right in the United States for thirty dollars. Ought not the principles of countervailing duties to govern in this as in some other cases?
Another act, dated the same as the foregoing, entitled "an act concerning patents for useful inventions," provides in the first section for the publication, annually, in two of the newspapers printed in the city of Washington, of a list of all the patents which have expired during the preceding year, with the names of the patentees, alphabetically arranged.
The second section provides that where a patentee intends to apply to congress to prolong, or renew, the term of a patent, he shall give notice of this intention, at least once a month for three months, in two newspapers published in Washington, and in one authorized to publish the laws of the state, or territory, in which the patentee resides. The petitioner is to set forth the grounds of his application, with the evidence thereof, verified upon oath before a judge or justice of the peace; and this is to be accompanied by a statement of the ascertained value of the thing patented, and the amounts of receipts and expenditures which have accrued therefrom.
The third section authorizes the Secretary of State to receive the surrender of a patent, and to grant a new patent upon an amended specification, where, from inadvertence, accident, or mistake, the original specification had been defective.
This provision is in perfect accordance with the decision in the Supreme Court, in the case of E. & H. Raymond versus Grant and Townsend, made previously to the passing of this act, and published in the last volume of this journal, p. 508. It is provided also that the new patent shall be liable to the same objections and defences with the original. And that "no public use or privilege of the invention so patented, derived from or after the grant of the original patent, either under any special licence of the inventor, or without 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."
The last act passed in the session, and dated July 13th, is entitled "an act concerning the issuing of patents to aliens for useful discoveries and inventions." By the act of 1800, aliens who have resided for two years in the United States were allowed to obtain patents: in every session, however, special acts have been passed, enabling such as had resided here for a less period of time, to do the same thing. The present act is intended to embrace such cases, and provides that aliens who have made a legal declaration of their intention to become citizens of the United States, may also obtain patents for their inventions. Should the patentee neglect to introduce the thing patented into public use, for the space of one year after the patent has issued, or should its public use be discontinued for the space of six months, or should the patentee not become a citizen at the earliest period when he is entitled to do so, the patent is to determine, and become void, without the necessity of any legal process to annul, or cancel it.
The foregoing does not repeal the provisions of the act of 1800; those aliens, therefore, who have resided for two years within the United States, stand upon a much better footing than those in whose favour the present act was passed, the special provisos of this act not affecting the former.
There appears to be some incongruity in allowing to the non-resident foreigners, Knowles and others, two years for the introduction of their inventions, whilst those who are residents, and have declared their intention to become citizens of the United States, are restricted to one year; perhaps, however, as the former must act through agents, and reside themselves at a distance, it was thought that more time ought to be allowed to them than to residents.
We hope, at no very distant day, to see the several laws upon this subject combined in one harmonious whole, in which the rights of individual, and those of the public, will be better defined and secured than they now are. The patent laws both of England and France, are under revision; the present advanced state of the arts, the experience which has been obtained respecting the operation of the existing laws, and the opinions and decisions of the courts, may certainly serve as guides in the attempt, and produce better results than could have been obtained under the circumstances which existed when the laws were originally enacted.
Journal of the Franklin Institute, January 1837, pages 22-30
THE PATENT OFFICE
Our readers need not be informed of the great national loss consequent upon the burning of the Patent Office, a circumstance which will materially influence, for a time at least, the contents of this Journal. The editor resides in the vicinity of that office, and his danger from the fire was imminent; but his dwelling, with his books and papers, were preserved, although with some disarrangement of the latter; his papers and notes relating to patents were, however, in a desk in the Patent Office, and of course, shared the general fate of its contents. On the first moment of alarm all access to that office was rendered impracticable from the dense smoke with which its stair case and passages were filled, even before the fire was visible. The monthly list of Patents, with the Editor's remarks, must, at present, be discontinued, but they will be resumed in due season, after the necessary progress has been made in the business of the office. In the meantime a series of specifications of recent Patents, of which the Editor has copies, will, in part, supply the place, and to these will be added a number of English Patents, the publication of which has been deemed of much importance, but has been postponed from want of sufficient room.
The letters of enquiry which the editor has received since the fire, have been numerous, and replies to them have absorbed a large part of his time, profitably, he hopes, to others, although, so far as money is concerned, but little so to himself. But for this, his pen would have been devoted to a notice of some two or three books on hand, and to other matters which he wishes to spread out upon his pages.
The great question now is, what can be done for the restoration of the Patent Office? To this question the best reply that can be offered at the present moment, is contained in the subjoined Report, and Bill; the latter of which will undoubtedly be enacted into a law, with such modification in its provisions as may appear proper upon a due consideration thereof by the National Legislature; and we have but little doubt that in the next number of this journal, we shall be able to present it in the form of a law, as the subject is one which requires, and will command, early attention.
Mr. Ruggles' Report to the Senate, with a Bill
The special committee appointed to examine and report the extent of the loss sustained by the burning of the Patent Office, and to consider whether any or what measures ought to be adopted to repair the loss, and to establish such evidences of property in patented inventions as the destruction of the records and drawings may have rendered necessary for its security, submit the following report:
In examining the subject referred to them, the committee has been deeply impressed with the loss the country has sustained in the destruction, by the fire of the 15th December, of the records, originals, drawings, models, &c. belonging to the Patent Office. They not only embraced the whole history of American invention for nearly half a century, but were the muniments of property of vast amount, secured by law to a great number of individuals both citizens and foreigners, the protection and security of which must now become seriously difficult and precarious.
Everything belonging to the office was destroyed -- nothing was saved. There were one hundred and sixty-eight large folio volumes of records, and twenty-six large portfolios, containing nine thousand drawings, many of which were beautifully executed and very valuable; there were also all the original descriptions and specifications of inventions, in all about ten thousand, besides caveats and many other documents and papers.
There were also two hundred and thirty volumes of books belonging to the Patent Office library, the cost of which was $1,000. Some of these were procured prior to the passage of the act of July 4, 1836, making an appropriation of $1,500 for procuring a library of scientific works. Others were procured subsequently, for which $320 of that appropriation was expended.
The model cases, press and seals, desks, book cases, and other furniture and effects belonging to the office were estimated at $6,600.
The Patent Office contained also the largest and most interesting collection of models in the world. It was an object of just pride to every American able to appreciate its value as an item in the estimate of national character, or the advantages and benefits derivable from high improvements in the useful arts -- a pride which must now stand rebuked by the improvidence which exposed so many memorials and evidences of the superiority of American genius to the destruction which has overtaken them.
The number of models was about seven thousand. Many of them displayed great talent, ingenuity, and mechanical science. The American inventions pertaining to the spinning of cotton and wool and the manufacture of fabrics, in many respects exceed those of any other nation, and reduced so much the expense of manufacture, that the British manufacturers were reluctantly obliged, at the expense of a little national pride, to lay aside their own machinery and adopt our improvements, to prevent our underselling them even in their home market. In this department were the inventions of Browne, Thorpe, Danforth, Couilliard, Calvert, and some others. The beautiful operative model of Wilkinson's machine for manufacturing weavers' reeds by one operation, was considered one of the most ingenious mechanical combinations ever invented. Of this character was Whittemore's celebrated machine for making wool cards. There were several models of valuable improvements in shearing and napping cloth, patented to Swift, Stowell, Dewey, Parsons, Daniels, and others.
In another department were several models of machines for manufacturing cut and wrought nails. The machinery for this purpose, which has reduced so much the price of that important article, was of purely American origin, and was invented by Briggs, Perkins, Reed, Odiorne, and several others.
The models of improvements in grist mills, saw mills, water wheels, &c. were numerous.
