ings in court, may be administered by referees, or by officers authorized to administer oaths in proceedings before United States courts, or under the laws of the State where the oath is to be taken, or by diplomatic or consular officers of the United States in any foreign country. (§ 20.)

XVII. DEFINITIONS.

In addition to definitions given above (Adjudication, Preference, Insolvency, etc.), and the usual enactments that singular includes plural, and vice versa, masculine includes feminine, etc., the following special definitions may properly be noted. For other definitions, see § 1 of the Act.

Corporations cover all bodies having any of the powers and privileges of private corporations not possessed by individuals or partnerships, and include limited or other partnerships whose subscribed capital is alone responsible for debts.

Creditors may include an authorized agent, attorney, or proxy.

Holiday includes Christmas, July 4, February 22, and any day appointed by the president or congress as a holiday, or a day of public fasting or thanksgiving.

Person includes corporations, except where otherwise specified, and officers, partnerships, and women; when used with reference to acts herein forbidden, it includes all participants in the forbidden acts, and the agents, officers, and members of the controlling bodies of corporations.

Conceal includes secrete, falsify, and mutilate.

Secured Creditor includes one who has security on the bankrupt's property of a nature to be assignable under this Act, or who owns a debt for which some person secondarily liable for the bankrupt has such security upon his property.

Transfer includes sale and every other mode of disposing of or parting with property, or possession of property, absolutely or conditionally, as payment, pledge, mortgage, gift, or security.

Wage-earner means an individual who works for wages, salary, or hire, at a rate of compensation not exceeding fifteen hundred dollars per year.

In computing time by number of days, the first day is excluded and the last included, unless the last fall on a Sunday or holiday, in which case the day last included is the next day thereafter which is not a Sunday or a holiday. (§ 3.)

XVIII. TIME OF TAKING EFFECT AND RULES OF PROCEDURE. (a.) The Act provides that it shall go into full force and effect upon its passage, but that no voluntary petition shall be filed within one month, and no involuntary petition within four months of the passage. Proceedings commenced under state insolvency laws before the passage of the Act are not affected by it. (Schedule.)

The Act was approved July 1, 1898.

(b.) All necessary rules, forms, and orders as to procedure for carrying the Act into effect are prescribed, and from time to time amended, by the United States supreme court. (§ 30.)

(c.) The various amendments in force February 5, 1903, do not apply to proceedings pending at that date. In such cases consult synopsis in Directory of 1902–3.

SYNOPSIS OF

PATENT LAWS OF THE UNITED STATES.

PREPARED EXPRESSLY FOR HUBBELL'S LEGAL DIRECTORY, DECEMBER 1, 1906, BY STEUART AND STEUART,

OF THE NEW YORK AND BALTIMORE BARS.

The Patent Laws of the United States are contained in sections 440, 475-496, 629, 690, 711, 892-894, 973, 1538, 1673, 4883-4936 of the Revised Statutes of the United States, and section 780, Revised Statutes, relative to the District of Columbia and act of March 3, 1897. These laws were passed by Congress under the authority of clause 8, section 8, of Article I. of the Constitution, which is as follows: The Congress shall have power... to promote the progress of science and useful arts by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.

Cbject of Patent Law."It is the spirit of the patent law to encourage those who develop these improvements and to keep this people in the van of industrial development. Remove this hope and inspiration and the American workman will become a soulless automaton with no more ambition than the tools of iron and brass with which he works." Coxe, J., in McMichael v. Stafford, 105 F. R. 383.

