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originally issued; and that when so extended, a patent should have the same effect in law as though it had been originally granted for the term of twenty-one years; and that the benefit of such renewal should extend to assignees and grantees of the right to use the thing patented, to the extent of their respective interests therein.

The Patent Act of 1848' amended the above provisions by vesting the power of the board, in the Commissioner of Patents alone; and by directing him to take into consideration the original patentability and novelty of the inventions covered by patents sought to be extended, as well as to be governed by the rules and principles that had theretofore governed the board.

No other change was ever made in the statute relevant to the subject, until in 1861 it was repealed as to future patents. As to patents granted before March 2, 1861, it was re-enacted in the Patent Act of 1870, and again reenacted in the Revised Statutes.' In both these re-enactments, one provision is found, which did not exist in the former law, namely the provision that the application should be filed not more than six months nor less than ninety days before the expiration of the original term of the patent.

§ 261. The statutes relevant to extensions have all mentioned "patentees" as being persons entitled to apply for extensions, and have mentioned no others. When the first of those statutes was enacted in 1836, nobody but an inventor or his executor or administrator, could be a patentee. In 1837, however, Congress enacted, that any patent thereafter issued, might be made and issued to the assignee or assignees of the inventor. In all subsequent cases, where that course was pursued, the inventors and the patentees were not the same persons; but no corresponding change was ever made in the statute relevant to extensions. The

19 Statutes at Large, Ch. 47, Section 1, p. 231.

16 Statutes at Large, Ch. 230; Sections 63 to 67, p. 208.

Revised Statutes, Sections 4924 to 4928.

45 Statutes at Large, Ch. 45, Section 6, p. 193.

question has therefore arisen, whether, in such cases, it was the inventor who had a right to apply for an extension, or whether the patentee was the person who had that right, or whether both the inventor and the patentee must have joined in such an application. Where the inventor would have an equitable interest in the extension if granted, it was proper for him to apply for that extension alone.' When granted, the legal title to such an extension, would vest in the patentee, because such an extension was in the nature of an amendment of his patent; but the equitable title might vest wholly in the inventor, or vest partly in the inventor and partly in the patentee, or vest partly in the inventor and partly in third persons, according to the equitable facts of each case. When the inventor would have no equitable interest in the extension if granted, no extension could be obtained, either on his application, or on that of the patentee, or on that of both together; because it was not the intention or scope of the statute to grant extensions of patents for the sole benefit of others than the inventors of the things secured thereby.'

Whether the executor or administrator of an inventorpatentee, had a right to apply for an extension, was the first of the ten questions which were submitted to the Supreme Court in the celebrated case of Wilson v. Rousseau. That question was argued in the affirmative by Webster, Seward and Latrobe, and decided in the affirmative by the court.'

Where a joint patent was taken out by joint inventors, all had to join in an application for an extension of that pattent, if all were living; and if any were dead, the legal representatives of the deceased had to unite in such an application.*

§ 262. No Patent Office extension was ever grantable after the expiration of the original term. Such extensions could

Sayles v. Dubuque and Sioux City Railroad Co. 3 Bann. & Ard. 220, 1878.

Wilson v. Turner, Taney's Circuit Court Decisions, 292, 1845.

3 Wilson v. Rousseau, 4 Howard, 673, 1846.

4 Wickersham's Case, 4 Off. Gaz. 155, 1873.

5 Act of 1836, Section 18; Act of

be granted at any time before the midnight at the end of the last day of that term; because fourteen-year patents did not expire till the last hour of the fourteenth anniversary of the day of their respective dates.' Patents limited in law to the term of fourteen years from the date of earlier foreign patents, were extendible, at the discretion of the Commissioner of Patents, as well as those not so limited;" but in such a case the extension had to be granted before the expiration of the foreign patent, even though the extended patent purported on its face to run for some time longer.'

$263. Whether an inventor-patentee needed to possess any interest in the first term of his patent at the time of applying for an extension thereof, was the fifth question submitted to the Supreme Court in the case of Wilson v. Rousseau. That question was decided in the negative. Even where the assignee of the first term of a patent surrendered and reissued it, the inventor-patentee had a right to ignore the reissue, and to apply for and receive an extension of the original patent."

§ 264. It was against the policy of the law, if not against its letter, to extend any patent, in the extension of which, if granted, the inventor would have no property right. The right to an extension was given by the law, chiefly with a view to the advantage of the inventor, and not of his assignee or grantee. It never was necessary, however, that the inventor should be in a condition to receive the legal title to the extension, or even that the entire equitable estate in it, should belong to him. An interest in the proceeds of the exclusive right during the extended term, was enough to

1870, Section 63; Revised Statutes, Section 4924.