The application of steam power to the driving of all kinds of machinery for propelling boats, locomotives, mills, and factories, has brought out a great number of American inventions and improvements, displaying a degree of talent, ingenuity, and science highly creditable to our country. Some of the models in this department very valuable. America claims the honor (contested, indeed, by England) of the first successful attempt to apply the power of steam to the propelling of vessels. The name of Fulton is associated with one of the noblest efforts of genius and science. It has often been regretted that no model was preserved of his steamboat, which was the first to demonstrate the practicability of making steam subservient to the purpose of useful navigation. There was, however, deposited in the Patent Office a volume of drawings elegantly executed by his own hand, delineating the various parts of the machinery he employed, and embracing three beautiful representations of his steamer making its first triumphant struggle against the opposing current of the Hudson. The steamer was represented passing through the Highlands, and at two or three other interesting points on the river, with a beautiful sketching of the surrounding scenery smiling as if it were at the victory which science and art had at last achieved over the power of the winds and the waters, and at the opening era of steam navigation, the benefits of which have since been so widely diffused. It contained also an account of his experiments on the resistance of fluids, and various estimates of the power required to propel vessels of various tonnage and form through the water at greater or less speed. This volume, which should have been preserved among our choicest archives, shared the fate of every thing else in the office. What sum would be too great to be expended in replacing it!
The department of agriculture contained a great number of models of highly useful improvements in the implements of husbandry. The number of inventions which had for their object the advancement of the agricultural interests, was about fifteen hundred; those which pertained to navigation were a little short of a thousand. The inventions and improvements in factory machinery, and in the various manufactures, where upwards of two thousand. In the common mechanical trades, there were as many more. It were vain to attempt to enumerate or classify them within the reasonable space of a report of committee. There was no art or pursuit to which ingenuity and invention had not lent their aid.
That this great national repository should have received so little consideration heretofore as to be left so long exposed to conflagration, which has at last swept every vestige of it from existence, cannot be too deeply deplored. But the reproach does not rest at the door of the present Congress. The act passed at the first session, reorganizing the office, containing many important provisions for its management, and the appropriation for erecting a fireproof building, for the accommodation and preservation of the records, models, &c., which is now under construction, attest the interest inspired and the attention devoted to it, though, unfortunately, too late to rescue it from destruction.
That the benefit of such an institution is limited to the mechanic arts and manufactures, or that it is confined to any particular section of the Union, is an erroneous idea. Its influence is felt in every branch of national industry, and no one section of the country can justly be said to derive less advantage from it than another. The idea is equally erroneous that such institutions are established for the benefit of patentees only. The advancement of great national interests is the first object of the patent laws in all nations where they exist. The specifications, models, and drawings, are required that, after the patent term shall have expired, the public may have the benefit of a disclosure of the invention, so full and intelligible that any one can apply its principles to practical use, or make them the foundation of further improvements.
It is a still more erroneous idea that no drawings or models of new inventions are of use to the public, unless the machinery they represent is susceptible to a practical application of the use designed. Mechanical science, like all others, is matured and perfected by degrees, and by calling to its aid the investigations and ingenuity of various minds. Most inventions are but the foundation of progressive improvements. It is necessary to know what has been done, in order to know what remains to be accomplished. Every age avails itself of the experience and discoveries of that which has preceded it: were it otherwise, knowledge would be stationary, and every generation, instead of being wiser than others gone by, would be employed in learning over again what had been acquired before. The drawings and models of even those inventions which are imperfect or incapable of producing the desired effect, serve to show how far others have progressed, and either furnish hints for the full accomplishments of the design, or as beacons to enable others to avoid fruitless labor and expense. Whoever would attempt to improve the arts, must begin where others have left off: hence, the model rooms of the Patent Office were constantly visited by men of genius and science from all sections of the country, and from Europe, where they were able at once to discover how far American invention had gone, and where they frequently derived important hints from inventions and contrivances of apparently but little value.
They would seem also, to be almost indispensable, in deciding upon new applications for patents, to enable the proper officers to judge of the originality of the invention, and to prevent the issuing of interfering patents. It often requires a very close examination of the principles of a machine, and a careful comparison of models and drawings, to discover how far they interfere with previous inventions. The provision interdicting the granting of patents for what is not new and original, is the most valuable feature of the act of July last. But it will be impossible for the Commissioner to administer the law in that particular, according to its intent, without models and drawings of inventions previously patented. The consequence would be, in effect, the restoration of a great portion of the evils of the former system in multiplying conflicting rights, leading to much perplexity and expensive litigation. Much of the ground travelled over in the last forty years would have to be travelled over again before the point could be reached at which we arrived prior to the late conflagration.
The committee therefore believe that it is important to the interest of the country, as well as to the security of individual rights, that measures be immediately adopted to replace, as far as practicable, the records, drawings, and models which have been destroyed. After much inquiry and consideration, the committee are satisfied that, notwithstanding the apprehensions and anxiety so generally entertained, a restoration is practicable to a very gratifying extent. The first step must be to procure, for the purpose of being copied and recorded anew, the original patents. In most instances, descriptions and specifications of the inventions, and in perhaps a sixth or eighth part of the cases, drawings also have been annexed to the patents when granted. Drawings have been attached only when referred to in the specifications. The whole number of patents is a little upwards of ten thousand. It is believed that from six to seven thousand may be obtained for record. Many of the deficient drawings may be obtained from patentees, or may be supplied by the assistance of those whose familiar knowledge of the inventions will enable them, aided by the specifications, to delineate them with much accuracy. Many copies heretofore certified from the record to be used as evidence in the courts, will supply others.
Of the models, such as were trifling and unimportant, contained no new principle or combination of mechanism, and not useful for any of the purposes before alluded to, it will not be necessary to replace. The whole number of models was about seven thousand. It is the opinion of the Commissioner, and most others conversant with the subject, that three thousand of the most important can be replaced, which will form a very interesting and valuable collection, less numerous, indeed, but more select, and scarcely less useful than that which has been destroyed. Some of these would be replaced by voluntary contribution. But the greatest portion of them, even of those whose restoration would be most desirable, the committee are satisfied, can only be had by means in the hands of the Government. If it were in the power of the Government to compel patentees to replace the models and drawings lost by its improvidence, it would be an onerous and unjust tax upon those who, by their ingenuity, and at their own expense, built up an institution which, in its connexion with manufactures, with agriculture, and even commerce itself, has done much to advance the prosperity of the country. They have paid into the Treasury $156,907.73 more than has been required to meet the expenses of the office, including the salaries of the officers employed in it; and the committee cannot hesitate in recommending the appropriation of that balance to carry into effect the provisions of the bill which is herewith submitted.
The sentiment is not an uncommon one, that the tax upon patents is both unwise in policy and unjust in principle. Inventors are public benefactors, contributing to the promotion and improvement of all branches of national industry, and, in most instances, without any adequate remuneration. Who has done more to enrich the South, nay, indirectly, the whole country, than Whitney? And what was his reward? Let the South answer. Evans and Fulton, with genius and talents never, while they lived, appreciated to their worth, died overwhelmed by embarrassments. Whittemore, it is true, was more fortunate; but it was said that he availed himself of the mechanical genius of another who lived and died in poverty and obscurity.
It has not been the policy of our Government to draw a revenue from patentees. The duty imposed was intended only to meet the ordinary expenses of issuing patents. Many believe that even that should not be exacted. It is levying a contribution upon science and ingenuity, which cost the nation nothing, while they confer upon it important benefits.
The measures to be adopted in selecting and obtaining the models and many of the drawings, are matters of detail involving such a variety of circumstances and considerations, that it is impossible to make provision for them by law. That properly belongs, and should be intrusted to a temporary board of commissioners. The sum required to replace the three thousand models, which would include all whose preservation would be most desirable, is estimated by the Commissioner at $100,000. The expense of transcribing and recording descriptions, specifications, drawings, and assignments, is estimated at $53,000. A judicious and economical expenditure of these sums, it is believed, will restore the records and models to the full extent contemplated by the provisions of the bill submitted. By the statement from the Treasury Department, (marked E) it appears that the balance of the patent fund on the 31st December last was $156,907.73, including moneys received for patents and copies prior to the act of July 1836, which, though not expressly embraced by the terms of that act, properly belong to that fund. This balance will cover the expenditures above proposed of $153,000, together with $3,100 for record books, desks, and other office furniture, as per estimate D, and leave a balance of $807.73.
