Abbildungen der Seite

ent when it is remembered that the consideration passing from the inventor to the public, for which a patent is granted, is the making and disclosure of an invention. The word disclosure argues a full and candid imparting of all the knowledge necessary to enable others to carry the invention into effect as fully and effectually as the inventor himself; otherwise he has not given the consideration required of him, and therefore his patent is not good. Thus, in the words of our law, “the inventor is required to file in the Patent Office a written description of his invention, and of the manner and process of making, constructing, compounding, and using the same, in su clear, full, and concise and exact terms as to enable any person skilled in the art or science to which it appertains, or with which it is most nearly connected, to make, construct, compound, and use the same.” A patent, then, is not valid if essential information is omitted, or if anything be so scantily, obscurely, or unintelligibly stated that the whole description taken together is not sufficient to guide those skilled in the art to a correct and beneficial use of the invention. How likely such defects are to exist where an uninformed inventor has attempted to draw his own description, or has employed an incompetent attorney to do it for him, can readily be apprehended. The right of reissue enables a patentee so to correct or amplify his description as that

it shall present a fair and faithful performance of his contract with the public, and so his privilege will be saved to him.

Still another end, beneficial to inventors, is served by the power of reissue.

It is essential to the faithful performance by the inventor of his part of the contract between the public and himself that he should clearly and candidly state what it is that he claims to be his invention, so that the public may be fully advised, from his own statement, of the extent of his right; or, as the law has it, he must “particularly point out and distinctly claim the part, improvement, or combination, which he claims as his invention or discovery."

What is termed the specification comprises the description and this necessary claim, which latter is to be construed with reference to the description. The courts, therefore, thus construing the claim, will always, if possible, give it meaning and effect; and meaning and effect the very fullest,-consistent with the patentee's apparent right,--that by the light which the description affords, they can give it. For not only will they endeavor so to construe the patent that it shall stand; but, if possible, so that it shall be effective to protect the whole of the patentee's apparent invention. But, in doing this, they cannot of course go beyond what appears on the face of the

patent. Their liberality must be bounded by the actual contents of the specification. By a liberal construction of the whole document together they can give definite significance to an apparently obscure claim, or give wider meaning to an apparently limited claim, than if it were taken by itself its mere language would imply. But they cannot supply omissions, or construe the patent to cover that which is not directly or indirectly claimed.

Now it may happen, and frequently does happen, that an inventor inadvertently omits such reference in his description or claim to some material and substantial part of his invention as would warranta judicial construction of his patent as covering that part. This then is a case where the patent, by reason of a defective and insufficient specification, is inoperative to give an exclusive right to the actual invention. In such event the patentee may surrender his patent and take a new, or as it is termed, a reissue patent upon an amended specification, which shall distinctly specify and claim the whole of the actual invention shown, but not claimed in the original patent.

Again it sometimes happens that one patent has been made to embrace several distinct patentable improvements, each of which might have been made the subject of a distinct patent, and it may become proper and desirable thus to separate them. For this the law provides

that the Commissioner may in his discretion cause several patents to be issued for distinct and separate parts of the thing patented, upon demand of the applicant, and the payment of the required fee for a reissue, for each of such reissued letters-patent.

It is careful'y to be borne in mind that the legitimate object of a reissue is simply to correct that wherein the original patent was defective, more fully or correctly to describe or claim the whole of that invention which the original patent should have described or claimed. The words of the law are that the Commissioner shall, on the surrender of a patent, and payment of the required duty, cause a new patent for the same invention, and in accordance with the corrected specifications, to be issued; and it is distinctly provided that no new matter shall be introduced into the specification. This term, new matter, has reference not to mere language, but to substance. Such changes oramplifications of language may be made as are necessary to effect the legitimate object, the correction of that wherein the original patent was defective, whether in description, or in claim.

But no new or changed feature of invention can be introduced, because the reissue patent is to be for the identical thing which constituted the actual invention of the patentee when he applied for his original patent, and for which that patent would then have been granted had the descrip

tion or claim not been defective or and covering whatever was valuable insufficient.

in the later patent. This species of The nature and object of reissues reissue became a weapon wherewith have been greatly misunderstood, to embarrass and levy blackmail and what is intended as a remedial upon meritorious patentees and measure in favor of the rights of manufacturers, and either to cut off inventors was, until very recently, or compel a division of the hardoftentimes perverted into a means earned fruits of their ingenuity, or for unlawfully stretching the ap of their enterprise and invested parent scope of patents beyond the capital. true invention, and thus imposing This had the effect too of casting upon and injuring the public.

a taint of suspicion upon reissues This was effected, sometimes by generally, to the great injury of basing upon such rudimentary traces bona fide meritorious inventors. of important principles as might It was found necessary to cast be found in a patented invention, some restraints upon the grant of broad and sweeping claims couched reissues, so as to put a stop to this in language designed, in effect, to mischievous practice. cover any known application of such Whereas, therefore, previous to principles to a like purpose, and the passage of the last act (July, sometimes by a deliberate interpola 1870), reissues might be obtained by tion in the amended specification of the assignees of patents without new matter not to be found in the any reference to the original patoriginal patent at all.