'Johnson v. McCullough, 4 Fisher, 170, 1870.

Tilghman v. Mitchell, 9 Blatch. 27, 1871.

3 New American File Co. v. Nicholson File Co. 8 Fed. Rep. 816, 1881.

4 Wilson v. Rousseau, 4 Howard, 673, 1846.

5 Potter v. Braunsdorf, 7 Blatch. 97, 1869; Crompton v. Belknap Mills, 3 Fisher, 536, 1869.

6 Wilson v. Turner, Taney's Circuit Court Decisions, 292, 1845.

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satisfy the policy of the law in this respect.' Even where the original patent was granted to an assignee, and where the extension was, therefore, in point of legal title, a prolongation of his patent, the extension was held to be valid, because the inventors had interests in its proceeds.' Moreover, inventors are presumed in law to have had a sufficient interest to support extensions actually granted, unless the contrary is proved to have been the fact."

$265. The certificate of extension which was provided for by the statute,' was generally indorsed on the original parchment letters patent; but where the original document was lost or was out of the control of the person applying for the extension, that certificate was indorsed upon a certified copy of the letters patent and was equally valid."

§ 266. Jurisdiction to extend a particular patent, was acquired by the Commissioner, under the statutes in force prior to July 8, 1870, whenever the proper person filed an application for such an extension, and paid the requisite fee; provided the application was filed, and the fee paid, long enough before the expiration of the original term of the patent, to enable the Commissioner to investigate the matter in the way prescribed by statute.' After July 8, 1870, the law remained the same on this point, except that under the statute of that date, and under the Revised Statutes, the application had to be filed not more than six months, nor less than ninety days before the first term of the patent would expire. The jurisdiction always depended, therefore, upon the application being filed and the fee paid by the proper person at the proper time. The decision of the

1 Gear v. Grosvenor, 1 Holmes, 215, 1873.

Sayles v. Dubuque and Sioux City Railroad Co. 3 Bann. & Ard. 220, 1878.

3 Ruggles v. Eddy, 10 Blatch. 56,

1872.

4 Patent Act of 1836, Section 18. Potter v. Braunsdorf, 7 Blatch.

108, 1869.

6 Gear v. Grosvenor, 1 Holmes, 218, 1873.

Agawam Co. v. Jordan, 7 Wallace, 583, 1868.

8 16 Statutes at Large, Ch. 230, Section 63. p. 208; Revised Statutes, Section 4924.

Commissioner, relevant to the existence of his jurisdiction, was never conclusive in any case.' The validity of a Patent Office extension, is therefore open to inquiry in an infringement suit, when it is questioned on the theory that the person who applied for it, was not such a person as had the legal right to do so. In deciding that question, however, the courts regard with respect the practical construction of the statute, which was necessarily involved in the granting of the extension. Indeed the Supreme Court has held that the practical construction given to a statute, by the executive branch of the government charged with its execution, is entitled to great weight, when the true meaning of that statute is drawn into judicial inquiry.'

$267. The meritorious facts which entitled an inventorpatentee to a Patent Office extension were that, without fault or neglect on his part, he had failed to obtain from the use and sale of his invention, a reasonable remuneration for the time, ingenuity, and expense bestowed upon it, and upon its introduction into public use. Unlike the foundation facts which entitle a patentee to a reissue, these points are not required by the statute to exist absolutely. The statutory provision is that they shall appear to the satisfaction of the Commissioner of Patents. It is therefore immaterial whether the courts are satisfied of their existence or not. The fact that a particular extension was granted, shows that the Commissioner was satisfied of the existence of those facts in that case; and evidence that they did not in fact exist, is therefore inadmissible in a suit for infringement of the patent during that extension."

§ 268. The statute made it the duty of the Commissioner to advertise all applications for extensions, and to refer such cases to the principal examiner having in charge the class of

1 Wilson v. Rousseau, 4 Howard, 687, 1846.

Brooks. Bicknell, 3 McLean, 250, 1843.

Grant v. Raymond, 6 Peters, 244, 1832.

4 Patent Act of 1836, Section 18; Patent Act of 1870, Section 66; Revised Statutes, Section 4927.

5 Clum v. Brewer, 2 Curtis, 506, 1855; Jordan v. Dobson, 2 Abbott, 408, 1870.

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