With such a restoration, and the addition of the specimens of fabrics and manufactures of various kinds which are in preparation in a number of the manufactories and workshops of the country, to be deposited in rooms in the new building, pursuant to the act of July last, we shall soon have less reason than is now apprehended throughout the country, to deplore the destruction of this great national repository. In two or three years the number of models will be scarcely less, and their character and value in the aggregate greatly improved.
It appears by the Commissioner that an additional examining clerk and also another copying clerk are necessary to keep up the increasing business of the office. The new duties assigned to the examining clerk make it a very responsible and laborious office. It is his business to make himself fully acquainted with the principles of the invention for which a patent is sought, and to make a thorough investigation of all that has been before known or invented either in Europe or America, on the particular subject presented for his examination. He must ascertain how far the invention interferes in any of its parts with other previous inventions or things previously in use. He must point out and describe the extent of such collision and interference, that the applicant may have the benefit of the information in so shaping or restricting his claim of originality as not to trespass upon the rights of others. The applicant should also be referred to the sources of this information, that he may be able to satisfy himself on the particular points of interference. This frequently leads to a lengthy correspondence, before the applicant can be persuaded that his invention or some rejected part of it, is not new. He often employs skilful and persevering council [sic] to urge and enforce by argument new views of the principles of his invention, who sometimes brings to his aid much mechanical astuteness. The examiner must also see that the specification accords with the drawing, and that the model is in conformity with both.
An efficient and just discharge of these duties, it is obvious, requires extensive scientific attainments, and a general knowledge of the arts, manufactures, and the mechanism used in every branch of business in which improvements are sought to be patented, and the principles embraced in the ten thousand inventions patented in the United States, and of the thirty thousand patented in Europe. He must moreover possess a familiar knowledge of the statute and common law on the subject, and the judicial decisions both in England and our own country, in patent cases. This service is important, as it is often difficult and laborious. Here is the first check upon attempts to palm off old inventions for new, or to interfere with the rights of others previously acquired. This is also the source whence the honest and meritorious inventor may look for aid and direction in framing his specifications as that he may be able to sustain his patent when issued, and find security and protection against expensive and fruitless litigation.
Suitable qualifications for these duties are rare, and cannot be obtained without such compensation as they readily command in other employment. It will, undoubtedly, be wise in the Government to affix such salary to this office as will secure the best talent and qualifications. Although an appeal is allowed by law, yet, if a high character is given to it, this will be the best, as it is the most appropriate tribunal for judging of these subjects, and its decisions commanding respect and confidence, there will be but little inclination to take exceptions to its judgment. Thus will be cut off a fruitful source of law suits, and our court calendars will cease to be crowded with cases arising out of the interfering rights of patentees. Meritorious inventors will secure in their rights, and the public relieved from imposition and embarrassment. These are among the first of the objects and merits of the act of last session. It appears that about one third of all the specifications are found, on examination, to contain no new principle, and that three fourths of the residue are either too broad in their claims of originality, or are otherwise irregular or defective, and are required to be set right at the office or sent back by the Commissioner for correction.
Under existing circumstances, without written, pictorial, or model record of any kind, it is apparent that the business of the office must either stand still, or proceed under very great embarrassment, which can be relieved only by the early action of Congress on the subject.
A bill is herewith submitted.
A BILL in addition to the act to promote the progress of science and useful arts.
SEC. 1. Be it enacted by the Senate and House of Representatives of the United States of America in Congress assembled, That any person who may be in possession of, or in any way interested in, any patent for an invention, discovery, or improvement, issued prior to the fifteenth day of December, in the year of our Lord one thousand eight hundred and thirty-six, or in an assignment of any patent or interest therein, executed and recorded prior to the said fifteenth day of December, may, without charge, on presentation or transmission thereof to the Commissioner of Patents, have the same recorded anew in the Patent Office, together with the descriptions, specifications of claim, and drawings annexed or belonging to the same; and it shall be the duty of the Commissioner to cause the same, or any authenticated copy of the original record, specification, or drawing which he may obtain, to be transcribed 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 produced as a delineation of the invention, being verified by oath in such manner as the Commissioner shall require, may be transmitted or copied as aforesaid, together with the certificate of the oath; or such drawings may be made in the office, under the direction of the Commissioner, 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 commissioners 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.
SEC. 2. And be it further enacted, That copies of such record and drawings, certified by the Commissioner, or, in his absence, by the chief clerk, shall be 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 drawing of the invention, if separate from the patent, verified as aforesaid, deposited in the Patent Office; nor shall any written assignment of any such patent, executed and recorded prior to the said fifteenth day of December, be received in evidence in any of the said courts in behalf of the assignee or other person in possession thereof, until it shall have been recorded anew.
SEC. 3. And be it further resolved, That, whenever it shall appear to the Commissioner that any patent was destroyed by the burning of the Patent Office building on the aforesaid fifteenth day of December, it shall be his duty, on application therefor by the patentee or other person interested therein, to issue a new patent for the same invention or discovery, bearing the date of the original patent, with his certificate thereon that it was made and issued pursuant to the provisions of the third section of this act, and shall enter the same of record: Provided however, That before such patent shall be issued, the applicant therfor shall deposit in the Patent Office a duplicate, as near as may be, of the original model, drawing, and description, with specification of the invention or discovery,verified by 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 extent only in which they would have been protected by the original patent and specification.
SEC. 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 facilitate the just discharge of the duties imposed by law on the Commissioner in issuing patents, and protect the rights of the public and of patentees in patented inventions and improvements: Provided, That a duplicate of such models may be obtained at reasonable expense: And provided, also, That the whole amount of expenditure for this purpose shall not exceed the sum of one hundred thousand dollars. And there shall be a temporary board of commissioners, to be composed of the Commissioner of the Patent Office and two other person to be appointed by the President, whose duty it shall be to consider and determine upon the best and most judicious mode of obtaining models 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 regulations, terms, 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.
SEC. 5. And be it further enacted, That whenever a patent shall be returned for correction and re-issue under the thirteenth section of the act to which this is additional, and the patentee shall desire several patents to be issued for distinct and separate parts 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 additional patent so to be issued: Provided, however, That no patent made prior to the aforesaid fifteenth day of December shall be corrected and re-issued, until a duplicate of the model and drawing of the thing as originally invented, verified by oath, as shall be required by the Commissioner, shall be deposited in the Patent Office.
SEC. 6. And be it further enacted, That any patent hereafter to be issued, may be made and issued to the assignee or assignees of the inventor or discoverer, the assignment thereof being first entered of record, and the application therefor being duly made, and the specification duly sworn to by the inventor. And in all cases hereafter, the applicant for a patent shall be held to furnish duplicate drawings, one of which to be deposited in the office, and the other to be annexed to the patent, and considered a part of the specification.
SEC. 7. And be it further enacted, That the Commissioner is hereby authorized and empowered to appoint agents in not exceeding 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 ingredients, and manufactures, as shall be intended to be patented or deposited therein; the transportation of the same to be chargeable to the patent fund.
SEC. 8. 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 appointed, in manner therein provided, two examining clerks, each to receive an annual salary of -------- dollars; and also an additional copying clerk at an annual salary of -------- dollars; and also an additional copying clerk at an annual salary of -------- dollars. And the Commissioner 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 section of this act, who shall receive not exceeding -------- cents for every page of one hundred words, and for drawings such reasonable compensation as shall be agreed upon or prescribed by the Commissioner.
SEC. 9. And be it further enacted, That, whenever the application of any foreigner for a patent shall be rejected and withdrawn for want of novelty in the invention, pursuant to the seventh section of the act to which this is additional, the certificate thereof of the Commissioner shall be a sufficient warrant to the Treasurer to pay back to such applicant two-thirds of the duty he shall have paid into the Treasury on account of such application.