entees whatever, it is now required Under careless and incompetent by Sec. 33, that though patents may administrations this evil practice

be reissued to assignees, yet the apgrew, until it had assumed alarming plication must be made, and the proportions. No sooner did a patent new specification sworn to by the for some really useful invention be inventor or discoverer, who may come remunerative, and so draw reasonably be supposed to know attention, than it became the object

best what his own actual inyenof the greedy and unscrupulous to

tion was, and to be the least likely find some old patent worthless in person to make false or rash repitself, and purchasable for a song,


in regard thereto, but in which might be found some while the doubt whether the patrude embryonic traces of the princi entee will prove a complacent tool, ples involved in the valuable patent. must tend greatly to check and Then a reissue was obtained, and lessen the speculation which forall the ingenuity of language was merly traded in old patents, for no called into play to give this reissue better purpose than the obtaining the apparent effect of anticipating of brummagem reissues. This pro

vision, however, is not applicable to patents assigned previous to July, 1870. This requirement of the law has been somewhat complained of, on the ground that it places assignees of patents too much at the mercy of patentees, and enables the latter, should they be so disposed, to levy blackmail upon those who have already paid them for the property, the title to which it may be found necessary to better by reissue. There may be some ground for this, but the apprehended evil seems to be one which the exercise of proper discretion and care will prevent. More caution than was formerly exercised by purchasers of patents will certainly be required under the present state of the law : this, however, is a material advantage, for the caution required of purchasers must necessarily reflect itself in greater caution upon the part of patentees in the mode of obtaining their patents, since imperfect patents will be found less available commercially.

The same causes (the creation of a spirit of inquiry and discrimination as to patents) which will check the trading in patents for mere speculative purposes, will ultimately serve to check, to some extent, at least, the practices of that class of men, who, under too lax a state of the law, undeservedly flourish, and who may be termed professional patentees; men who, without any merit as inventors, find in small patents a ready means of supplying their

pockets, at the expense of the public. While it would be impolitic and wrong to make any distinctions as regards title to the benefit of the patent law, between inventions of different degrees of apparent importance, it is both politic and right to establish any measures which will be likely to raise the general standard of patents in point of legal value. This is not more to the interests of the public, than it is to the true interest of bonâ fide inventors. Any measure, therefore, which, while it does not tend to work any real hardship to patentees or patent owners, yet tends to impress upon inventors the necessity in their own interest of exercising circumspection in drawing their specifications, is beneficial, and as such a measure may this touching reissues be regarded.

When the patent has been assigned, and there are several assignees, they must all be assenting parties to an application for a reissue.

It is also distinctly specified by the letter of the last act that "no new matter shall be introduced into the specification; nor in case of a machine patent shall the model or drawings be amended, except each by the other."

This proviso, however, is added : “But, where there is neither model nor drawing, amendments may be made, upon proof satisfactory to the Commissioner that such new matter or amendment was a part of the

original patent was inoperative and invalid, is of course an abandonment.



original invention, and was omitted from the specification by inadvertence, accident, or mistake, as aforesaid."

The wisdom of this last provision, or of the admission under any circumstances of extrinsic evidence in applications for reissue, may be doubted. Bonâ fide cases for the exercise of this rather sweeping discretion by the Commissioner, must be comparatively very rare, and the measure might seem fairly obnoxious to the charge of extending temptation for much misrepresentation and imposition, without the likelihood of working any very material measure of justice.

As a further necessary check upon the grant of reissues, the law requires that applications therefor shall be subject to revision and restriction, in the same manner as original applications are.

As the surrender of an original patent does not take effect until the issue of the amended patent, if application for the latter be refused and withdrawn, the original remains in force.

It is provided that a reissue patent, with its corrected specification, shall have the effect and operation in law, on the trial of all actions for causes thereafter arising, as though the same had been originally filed in such corrected form. Of causes of action under the original patent, the surrender and reissue, since it involves a distinct avowal by the patentee that such

In this, our concluding chapter, we shall refer briefly to those provisions of our patent law which in the preceding chapter have escaped notice.

It is, perhaps, one of the most striking illustrations of the difference in spirit and principle between our patent law and that of England, that whereas in the latter the patentee's right rests upon his being first to disclose the invention to the public by his patent, with us the question of right is determined by reference to the date of invention. The inquiry is, who first made, not who first disclosed to the public, an invention which may be in dispute.

Under our law an inventor does not lose his rights merely by public use or sale of his invention during a period not exceeding two years prior to his application for a patent. It may be questioned, perhaps, whether this two years grace be not too great a stretch of liberality; certainly, however, it allows time, which in most cases would be ample either for ascertaining practically the positive and relative utility of an idea, or for obtaining that pecuniary aid which a poor inventor may need for

« ZurückWeiter »