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the contrary, the first to seek the benefit of the law must be presumed to have the prior and better right. This presumption goes no further than to require that the later applicant must first prove a date for his invention anterior to the application of his opponent, before the latter need offer proof as to the date of his invention other than that which his application affords.
The general principles applied to the decision of priority, as between applicants for patents, are the same as in other cases. He will, as a rule, be held the first inventor, entitled to the benefit of the law, who being bonâ fide an inventor first reduced the invention to a practical form beneficial to the public.
As to the evidence which will suffice to prove invention, the rule would seem to be that the idea must have been so far reduced to practice as to have been illustrated or described in a mode sufficient to enable a person skilled in the art to which the invention may refer, to make or practice it, without calling for the exercise on his part of more than the ordinary skill of his trade. Less than this will not evidence a matured, and therefore patentable, invention ; such an invention as the law will protect.
It will be seen that the question of diligence”
" has a most material bearing upon that of “priority of right in law," and this matter of diligence enters not only into the reduction of an invention to prac
tice, but into the making and prosecution of application for a patent, wherever there is a question of right between independent inventors. Especially is this the case where one or other of the disputants is in possession of a patent obtained in good faith : the right of such a patentee will not be disturbed in favor of a slothful inventor, prior in point of conception, but who, after the grant of the patent to his competitor, of which as matter of public record he in common with the rest of the public is presumed to have knowledge, has unnecessarily delayed perfecting and adapting the invention to use, and presenting his claim.
It has been found necessary to spur the diligence of applicants for patents even in cases entirely ex parte by providing (Sec. 32) that all applications for patents shall be completed and prepared for examination within two years after the filing of the petition, and in default thereof, or upon failure of the applicant to prosecute the same within two years after any act therein, of which notice shall have been given to the applicant, they shall be regarded as abandoned by the parties thereto, unless it be shown to the satisfaction of the Commissioner that such delay was unavoidable.
If an applicant for a patent is not satisfied with the justice of a decision of the Commissioner of Patents, refusing him a patent, he may appeal to the Supreme Court of the
District of Columbia, which may that when an application for a patreverse the decision of the Commis ent is refused for any reason whatsioner. By the decision of the court, ever, either by the Commissioner, duly certified to and recorded in the or by the Supreme Court of the DisPatent Office, the further proceed trict of Columbia on appeal from the ings in that office are to be regula
Commissioner, the applicant may ted, and if no reasons are found for have remedy by bill in equity in a refusing a patent, beyond those court of the United States having raised and adjudicated in the ap cognizance of such cases under the peal, the Commissioner is bound by patent law; and the court upon a decision favorable to the appli notice to adverse parties, and other cant to issue a patent. But as the due proceedings had, may adjudge court is to consider the case, on the that such applicant is entitled, acevidence produced before the Commis cording to law, to receive a patent sioner, and its decision is confined for his invention, as specified in his to the points raised in the appeal, if claim, or for any part thereof, as the the Commissioner after such de facts in the case may appear. cision finds good reasons, not in This remedy by bill in equity is volved in the appeal, or depending applicable to all cases where a patupon new evidence not formerly be ent may have been refused. fore him, for still withholding the If the refusal has been on account patent, it is within his discretionary of an adverse decision by the Compower so to do. In other words, the missioner, in a case of interference, decision of the court upon appeal, if the party in whose favor the Comfavorable to the applicant, is not missioner's decision was rendered is that the Commissioner shall issue a entitled to notice, and to become a patent, but that he shall not with. party in the proceedings upon the hold it upon the grounds raised in bill. Where there is no opposing the appeal; and it might seem that party a copy of the bill is to be as often as the Commissioner may served on the Commissioner. refuse a patent upon new grounds, Proceedings under this section are the applicant may appeal to the not in the nature of an appeal, and court. The right of appeal to the are not to be governed by the eviSupreme Court of the District of dence in the case before the ComColumbia does not extend to parties missioner, but they are original in interference.
proceedings, in which such original The remedy of an inventor against evidence may be adduced as shall what he may consider an unjust re be considered essential to arriving fusal of a patent does not end even at a just decision. here.
An adjudication in favor of the Section 52 of the act provides applicant authorizes the Commis
sioner to issue such patent as it shall be decided the applicant is entitled to, upon the applicant filing in the Patent Office a copy of the adjudication, and otherwise complying with the provisions of the law.
It only remains now briefly to inquire as to the modes in which a remedy may be had for the infringement of a patent.
There are two ends which it is generally essential to the interests of a patentee he should have the means of accomplishing by resort to the courts,—a remedy for injury from past infringement, and the prevention of infringement in the future.