SEC. 10. 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 act to which this is additional, shall be carried to the credit of the patent fund created by said act; and the moneys constituting 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 expenses of the Patent Office, including all the expenditures provided for by this act, and also for such other purposes as are or may be hereby specially provided for by law. And the Commissioner is hereby authorized to draw upon said fund from time to time for such sums as shall be necessary to carry into effect the provisions of this act, governed, however, by the several limitations herein contained. And it shall be his duty to lay before Congress, in the month of January, annually, a detailed statement of the expenditures and payments by him made from said fund.
Journal of the Franklin Institute, Feb 1836, pages 94-100
On the rights of Patentees, with a letter of Mr. Jefferson on that subject, first published in Niles' Register, and afterwards in the 2d vol. of the Emporium of Arts, new series, p. 446
We have had repeated, we might almost say perpetual, occasion to remark upon the claims of patentees to what they denominate the application of a machine, or instrument, to certain purposes for which it has not been previously used. We accord with Mr. Jefferson, most fully, in many of his observations on that subject, although we do not go with him to the fullest extent on certain points, as we believe that there are cases where a machine already used in one manufacture, may be beneficially employed in another; and that a patent may be sustained for so employing it; but in this case the patent must not be for the machine, but for "an improvement in the art" to which it is applied. Thus, for example, if a person can introduce into the silk manufacture any apparatus by which a large proportion of the expense attending the ordinary process is saved, he has improved the art of manufacturing silk, although he may not have invented any new machinery, but merely have applied that already known so as to produce decided improvements. If substances had heretofore been pulverized in a mortar by repeated blows of a pestle, and some one was to discover that the same effect might be produced in half the time by a rubbing motion of the same instrument, he would be well entitled to a patent for an improvement in the art of using the pestle and mortar, or rather in the art of pulverizing hard substances by means of the pestle and mortar, but to the instruments themselves he must not make any claim.
There is a very frequent want of discrimination in the applicants for patents as respects the head under which they make their claim to invention or discovery. The objects patentable under the law are "any new or useful art, machine, manufacture, or composition of matter, or any new or useful improvement in any art, machine, manufacture, or composition of matter, etc." Now all these are different things, and they ought to be designated accordingly in an application for a patent. If velvet had never been made, the making of it would be "a new manufacture" and might be patented as such; the mode of making it, however, must be described, and this might consist entirely of the use of well known machinery.
The letter of Mr. Jefferson was elicited by queries respecting the patent of Oliver Evans, at that time under litigation; but with that question our re-publication has nothing to do. Individually, we are of the opinion that Oliver Evans was very hardly dealt by, although we admit that the course adopted by him was in some instances unwise; but of one thing there can be no doubt, namely, that he found the grain mills of this country in a very imperfect state, and that he introduced and perfected those improvements which have rendered them models for the whole civilized world, and that for all he did in this way, his expenditures were greater than his receipts. [Editor.
Letter of Mr. Jefferson
Monticello, Aug. 13th, 1813
Your letter of August 3d, asking information on the subject of Mr. Oliver Evans' exclusive right to the use of what he calls his Elevators, Conveyors and Hopperboys, has been duly received. My wish to see new inventions encouraged, and old ones brought again into useful notice, has made me regret the circumstances which have followed the expiration of his first patent. I did not expect the retrospection which has been given to the revising law, for although the second proviso seemed not so clear as it ought to have been, yet it appeared susceptible of a just construction; and the retrospective one being contrary to natural right, it was understood to be a rule of law, that where the words of a statute admit of two constructions, the one just and the other unjust, the former is to be given them. The first proviso takes care of those who had lawfully used Evans' improvements under the first patent; the second was meant for those who had lawfully erected and used them after that patent expired, declaring they "should not be liable to damages therefor." These words may indeed be restrained to uses already past; but as there is parity of reason for those to come, there should be parity of law. Every man should be protected in his lawful acts, and be certain that no ex post facto law shall punish or endamage him for them. But he is endamaaged if confused if forbidden to use a machine lawfully erected at considerable expense, unless he will pay a new and unexpected price for it. The proviso says: that he who erected and used lawfully shall not be liable to pay damages, but if the proviso had been omitted would not the law, construed by natural equity, have said the same thing? In truth both provisos are useless. And shall useless provisos, inserted pro majori cautela, only authorize interferences against justice? The sentiment that ex post facto laws are against natural rights is so strong in the United States, that few, if any, of the State Constitutions have failed to proscribe them. The Federal constitution indeed interdicts them in criminal cases only; but they are equally unjust in civil as in criminal cases, and the omission of a caution which would have been right, does not justify the doing what is wrong, nor ought it to be presumed, that the legislature meant to use a phrase in an unjustifiable sense, if by any rules of construction it can be even strained to what is just. The law books abound with similar instances of the care the judges take of the public integrity. Laws moreover abridging the natural rights of their citizens, should be restrained by rigorous constructions within their narrowest limits.
Your letter, however, points to a much broader question, whether what have received from Mr. Evans the new and proper name of Elevators are of his invention: because, if they are not, his patent gives him no right to obstruct others in the use of what they possessed before. I assume it as a lemma, that it is the invention of the machine itself which is to give a patent right, and not the application of it to any particular purpose of which it is susceptible. If one person invents a knife convenient for pointing our pens, another cannot have a patent for the same knife to point our pencils. A compass was invented for navigating the sea; another cannot have a patent right for using it to survey land. A machine for thrashing wheat has been invented in Scotland; a second person cannot get a patent right for the same machine to thrash oats; a third rye; a fourth peas; a fifth clover, etc. A string of buckets is invented and used for raising water, ore, etc., can a second have a patent right to the same machine for raising wheat, a third oats, a fourth rye, a fifth peas, etc.? The question then whether such a string of buckets was invented first by Oliver Evans, is a mere question of fact in mathematical history. Now turning to such books only as I happen to possess, I find abundant proof that this simple machinery has been in use from time immemorial. Doctor Shaw, who visited Egypt and the Barbary coast in the years 1727 -8, 9, in the margin of his map of Egypt, gives us the figure of what he calls a Persian wheel, which is a string of round cups, or buckets, hanging on a pulley, over which they revolve, bringing up water from a well, and delivering it into a trough above. He found this used at Cairo, in a well 261 feet deep, which the inhabitants believe to have been a work of the patriarch Joseph. Shaw's Travels, 341, Oxford edition of 1738, in folio, and the Universal History, 1, 416, speaking of the manner of watering the high lands of Egypt, says "Formerly they made use of Archimedes' Screw, thence named the Egyptian Pump, but they now generally use Wheels (Wallowers) which carry a rope or chain or earthen pots, holding about 7 or 8 quarts a piece, and draw the water from the canals. There are besides, a vast number of wells in Egypt, from which the water is drawn in the same manner to water the gardens and fruit trees, so that it is no exaggeration to say, that there are in Egypt above 200,000 oxen daily employed in this labour." Shaw's name of Persian wheel has been since given more particularly to a wheel with buckets, either fixed or suspended on pins at its periphery. Mortimer's Husbandry, 1, 18, Duhamel, V, Ferguson's Mechanics, plate 13. But his figure, and the verbal description of the Universal History, prove, that the string of buckets is meant under that name. His figure differs from Evans' construction in the circumstance of the buckets being round, and strung through their bottom on a chain, but it is the principle; to wit, a string of buckets, which constitute the invention, not the form of the buckets, round, square, or hexagon, nor the manner of attaching them, nor the material of the connecting band, whether chain, rope or leather. Vitruvius 1, X.C.9, describes this machinery as a windlass, on which is a chain descending to the water with vessels of copper attached to it; the windlass, being turned, the chain moving on it will raise the vessels, which, in passing over the windlass, will empty the water they have brought up into a reservoir; and Perault, in his edition of Vitruvius, Paris, 1784, folio, plates 61, 62, gives us three forms of these water