Before examining the provisions of these laws in detail, it will be well to notice an important fact not always understood by inventors. Section 4888 of the Revised Statutes contains the following clause: An inventor "shall particularly point out and distinctly claim the part, improvement, or combination that he claims as his invention or discovery. The supreme court of the United States, in considering this clause of the statute, has held, that when an inventor takes his patent he must see to it that his invention is "particularly pointed out and distinctly claimed," and if for any cause, ignorance of the requirements, or the employment of an incompetent or unconscientious solicitor, he takes a badly drawn claim, which when critically examined prove to be incapable of sustaining the monopoly of his invention, he is powerless to remedy it. He has had his opportunity to stake off his boundaries, and, after having done so and advertised the same to the world, he will not be permitted to alter them for any cause, except by reissue in rare cases. In the case of The Keystone Bridge Co. v. The Phenix Iron Co. 95 U. S. 274 (1877), Mr. Justice Bradley, in delivering the opinion of the court, makes use of the following language: "Since the act of 1836 the patent laws require that an applicant for a patent shall not only by a specification in writing fully explain his invention, but that he shall particularly specify and point out the part, improvement, or combination which he claims as his own invention or discovery. This provision was inserted in the law for the purpose of relieving the courts from the duty of ascertaining the exact invention of the patentee by inference and conjecture, derived from a laborious examination of previous inventions and a comparison thereof with that claimed by him. This duty is now cast upon the patent office. There his claim is, or is supposed to be, examined, scrutinized, limited, and made to conform to what he is entitled to. If the office refuses to allow him all that he asks, he has an appeal. But the courts have no right to enlarge a patent beyond the scope of its claims as allowed by the patent office, or the appellate tribunal to which contested applications are referred. When the terms of a claim in a patent are clear and distinct (as they always should be), the patentee in a suit brought upon the patent is bound by it. Merrill v. Yeoman, 94 U. S. 573. He can claim nothing beyond it. Peifer v. Brown 106 F. R. 938. But the defendant may at all times, under proper pleadings, resort to prior use, and the general history of the art, to assail the validity of a patent or to restrain its construction. The door is then open to the plaintiff to resort to the same kind of evidence in rebuttal, but he can never go beyond his claim. As patents are procured ex parte, the public are not bound by them, but the patentees are. And the latter cannot show that their invention is broader than the terms of their claims; or, if broader, they must be held to have surrendered the surplus to the public." It thus appears that the patentee has nothing to expect at the hands of the courts when he has taken a claim that is narrower than his invention, or that does not properly describe it. White v. Dunbar, 119 U. S. 47, 52; Sutler v. Robinson, 119 U. S. 530; Brag v. Fitch, 121 U. S. 478; Snow v. Lake Shore Railway Co. 121 U. S. 617; Reese Button Hole Ma. Co. v. Globe Button Hole Ma. Co. 61 F. R. 958.

Abandonment.-1. Of Invention prior to Patent. Sec. 4886 R. S., amended by act of March 3, 1897 (in effect January 1, 1898), provides that "Any person who has invented or discovered any new and useful art, machine, manufacture, or composition of

matter, or any new and useful improvements thereof, not known or used by others in this country, before his invention or discovery thereof, and not patented or described in any printed publication in this or any foreign country, before his invention or discovery thereof, or more than two years prior to his application, and not in public use or on sale in this country for more than two years prior to his application, unless the same is proved to have been abandoned, may, upon payment of the fees required by law, and other due proceeding had, obtain a patent therefor." Sec. 4920, as amended by the same act, clause third, provides as one of the defenses which a defendant may rely upon, "That it (the invention sued upon) has been patented or described in some printed publication prior to his supposed invention or discovery thereof, or more than two years prior to his application for a patent therefor." This act enlarges the defenses which may be made to an application for a patent or to a suit upon a patent, and makes it a valid objection or a good defense, that the invention patented or sought to be patented had been described in a printed publication two years prior to the application for a patent. This publication may have been the inventor's own publication; but if the inventor has waited more than two years after such a publication to file his application he will be denied a patent if the publication comes to the knowledge of the office, or the patent will be declared void by a court, if the publication escapes the office, but is pleaded in a suit for infringement. The public use that will defeat an application for a patent, or void it if granted, is independent of the consent of the inventor, but must be a use that is not experimental. Andrews v. Hovey, 123 U. S. 267; 124 U. S. 694, the Driven-Well Case. Experimental use, although necessarily public, will not amount to abandonment, "but if the use be as a matter of fact public, and the invention was completed and in use for more than two years, the court may hold as a conclusion from the facts that the invention was abandoned, notwithstanding the fact that the inventor intended the use to be experimental. Root v. Third Ave. R. 146 U. S. 210; Nicholson Pavement Co. v. City of Elizabeth, 97 U. S. 126; Graham v. McCormick, 5 Ban. & Arden, 244 (1880); Henry v. Soapstone Co. 5 Ban. & Arden, 108 (1880). Failure to make application for a patent for an invention until after another inventor has made application or secured a patent will frequently amount to abandonment, although the invention may have been kept secret. Ranson v. Mayor of New York, 1 Fisher, 252; Wester v. Sanford, 44 O. G. 567; Brown v. Guild, 23 Wall. 181; Beach v. Fowler, 48 O. G. 821; Green v Hall et al. 47 O. G. 1631; American Bell Telephone Co. v. Cushman Telephone Co. 45 O. G. 1191; Green v. Hall, 46 O. G. 1515.