Damages for infringement may be had by action at law in the Circuit Courts of the United States, or those District Courts exercising circuit court jurisdiction. And as a check upon deliberate, wrongful infringements, the courts are empowered, “ whenever in any such action a verdict is rendered for the plaintiff, to enter judgment thereon for any sum above the amount found by the verdict as the actual damages sustained, according to the circumstances of the case, not exceeding three times the amount of such verdict, together with the costs. But this remedy at law is generally quite inadequate to the needs of patentees, since it does not prevent further infringement by the party sued, and for each new act of
infringement fresh suit must be brought. For the purpose of preventing further infringement, it is necessary to resort to proceedings in equity, which may be brought in the same courts. Section 55 of the law empowers the courts, upon bill in equity filed by any party aggrieved, to grant injunctions to prevent the violation of any right secured by patent, or such terms as the court may deem reasonable."
Injunctions are either temporary or perpetual. A temporary, injunction is one granted before a final hearing of the cause, and may be granted at the discretion of the court at any time after the filing of the bill, upon moticn, of which reasonable previous notice shall have been given to the defendant, accompanied by copies of the affidavits to be read in support of the motion.
A temporary injunction prohibits continuance of the infringement complained of in the bill until the question of the complainant's right under his patent shall have been tried, or until further order of the court.
It is a summary proceeding, in order to protect a patentee against the irreparable injury that might ensue to him by an unchecked continuance of infringement during the time necessary for bringing a cause to final hearing.
But as it is a proceeding tending to bind the rights of a defendant, before a fair and full trial has been had, and one which may work great, and, as it may prove, unwar
di lved at any time upon motion of the party enjoined, made after reasonable previous notice to the complainant, and supported by affidavits showing good and sufficient
ranted injury to the party enjoined, the courts exercise the power with great caution, and only where there has been exclusive possession under the patent for some years, with acquiescence of the public in the patentee's right, or where the patent has been previously judicially sustained after full trial at law or in equity ; nor will the power be exercised if the defendant, by affidavits, rebutting and overbearing the weight of those of the complainant, can throw reasonable doubt, on grounds not theretofore adjudicated, upon the patentee's title, or can indicate that he is not a mere wrongdoer, but has a good defence against the action. The court in granting a temporary injunction, may couple with the grant such conditions, either on one or on both sides, as under the circumstances of the case may seem reasonable ; or, it may allow the defendant to give security to keep an account of profits from the use of the invention, and this it will do, where it appears from the circumstances that in this way the interests of the patentee will be substantially protected, while an injunction would work disproportionate mischief to the defendant. A temporary injunction will not be granted where it appears that the patentee has not been diligent in seeking his remedy, but has allowed infringement to continue for a considerable period of time without taking steps to prevent it.
A temporary injunction may be
A perpetual injunction is one granted upon a decree in favor of the patentee after final hearing upon proofs and argument in equity, or after a judgment in favor of the patentee in a trial at law, and its effect is to enjoin the defendant from infringement during the term of the patent.
Formerly it was the practice here, as it still is in England, for the court in equity, when an application for an injunction raised disputed questions of fact affecting the patentee's title, to order a trial at law, that these questions of fact might be passed upon by a jury; but here, since patent causes, whether in law or in equity, are cognizable in the same court, and since it is competent for the court in equity to consider and determine all disputed points in such causes, whether of fact or of law, generally patent cases are now so tried and determined, upon proofs taken after the course in equity, before an examiner appointed by the court.
The questions of fact arising in patent causes are generally of such a nature that they may be determined much more speedily, readily, and satisfactorily by a judge than by a jury, and under the present law all the remedies which proceed
such an action, except he join with him the party or parties in whom the legal title to the patent is vested within the territory over which the court wherein the action is brought has jurisdiction. Actions for infringement must be brought during the term of the patent, or within six years after its expiry.
ings at law might afford a patentee for infringement of his right, he can obtain by proceedings in equity, while the latter will also afford him further remedy, very much more complete and beneficial than he could possibly obtain by proceedings at law.
“Upon a decree being rendered for infringement, the complainant shall be entitled to recover, in addition to the profits to be accounted for by the defendant, the damages the complainant has sustained thereby, and the court shall assess the same, or cause the same to be assessed under its direction, and the court shall have the same powers to increase the same, in its discretion, that are given by this act to increase the damages found by verdict in actions upon the case.” (Sec. 55.)
It is not necessary to sustain an action for infringement, that the whole of the invention patented should have been infringed, but remedy may be had for the infringe· ment of any material or substantial part thereof claimed.
Actions for infringement may be brought in the name of the owner or joint owners of the legal title to the patent throughout the whole of the United States, or within the particular part or portion of the United States in which the action is brought. A licensee cannot bring
CONCLUSION. At this point we close our brief summary of the general features of the Patent Laws of the United States, and with it the treatise.
As far as was possible, we have ranged the subjects together in such a way as to produce a connected review of the entire ground. Of course, there are many special matters of law and doctrine respecting patents which have not been touched upon, specialties out of place in a pamphlet avowedly devoted to a grouping of information of a merely general character.
As to those subjects which are treated more at length, we venture to express a hope that our endeavors plainly and concisely to illustrate the principles governing property in invention, will not be altogether ineffectual in throwing light upon matters which have heretofore, by so many minds, been but partially and obscurely understood.
H. & C. H.