elevators, in one of which the buckets are square, as Mr. Evans' are. Bossut, Historie des Mathematiques 1, 26, says, "The drum wheel, the wheel with buckets, and the chapelets, are hydraulic machines, which come to us from the ancients, but we are ignorant of the time when they began to be put into use." The chapelets are the revolving bands of buckets, which Shaw calls the Persian wheel, the moderns a chain pump, and Mr. Evans, elevators. The text of my books, in which I find these elevators, is Wolf's Cours de Mathematiques, 1, 279, and plate 1, Parr, 1747 - 8vo. Here are two forms; in one of them the buckets are square, attached to two chains, passing over a cylinder or wallower at top, and under another at bottom, by which they are made to revolve. It is a nearly exact representation of Evans' elevators. But a more exact one is to be seen in Desaguilar's Experimental Philosophy, II, plate 34. In the Encylopedie de Diderot et D'Alembert, 8vo. edition de Lasaunne, 1st. vol of plates, in the four subscribed "Hydraulique, noria," is one, where round earthen pots are tied by their collars, between two endless ropes, suspended on a revolving lanthern or wallower; this is said to have been used for raising ore out of a mine. In a book which I do not possess, "L'Architecture Hydraulique de Belidor, the II vol. of which is said [De La Lande's continuation of Montucla's Historie de Mathematiques, II, 711] to contain a detail of all the pumps, ancient and modern, hydraulic machines, fountains, wells, etc. I have no doubt this Persian wheel, chain pump, chapelets, elevators, by whichever name you choose to call it, will be found in various forms. The last book I have to quote for it, is Prony's Architecture Hydraulique, I, advertisement VII, and secs. 648, 649, in the latter of which passages he observes, that the first idea which occurs for raising water is to lift it in a bucket by hand; when the water lies too deep to be reached by hand, the bucket is suspended by a chain and let down over a pulley or windlass; if it be desired to raise a continued stream of water, the simplest means which offers itself to the mind is to attach to an endless chain or cord a number of pots or buckets, so disposed that the chain being suspended on a lanthern or wallower above, so as to give a constant stream. Some years before the date of Mr. Evans' patent, a Mr. Martin of Caroline county, in this state, constructed a drill plough, in which he used the band of buckets for elevating the grain from the box, into the funnel which let them down into the furrows; he had bands with different sets of buckets, adapted to the size of peas, of turnip seed, etc. I have used this machine for sowing benni-seed also, and propose to have a band of buckets for drilling Indian corn, and another for wheat. Is it possible that in doing this I shall infringe Mr. Evans' patent? That I can be debarred of any use to which I might have applied my drill when I bought it, by a patent issued after I bought it?
These verbal descriptions applying so exactly to Mr. Evans' Elevators, and the drawings exhibited to the eye, flash conviction both on reason and the senses that there is nothing new in these elevators. but their being strung together by a strap of leather. If this strap of leather be an invention entitling the inventor to a patent right, it can only extend to the strap, and the use of the string of buckets must remain free to be connected by chains, ropes, a strap of hempen girthing, or any other substance, except leather. But indeed Mr. Martin had before used the strap of leather.
The screw of Archimedes is as ancient at least as the age of that mathematician, who died more than two thousand years ago. Diodorus Siculus speaks of it, lib 1, page 21 and lib 5, page 217, of Steven's edition of 1559, folio, and Vitruvius, X, 11. The cutting of its spiral worm into sections, for conveying flour or grain, seems to have been an invention of Mr. Evans, and to be a fair subject of a patent right, but it cannot take away from others the use of Archimedes' screw, with its perpetual spiral, for any purposes of which it is susceptible.
The Hopperboy is a useful machine, and as far as I know original.
It has been pretended by some (and in England especially) that inventors have a natural and exclusive right to their inventions; and not merely for their own lives, but inheritable to their heirs; and while it is a moot question, whether the origin of any kind of property is derived from nature at all, it would be singular to admit a natural and even an hereditary right to inventions. It is agreed by those who have seriously considered the subject, that no individual has, of natural right, a separate property in an acre of land; for instance, by an universal law, indeed, whatever, whether fixed or movable, belongs to all men equally and in common, is the property for the moment of him who occupies it; but when he relinquishes the occupation the property goes with it. Stable ownership is a gift of social law, and is given late in the progress of society; it would be curious then if an idea, the fugitive fermentation of an individual brain, could of natural right be claimed in exclusive and stable property. If nature has made any one thing less susceptible than all others of exclusive property, it is the action of the thinking power called an idea; which an individual may exclusively possess as long as he keeps it to himself, but the moment it is divulged, it forces itself into the possession of every one, and the receiver cannot dispossess himself of it. Its peculiar character too is that no one possesses the less because every other possesses the whole of it. He who receives an idea from me receives instruction himself without lessening mine; as he who lights his taper at mine receives light without darkening me.. That ideas should freely spread from one to another over the glove for the moral and mutual instruction of man and improvement of his condition, seems to have been peculiarly and benevolently designed by nature when she made them, like fire, expansible over all space, without lessening their density in any point, and like the air in which we breathe, move, and have our physical being, incapable of confinement or exclusive appropriation. Inventions then cannot in nature be a subject of property. Society may give an exclusive right to the profits arising from them as an encouragement to men to pursue ideas which may produce utility. But this may or may not be done according to the will and convenience of the society, without claim or complaint from any body. Accordingly it is a fact, as far as I am informed, that England was, until we copied her, the only country on earth which ever, by a general law, gave a legal right to the exclusive use of an idea. In some other countries it is sometimes done in a great case and by a special and personal act; but generally speaking other nations have thought that these monopolies produce more embarrassment than advantage to society; and it may be observed that the nations which refuse monopolies of inventions are as fruitful as England in new and useful devices.
Considering the exclusive right to invention as given, not of natural right but for the benefit of society, I knew well the difficulty of drawing a line between the things which are worth to the public the embarrassment of an exclusive patent and those which are not. As a member of the patent board for several years, while the law authorised a board to grant or refuse patents, I saw with what slow progress a system of general rules could be matured. Some however were established by the board. One of these was, that a machine of which we were possessed, might be applied by every man to any use of which it is susceptible, and that this right ought not to be taken from him, and given to a monopolist, because he first, perhaps, had occasion so to apply it. Thus a screw for crushing plaster might be employed for crushing corn cobs; and a chain pump for raising water might be used for raising wheat -- this being merely a change of application. Another rule was, that a change of material, should not give title to a patent; as the making a plough of cast rather than wrought iron; a comb of iron instead of horn or ivory; or the connecting of buckets by a band of leather than hemp or iron. A third was, that a mere change of form, should give no right to a patent; as a high quartered shoe instead of a low one, a round hat instead of a three square, or a square bucket instead of a round one; but for this last rule, all the changes of fashion in dress would have been under the tax of patentees. These were among the rules which the uniform decision of the board had already established, and under each of them Mr. Evans' patent would have been refused. 1st, because it was a mere change of application of the chain pump from raising water, to raise wheat. 2d, Because the using a leathern instead of a hempen band, was a mere change of material; and 3dly, square buckets instead of round, are only a change of form; and the ancient forms too, appear to have been indifferently square or round. But there were still abundance of cases which could not be brought under the rule until they should have presented themselves in all their aspects; and these investigations occupying more time of the members of the board, than they could spare from higher duties, the whole was turned over to the judiciary, to be matured in a system under which every one might known when his actions were safe and lawful. Instead of refusing a patent in the first instance, as the board was authorized to do, the patent now issues of course subject to be declared void on such principles as should be established by the courts of law. This business however is but little analogous to their course of reading, since we might in vain turn over all the lubberly volumes of the law, to find a single ray which would lighten the path of the mechanic or mathematician; it is more within the information of a board of academical professors, and a previous refusal of a patent would better guard our citizens against harassment by law suits. But England had given it to her judges, and the usual predominancy of her example carried it to ours.