2. Of Invention when not claimed in Patent.

- An invention described but not claimed in a patent is considered abandoned to the public, and it is doubtful whether it can be recovered by reissue, although applied for immediately upon the issue of the patent, unless the omission to claim the whole invention was the result of pure accident or mistake and not the result of an error of judgment. Topliff r. Topliff 145 U. S. 171. Description of an invention in a patent in which it is not claimed may or may not constitute an abandonment. 1. It will constitute an abandonment when the invention is such that a separate patent could not be obtained for it. A subsequent valid patent may, however, issue for a generic claim covering and controlling this specific structure as well as other specific structures embodying the invention. "A patent for a generic invention is not avoided by the fact that a prior patent has been issued for a distinct improvement on that invention, provided always that the language of the application for the first patent and the circumstances of filing it are not such as to dedicate the generic invention to the public." Westinghouse Electric Co. v. Dayton Fan Co. 106 F. R. 726; Miller v. Eagle Manuf. Co. 151 U. S. 196; Deering v. Winona Harvester Co. 156 U. S. 286; Fassett v. Ewart, 58 F. R. 360. 2. It will not constitute an abandonment when the invention is one so different from the invention which is the subject of the patent that it could not have been claimed in said patent, but would in any event have required a separate application. Thomson-Houston Electric Co. v. Ohio Brass Company, 80 F. R. 728, July 6, 1897 (C. C. A., J. Taft). It is, of course, true that if an improvement is an invention, separable from the generic invention, the latter is an invention distinct and separable from the improvement. Hence it follows from the propositions above quoted from the opinion in the case of Miller v. Manuf. Co. that a patent for a generic invention is not avoided by the fact that a prior patent has been issued for a distinct improvemement on that invention, provided always that the language of the application for the first patent and the circumstances of filing it are not such as to dedicate the generic invention to the public. Thomson-Houston Electric Co. v. Elmira & H. Ry. Co. 18 C. C. A. 145, 71 F. R. 396, affirming 66 F. R. 257; Ex parte Mullen v. Mullen, 50 O. G. 838 (1890); Keystone Bridge Co. v. Phenix Iron Co. 95 U. S. 274; Mahn v. Harwood, 112 U. S. 354; Ex parte Mahnken, 40 O. G. 915, and 41 O. G. 1269. But see Parker & Whipple Co. v. Yale Lock Co. 123 U. S. 87; Eastern Paper Bag Co. r. Standard Paper Bag Co. 30 Fed. Rep. 65 (1887). Invention not claimed, Grant v. Walter, 47 O). G. 1220; Burr e. Duryee, 1 Wall. 531; James v. Campbell, 104 U. S. 356; Ex parte Johnson, 46 O. G. 1641; McDonough v. Gray, 46 O. G. 1245; Eastern Paper Bag Co. v. Nixon, 45 O. G. 1571; Westinghouse Electric Co. v. Sun Electric Co. 45 O. G. 710. Invention described but not claimed is presumed to have been abandoned to the public. Am. Soda Fountain Co. r. Zwietusch, 53 U. S. App. 723.

3. Of Rights under Patent after Issue.. Abandonment of patents by acts committed after issue seldom if ever occurs. Delay in suing not. Masseth v. Johnson, 59 F. R. 613; Taylor r. Sawyer, 75 F. R. 301. A patentee may, however, by his own act estop himself

from claiming damages against individual infringers; but in these cases the proof must be very clear and conclusive. Downton v. Yeager Milling Co. 1 McCrary, 26 (1880); Downton . Yeager Milling Co. 3 McCrary, 414 (1879); McMillan v. Barkley, 3 Pittsb. 377 (1871); McCormick v. Howard, 1 McArthur's P. C. 238 (1853).