It happed that I had myself a mill built in the interval between Mr. Evans' first and second patents. I was living in Washington, and left the construction of the mill entirely to the mill-wright. I did not even know he had erected elevators, conveyors and hopperboys, until I learnt it by an application, from Mr. Evans' agent for the patent price. Although I had no idea he had a right to it by law (for no judicial decision had then been given) yet I did not hesitate to remit to Mr. Evans the old and moderate patent price, which was what he then asked, from a wish to encourage even the useful revival of ancient inventions. But I then expressed my opinion of the law, in a letter either to Mr. Evans or his agent.
I have thus, sir, at your request, given you the facts and ideas which occur to me on the subject. I have done it without reserve, although I have not the pleasure of knowing you personally. In thus frankly committing myself to you, I trust you will feel it as a point of honour and candour to make no sue of my letter, which might bring disquietude on myself, [fn.: It is proper to observe, that though the author did not at the time of writing the letter, contemplate its publication, yet his permission has since been obtained.] and particularly I should be unwilling to be brought into any difference with Mr. Evans, whom, however, I believe to be too reasonable to take offence at an honest difference of opinion. I esteem him much, and sincerely wish him wealth and honour. I deem him a valuable citizen of uncommon ingenuity and usefulness; and had I not esteemed still more the establishment of sound principles, I should now have been silent. If any of the matter I have offered can promote that object, I have no objection to its being so used. If it offers nothing new, it will of course not be used at all.
I have gone with some minuteness into the mathematical history of the elevator, because it belongs to a branch of science, in which, as I have before observed, it is not incumbent on lawyers to be learned; and it is possible, therefore, that some of the proofs I have quoted, may have escaped on their former arguments.
On the law of the subject I should not have touched, because more familiar to those who have already discussed it, but I wished to state my own view of it merely in justification of myself, my name and approbation being subscribed to the act. With these explanations accept the assurance of my respect.
Journal of the Franklin Institute, April 1836, page 239-240
On Surrendering and Renewing Patents under Amended Specifications. By the Editor
In the last volume of this Journal, p 313, in noticing a patent obtained by Mr. C.J. Gayler, of New York, for manufacturing iron chests, we remarked that the patent originally issued to Mr. Gayler for these chests, had been vacated in the District Court of the United States for the Southern District in New York, in consequence of defects in the specification, and expressed a doubt whether, under these circumstances, the new patent could be sustained. By referring to the notice here alluded to, the reader will find a brief statement of the grounds upon which that doubt was founded. Our attention has been since called to this subject, and upon further reflection we are apprehensive that our first impressions upon this point may prove to be incorrect; we have also conversed with two gentlemen of the bar respecting it, who believe that a patent which has been declared void by a court, may, under the act of July 3d, 1852, be surrendered to the Secretary of State, and reissued under an amended specification. This act provides that whenever a patent "shall be invalid or inoperative, by reason that any of the terms or conditions prescribed in the third section of the act [of February 21st, 1793] have not, by inadvertence, accident, or mistake, and without fraudulent or deceptive 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." etc.
All of the patents which had been surrendered subsequently to the passing of this act, and prior to that by Mr. Gayler, were, we believe, surrendered upon a conviction existing in the mind of the patentee, that he had not complied in the first instance with the requirements of the law, and that his patent would not, therefore, be sustained if carried into court. There does not, however, appear, in the wording of the law, any thing to prevent the surrendering of a patent after it has been declared void by a jury, as this does no more than prove it to be "invalid and inoperative,: and appears, therefore, to place it in the precise condition in which the relief contemplated by the act is to be afforded. Until this has been done, the patent is not absolutely "invalid and inoperative," however strong the conviction may be that such would prove to be its condition, if subjected to the ordeal of the law.
The foregoing view of the operation of the law appears to be much more consonant with justice than that first taken by us, as a patentee might, undoubtedly, surrender his patent, had his errors been discovered by himself or by his friends, and it would be no small hardship, were the remedy denied because they had been detected by an adversary.
It may be proper to observe, that a reissued patent stands precisely upon the same basis with that originally obtained; that is to say, the surrender and reissuing do not of themselves give to it any validity, but only afford an opportunity to render it valid. The patentee may still claim more than he has invented, or the whole thing patented may be without novelty, and stand no better chance of being sustained than it did in the first instance. We could point to several reissued patents, which we believe to be in this predicament, and which must remain so, until the Ethiopian can change his skin, and the leopard his spots.
Journal of the Franklin Institute, Mar 1837, pages 197+
NEW PATENT LAW
We have now the pleasure of presenting to the public the Law for the restoration of the Records and Models of the Patent Office, which will be found, also, to contain various provisions tending to secure the rights of bona fide inventors. For whatever there is of good in this law, and we think that there is much that is so, the public are indebted to the indefatigable exertions of the Hon. John Ruggles, of the Senate of the United States, who has devoted himself to this subject with equal zeal and success, from the inception of the bill, to its final signature by the President, and the moment before his term of office expired.
In addition to the act to promote the progress of science and the useful arts.
[Act of March 3, 1837, not copied here. KWD]
Journal of the Franklin Institute, September 1836, pages 158+
NEW PATENT LAW
We insert the law recently passed, regulating the granting of patents for useful inventions. In many of its provisions it is undoubtedly a real improvement upon the old law; there are, however, some enactments in it which we think objectionable, and others, the beneficial operation of which, will admit of much doubt. The exercise of the judicial power given to the office will require much knowledge, great prudence, and a kind and liberal feeling towards applicants, in doubtful cases. Several alterations would have been urged previously to its passage, but in the state of Congressional business a trifling opposition would have defeated it altogether, and it was thought better to break up the old system, as amendments will be more readily grated on the new, perfection not being looked for in what is untried. We shall offer some extended remarks upon this subject at an early day.
An act to promote the progress of useful arts, and to repeal all acts and parts of acts heretofore made for that purpose.
[Act of July 4, 1836, not copied here. KWD]
Journal of the Franklin Institute of the State of Pennsylvania Devoted to the Mechanic Arts, Manufacture, General Science, and the Recording of American and Other Patented Inventions [Full title], May 1834, pages 287-289
Information for Inventors who wish to obtain Patents in England.
By the Editor
Inquiries are frequently made of the Editor, by persons who wish to secure patents in England and France for their inventions, and it has been his design to give some general information upon that subject in the Journal. The present article, however, is not considered as fulfilling this intention, but merely as bringing to notice one point of considerable importance in the business. The patent law of the United States provides for the granting of patents to inventors only, or to their heirs, administrators, or assigns; and a patent obtained by any other person, is invalid. In England, patents are granted for what is new there, without regard to who was the inventor of it; if invented in a foreign country, the term new, applying to its novelty in the realm. Whoever, therefore, first takes a new invention to that country, can obtain a patent, and defend his right. It consequently becomes a point of great importance, that those inventions which are deemed worth the expense of an English patent should not be divulged here before steps have been taken to secure the right on the other side of the Atlantic.
The Editor has, in several instances, prepared and transmitted the requisite papers to England, his situation being such as to offer special facilities for so doing. Owing to this, and to his general pursuits, he has become the depository of more information respecting the modes of procedure than has fallen to the lot of most other persons; his connexion with the Patent Office of the United States, also brought to his notice many things calculated to throw light upon this subject.
There are many persons who make it their special business to visit the United States' Patent Office, that they may be able to turn the inventions of others to their own advantage, either at home or abroad; at home, by making some unimportant change in the form of machines that they see there, and then diffusing them in some part of the Union remote from the residence of the original inventor; abroad, by sending to England and France, accounts of such inventions as they believe will sell in those countries.
This subject has been brought afresh to the notice of the Editor, by a letter received from a correspondent in New York, Wm. Serrell, Esq., Civil Engineer; a gentleman from England, and who was frequently employed there in preparing specifications and drawings for the Patent Office; and who has, in several instances, been engaged by American inventors in the same business. In a letter dated March 3d, in which he mentions this fact, he observes, that, "The short period since my first agency of this kind, and the little publicity I have yet sought, are reasons why the number of these transactions is yet small. Still I have the pleasure to say that late arrivals bring advice from my friend in London, that two of such patents are in progress towards profitable sale; but I regret to add, the same letter states that one patent is likely to be interfered with, if not set aside, through some circumstances that will be fully understood by the annexed extract from the letter itself, which extract I hand you, believing that you may consider it of sufficient importance for insertion in your excellent Journal."
Extract from a Letter dated "London, 14th December 1833"
"It may be of use to apprize inventors of mechanical improvements in the United States, that it is essential to the security of their interests, if they design to take out patents for their inventions in this country, not to disclose the secret of their inventions in the United States, until they have secured a patent here. There are many ingenious mechanics in the United States in correspondence with their friends in this country, constantly on the watch to seize any thing new, and likely to be useful, to transmit the particulars to their friends, and thus forestall the rights and interests of the original inventor."
As a commentary upon the foregoing extract, the following fact may be stated. An American had obtained a patent in the United States, and had assigned the rights thereto, in England, to a fellow citizen for twenty thousand dollars; the assignee, however, arrived there too late, as some one had obtained the description from the office here, had transmitted it, and obtained a patent.
There is now before the British Parliament a new law to regulate the granting of patents. It passed the House of Commons at the last session, and was read a second time in the House of Lords, but the Lord Chancellor, wishing to examine its details with more care than was then possible, it was postponed. It will undoubtedly be completed at an early period; when we shall give its provisions, with such other matters respecting foreign patents, as may appear to us important.
Journal of the Franklin Institute, May 1834, pages 341-342
Further notice respecting the obtaining of Patents in England
The editor has just received a further communication from W. Serrell, Esq., Engineer, New York, the gentlemen referred to in the first article in the present number, in which he has furnished another extract from a letter on the subject of English patents, dated London, 17th February 1834. As it not only confirms, but gives additional importance to the observations made in the above named article, we hasten to publish it.
"By the way, a man has recently arrived from New York, named S---, loaded with patents, none of which are his own; amongst them he has got J.R---'s with the specification and drawings, R--- knows him, and S-- was much surprised to find R--- here, and still more that his patent was secured.
"This is another practical evidence of the importance of the caution which I lately sent to you, and which I hope you have had published. The moment a patent worth any thing is taken out at Washington, one of these kidnappers secures the child as his own, and goes away with it to a foreign market. A patent was recently named to an English tradesman, who directly asked if it was not an American invention; on being answered in the affirmative, he rejoined 'you are too late, my brother saw it in New York, and when he came home had one made.' The plain result of all this is, that when any thing is invented in America which is deemed worthy of being patented in England, it ought to be secured, but not published in America, until time has been given to secure it in England. You may be assured that there are regular traders, or rather regular plunderers of patents, persons who make this a business, and do nothing else. I could furnish some proofs of the fact."
Mr. Serrell adds, "the first part of the above refers to a patent for an improvement, the inventor of which went hence by my advice, and applied to my friend in London, by whom he has been placed in a situation to obtain a handsome remuneration for his invention, all of which would have been jeopardized had S--- left New York a few weeks earlier. Any unprincipled man, with a small amount of mechanical knowledge, can, by swearing to 'a communication from a foreigner residing abroad,' obtain a patent, unless he is met on the threshold by an opposition which will compel him to show the nature of the communication under which he attempts to procure it.
"I forward the preceding extracts and remarks for publication in your Journal, should you think proper so to dispose of them."
The writer of the letter from England probably is not aware of the difference between the practice here, and there, in the issuing of patents. In England the patent issues upon the title of the invention being furnished, and several months are allowed, most commonly six, for the enrolling of the specification, so that no individual can learn the nature of the invention at the patent office, for this length of time after it has been secured. In the United States the specification must be furnished before the patent can issue, and the very day that a patentee receives it, any one may obtain a copy of it. The office has no power whatever to refuse such a copy and no blame therefore attaches there, this being the fair construction of the law. The only safe procedure, therefore, when an inventor wishes to secure a patent in England, is to send over prior to, or simultaneously with, his application here, furnishing to a proper agent, a copy of his specification and drawings, and the necessary funds, otherwise he is likely to be superseded, in which case he has no remedy.
There are but few cases, however, in which an inventor ought to rely upon his own judgment respecting the propriety of obtaining a patent in England, he should obtain the best advice here, and after this be careful that the business goes into the hands of an agent there who has the ability, and the integrity to direct him aright. An English patent costs about six hundred dollars, for that kingdom alone, and if extended to Scotland and Ireland, about three times that amount. Were all inventions as good as their authors think them, this sum would be one of little comparative moment; but, in point of fact, there is not more than one in fifty of the patents obtained here, which would be worth patenting in England, at so great a cost, although what is really new and useful will, in general, be better paid for there, than with us.
Journal of the Franklin Institute, December 1833, pages 374-379
Decision of the Supreme Court of the United States, on the effect of delaying to obtain a patent after an invention is completed; in the case of Joshua Shaw versus Joseph Cooper, in January Term, 1833.
Under a similar title we published the decision in the case of Pennock and Sellers v. Dialogue, at p 184 of vol iii, and we are indebted to the same friendly hand which furnished the materials of that report, for the aid which has led to the publication of the subjoined article. There are but few points of equal importance to real inventors with that of a correct understanding of what constitutes an abandonment of their rights, a question which had never been definitively settled in the decisions of our courts until that made in the case above alluded to. The principles there laid down are, in the present case, not merely confirmed, but extended, and their application more clearly shown. In England the utmost secrecy is requisite until a patent has been actually obtained, and although such is not the case in this country, the patent laws being in both founded upon the same principles, it follows that there must be an accordance in the practice under them, although, as in many other instances, our decisions are less influenced by mere technicalities than those of the English courts. There, a true and original inventor, although he may use all due diligence in applying for a patent, may be deprived of his right by the villainy of a workman, or the indiscretion of a friend, to whom he has, from necessity, or in confidence, made known his invention; here, according to the most strict construction of the decisions in Sellers and Pennock v. Dialogue, and in that which follows, it can be lost only by the actual negligence and willfulness of the inventor himself.
Joshua Shaw obtained a patent dated 19th June, 1822, for "a new and useful improvement in guns and fire arms, which improvement consisted in a priming head and case applied to guns and fire arms, for the purpose of priming and giving them fire by means or use of percussion, fulminating, or detonating powder;" which patent was surrendered on account of defects in the specification, and a new one issued, under an amended one, on the 7th of May, 1829, for the residue of the term of fourteen years from the first date. At the October term of 1829, Joshua Shaw instituted a suit against Joseph Cooper, for an alleged violation of his patent; the amended specification being put in by the plaintiff as the true description of his invention.
The points upon which the defendant relied were, that the pretended improvements were not made by Shaw; that they had been known and used in the United States, and in England, France, and other foreign countries, before the alleged discovery of them by him; that the essential parts of them was the invention of some person in England; that the patent was void because there was no discrimination between those parts which were new, and those which were old; and because the invention was not described in such full, clear, and exact terms, as are required by law, and because it was obtained surreptitiously.
The case was tried in January, 1832, and a verdict and judgment given for the defendant.
On the trial in the Circuit Court, the plaintiff adduced testimony to prove that he had made the invention or discovery in 1813 or 1814; that not being himself a worker in iron, he, in 1813 or 1814, employed his brother, in England, under injunctions of secrecy, to make the apparatus necessary for experimenting with; that he left England in 1817, to reside in the United States, soon after which his brother divulged the secret, for a reward, to a gunmaker in London; that he, the plaintiff, treated the invention as a secret after his arrival in this country, and that it was never publicly known here until after the date of his patent of the 19th June, 1822. Testimony was adduced to show that the principal importers of fire arms in New York and Philadelphia, had not heard of the thing at the time of the date of the patent, and that no guns of the kind were imported until the year 1824 or 1825. That letters patent were granted in England on the 11th of April, 1807, to one Alexander J. Forsyth, for a method of discharging fire arms by the use of a priming of percussion powder, merely by a blow; and it was contended that the existence of this patent to Forsyth, which gave him the exclusive right to use the percussion powders in any mode, down to April, 1821, accounted for the plaintiff not taking out a patent in England; and that up to the time of his obtaining his patent here, he was engaged in experiments for the purpose of perfecting his invention.