Accounting. When a patent is sustained and an order issues for an account of profits and damages, the order also refers the case to a master in chancery, with power to hear such testimony as may be produced before him and state an account of the profits of the defendant and damages of the complainant. In doing so, the master may take into consideration the following elements of profit to the defendant: 1. The profit of defendant due to the use of the invention. 2. The saving of defendant due to the use of the invention. In considering these questions it is the duty of the master to ascertain if possible, from the evidence, whether the invention is an improvement upon old parts of the machine in controversy or the prior state of the art relating thereto, and if he find that it is an improvement he must, if possible, divide the profit due to the old part from that due to the new part. If he cannot do this, owing to the deficiency of the plaintiff's evidence, he must find only nominal profits. McCreary v. Pa. Canal Co. 141 U. S. 459. If he finds that the invention is an entirety, or that the patented feature gives the entire value to the machine, then he may allow to the plaintiff the entire profit of the defendant. Keystone Manuf. Co. v. Adams, 151 U. S. 139; Warren v. Keep, 156 U. S. 265. He may also consider the following elements of damage to the complainants: 1. The damage to the plaintiff by sales made by defendant, which plaintiff would have made but for infringement. 2. The damage to plaintiff from reduction of price forced upon him by competition of defendant. Yale Lock Co. v. Sargent, 117 U. S. 536. Tatum v. Gregory, 49 F. R. 747; Sessions v. Romadka, 145 U. S. 28. (Plaintiff cannot recover both profits aud damages.) The profit may be reduced by, first, the outlay of defendant; Seabury v. Am Eude, 152 U. S. 561; second, compensation for the time of defendant. When the master reaches a conclusion and makes a report to the court, his report is subject to exceptions, and will be sustained, modified, or overruled, as the court may think right and proper.

Acquiescence. Working License. See Licenses, 2.

Actions. Exclusive Jurisdiction of United States Courts in Direct Actions, and State Courts in Collateral Questions. Actions at law or in equity relative to patents, and in which the construction, validity, or infringement of a patent is involved, are solely within the jurisdiction of the United States courts, while cases which involve a patent collaterally only, affecting the title to the patent, contracts relative to interests in or rights under it, such as licenses, are exclusively within the jurisdiction of the state courts. Hartell v. Tilghman, 99 U. S. 547 (1878); The Moses Taylor, 4 Wall. 426 (1866); Gaines v. Fuentes, 92 U. S. 17; Brown v. Shannon, 20 How. 56 (1857); Albright v. Teas, 106 U. S. 613 (1882); Wilson v. Sanford, 10 How. 101 (1850).

Actions at Law.-Sec Measure of Damages. R. S. 4919 prescribes an action of trespass on the case as the form of action to be employed when suits are brought at law for the infringement of a patent. In States where the common law forms of action have been abolished and a code form adopted, the common law forms of action on the case should be assimilated as far as possible to the state forms of the same class of action. Celluloid Manuf. Co. v. Zylonite Co. 34 F. R. 744; Myers v. Cunningham, 44 F. R. 346; May v. Mercer, 30 F. R. 246; Marvin v. Aultman, 46 F. R. 339. All actions brought for the recovery of profits or damages which are instituted after the expiration of a patent must be brought at law; Root v. Railroad Co. 105 U. S. 189; and actions at law brought for the recovery of damages for infringement committed prior to an assignment of a patent must be brought in the name of the owner of the patent at the time the infringement was committed, and this regardless of who may own the causes of action at the time suit is brought. Moore v. Marsh, 7 Wall. 515 (1868).

-

Actions in Equity. - Bill and Answer· For Infringement Present and Past. The usual form of action employed in seeking relief for infringement of a patent is by bill in equity, for the reason that the relief generally sought is an injunction and an account of profits. Bills in equity for infringement of a patent conform to the general rules of equity pleading, and must be brought in the names of all parties who own an undivided interest in the patent. They should claim profits and damages only during the ownership of the complainants, unless damages for infringements committed prior to the vesting of the title in complainants have been expressly assigned to complainants. Moore v. Marsh, 7 Wall. 515 (1868); Hamilton v. Rollins, 3 Ban. & Arden, 160 (1877); Hayward v. Andrews, 12 Fed. Rep. 786 (1882). Actions in equity can be instituted only during the life of the patent; after its expiration relief must be sought at law. Root v Railroad Co. 105 U. S. 189. bill to enjoin defendant from infringement of a patent, alleging invention, grant of patent, title of complainant and infringement by defendant, and praying for an injunction and an account of profits and damages, will be held bad on demurrer unless the bill also alleges that the patent has been previously adjudicated and sustained, or long public acquiescence; in fact, unless sufficient basis be shown for the issuance of a preliminary injunction. Germain v. Wilgus, 67 F. R. 597 (March, 1895). Aggregation. As distinguished from Combination. See Combination.