The defendant proved by the testimony of one witness that he had used the improvement in England, had purchased a gun of the kind there, had seen others use them, and had seen guns of the kind in the Duke of York's Armory in 1819; it was also proved by five other witnesses who had worked at the business of making guns, in England, in 1820 and 1821, that it was in general use there in those years, but they had never seen such at an earlier date; that in 1821 it was generally known and used in France; and in the United States after the 19th of June, 1822.
The foregoing contains the main points in the bill of exceptions; the case was submitted to the Supreme Court on printed arguments, by Mr. Paine on the part of the plaintiff, and Mr. Emmet for the defendant. We do not think it necessary, in our summary, to notice some of the points introduced by the counsel, as not bearing upon the question of the originality and novelty of the invention, but principally upon the fact of the plaintiff having been an alien at the time of his obtaining his patent in the first instance.
On the part of the plaintiff's counsel it was contended that the alleged public use was not such as to invalidate the claim of the patentee; that there were stronger instances of public use in the reported cases, in which patents had, nevertheless, been sustained, the inventor not having been considered as thereby abandoning his claim to the public; that at the time of taking out the patent, the invention had never been heard of here; that it had been known and used in England only two years, which was a foreign use, and would not have been an extraordinary one had it existed here; that the public here could sustain no injury by the existence of the exclusive right, they never having been in possession of the invention; that if an invention has been pirated, or fraudulently divulged, the inventor does not thereby lose his right, unless he acquiesce in the public use of it to such an extent as to prove by his neglect, that he has abandoned it to the public, and that in this case there was no evidence of such neglect; that the delay was accounted for by the plaintiff being engaged in the attempt to improve his invention; and that his not obtaining a patent in England resulted from the existence of Forsyth's patent there.
For the defendant it was contended that the public had, somehow, become fully possessed of the invention for two years before the plaintiff took any steps to secure a patent; that there was evidently both negligence and unreasonable delay, which was not invalidated by the pretence that the plaintiff was maturing his invention; as he at last took his patent for the very thing which had been in use for two or three years previously, both in England and France; that the delay was unnecessary, and amounted to an abandonment of his invention; that the thing being new here was not sufficient, as the settled law is that it must be new to the world.
The opinion of the Supreme Court was delivered by Mr. Justice McLean, which after a recital of the general facts of the case, and the citation of the legal authorities which bear upon it, concludes in the following terms:
The patent law was designed for the public benefit, as well as for the benefit of inventors. For a valuable invention, the public, on the inventor's complying with certain conditions, give him, for a limited period, the profits arising from the sale of the thing invented. This holds out an inducement for the exercise of genius and skill in making discoveries which may be useful to society, and profitable to the discoverer. But it was not the intention of this law, to take from the public, that of which they were fairly in possession.
"In the progress of society, the range of discoveries in the mechanic arts, in science, and in all things which promote the public convenience, will be enlarged. This results from the aggregation of mind, and the diversity of talents and pursuits, which exist in every intelligent community. And it would be extremely impolitic to retard or embarrass this advance, by withdrawing from the public any useful invention or art, and making it a subject of private monopoly. Against this consequence, the legislature have carefully guarded in the laws they have passed on the subject.
"It is undoubtedly just that every discoverer should realize the benefits resulting from his discovery, for the period contemplated by law. But these can only be secured by a substantial compliance with every legal requisite. His exclusive right does not rest upon his discovery alone; but also upon the legal sanctions which have been given to it, and the forms of law with which it has been clothed.
"No matter by what means an invention may be communicated to the public, before a patent is obtained, any acquiescence in the public use, by the inventor, will be an abandonment of his right. If the right were asserted by him who fraudulently obtained it, perhaps no lapse of time could give it validity, but the public stand in an entirely different relation to the inventor.
"The invention passes into the possession of innocent persons, who have no knowledge of the fraud, and at a considerable expense, perhaps, they appropriate it to their own use. The inventor, or his agent, has full knowledge of these facts, but fails to assert his right: shall he afterwards be permitted to assert it with effect? Is not this such evidence of acquiescence in the public use, on his part, as justly forfeits his right?
"If an individual witness a sale and transfer of real estate, under certain circumstances, in which he has an equitable lien or interest, and does not make known this interest, he shall not afterwards be permitted to assert it. On this principle it is that a discoverer abandons his right, if, before the obtainment of his patent, his discovery goes into public use. His right would be secured by giving public notice that he was the inventor of the thing used, and that he should apply for a patent. Does this impose any thing more than reasonable diligence on the inventor? And would any thing short of this, be just to the public?
"The acquiescence of an inventor in the public use of his invention, can in no case be presumed, where he has no knowledge of such use. But this knowledge may be presumed from the circumstances of the case. This will, in general, be a fact for the jury. And if the inventor do not, immediately after this notice, assert his right, it is such evidence of acquiescence in the public use, as for every afterwards to prevent him from asserting it. After his right shall be perfected by a patent, no presumption arises against it from a subsequent use by the public.
"When an inventor applies to the Department of State for a patent, he should state the facts truly; and indeed he is required to do so, under the solemn obligations of an oath. If his invention has been carried into public use by fraud, but for a series of months or years he has taken no steps to assert his right, would not this afford such evidence of acquiescence as to defeat his application, as effectually, as if he failed to state that he was the original inventor? And the same evidence which should defeat his application for a patent, would, at any subsequent period, be fatal to his right. The evidence he exhibits to the Department of State is not only ex parte, but interested; and the questions of fact are left open, to be controverted by any one who shall think proper to contest the right under the patent.
"A strict construction of the act, as it regards the public use of an invention, before it is patented, is not only required by its letter and spirit, but also by sound policy. A term of fourteen years was deemed sufficient for the enjoyment of an exclusive right of an invention by the inventor, and if he may delay an application for his patent at pleasure, although his invention be carried into public use, he may extend the period beyond what the law intended to give him. A pretence of fraud would afford no adequate security to the public in this respect, as artifice might be used to cover the transaction. The doctrine of presumed acquiescence, where the public use is known, and might be known, to the inventor, is the only safe rule which can be adopted on this subject.
"In the case under consideration, it appears the plaintiff came to this country, from England, in the year 1817, and being an alien, he could not apply for a patent until he had remained in the country two years. There was no legal obstruction to his obtaining a patent in the year 1819; but it seems that he failed to apply for one until three years after he might have done so. Had he used proper diligence in this respect his right might have been secured, as his invention was not sold in England until the year 1819. But in the two following years, it is proved to have been in public use there, and in the latter year, also in France.
"Under such circumstances, can the plaintiff's right be sustained?
"His counsel assigns as a reason for not making an earlier application, that he was endeavouring to make his invention more perfect; but it seems, by this delay, he was not enabled, essentially, to vary or improve it. The plan is substantially the same as was carried into public use through the brother of the plaintiff in England. Such an excuse, therefore, cannot avail the plaintiff. For three years before the emanation of his patent, his invention was in public use, and he appears to have taken no step to assert his right. Indeed he sets up, as a part of his case, the patent to Forsyth, as a reason why he did not apply for a patent in England.
"The Forsyth patent was dated six years before. Some of the decisions of the Circuit Courts, which are referred to, were overruled in the case of Pennock and Sellers v. Dialogue. They made the question of abandonment to turn upon the intention of the inventor. But such is not considered to be the true ground. Whatever may be the intention of the inventor, if he suffers his invention to go into public use, through any means whatsoever, without an immediate assertion of his right, he is not entitled to a patent; nor will a patent, obtained under such circumstances, protect his right.
"The judgment of the Circuit Court must be affirmed with costs."
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