A

Aliens. Under the laws of the United States aliens have all the rights of a citizen of the United States, except that they are excluded from the operation of the caveat law. R. S. § 4902.

Answer. The answer to a bill in equity for the infringement of a patent must state all the defenses upon which defendant expects to rely, for the reason that at the hearing no matters of evidence will be considered, if objected to, which are not in proof of allegations of the answer. See Defenses.

Appeals. To Board of Examiners - To Commissioner — To Court of Appeals of the District of Columbia · To Circuit Court of Appeals from Circuit Courts-To Supreme Court. Appeals lie to the board of examiners in chief from the principal examiners in the patent office upon all questions involving the merits of an application for patent, the admissibility of an amendment, and application for reissue, and from the examiner of interferences in interference cases. The grounds for the appeal must be set forth in writing, and must be signed by applicant or his attorney. Patent Office Rule 133. When an appeal is taken to the board, the case must be ready for issue if the examiner be reversed. Appeals lie from the principal examiners to the commissioner of patents in all questions not involving the merits of a case, the admissibility of an amendment, or application for a reissue. See Rules 139 and 145. Applicant appealing to board is not required to do more than to state generally the points upon which he differs from the examiner. He need not embody a brief of his argument in his appeal. Ex parte Callahan, 50 O. G. 990. Appeals lie from the board of examiners in chief to the commissioner of patents in all cases. Appeals lie from the commissioner of patents to the court of appeals for the District of Columbia in all cases involving patentability of an invention and claims to patent by several parties for same invention. Act February 9, 1893, vol. 27, ch. 74, p. 434. Suits for infringement of patents are originally cognizable in the circuit courts of the United States, and from them an appeal lies in all cases, without regard to the amount in controversy, to the circuit courts of appeal of the United States, provided the appeal be taken within six months after final decree in the circuit court. The decision of the circuit court of appeals shall be final in all cases arising under the patent laws; excepting that in every subject within its appellate jurisdiction the circuit court of appeals at any time may certify to the supreme court of the United States any questions or propositions of law concerning which it desires the instruction of that court for its proper decision. And the supreme court may either give its instructions on the questions and propositions certified to it, which shall be binding upon the circuit court of appeals in such case, or it may require that the whole record and cause may be sent up to it for its consideration, and thereupon shall decide the whole matter in controversy in the same manner as if it had been brought there for review by writ of error or appeal; excepting, also, that in any such case as is hereinbefore made final in the circuit court of appeals, it shall be competent for the supreme court to require, by certiorari or otherwise, any such case to be certified to the supreme court for its review and determination, with the same power and authority in the case as if it had been carried by appeal or writ of error to the supreme court. Where, upon a hearing in equity in a circuit court, an injunction shall be granted or continued by an interlocutory order or decree in a cause in which an appeal from a final decree may be taken to the circuit court of appeals, an appeal may be taken from such interlocutory order or decree granting or continuing such injunction to the circuit court of appeals; provided, that the appeal must be taken within thirty days from that entry of such order or decree, and.it shall take precedence in the appellate court; and proceedings in other respects in the court below shall not be stayed unless otherwise ordered by the court during the precedency of such appeal. No appeal will lie from an interlocutory order "refusing, dissolving, or refusing to dissolve an injunction." Wire Co. v. Boyce, 104 F. R. 172 (C. C. A.); Westinghouse Air Brake Co. v. Christiensen Engineering Co. 104 F. R. 622 (C. C. A.); Omaha v. Chicago, 106 F. R. 586 (C. C. A.). No appeal or writ of error by which any order, judgment, or decree may be reviewed in the circuit court'of appeals shall be taken or sued out, except within six months from the entry of the order, judgment, or decree sought to be reviewed; provided, however, that in all cases in which a less time is now by law limited for appeals or writs of error, such limits of time shall apply to appeals or writs of error in such cases taken to or sued out from the circuit court of appeals. 26 St. at Large, ch. 517, p. 824; Richmond v. Atwood, 52 F. R. 10; Robinson v. Belt, 56 F. R. 328.

Application. Requisites. An application to be accepted by the patent office must contain: 1. A petition to the commissioner of patents to grant a patent, signed by applicant. 2. A full and complete specification of the invention, accompanied by suitable drawings illustrative of the invention, and concluding with claims which particularly point out and distinctly claim the invention sought to be patented, must be signed by applicant and attested by two witnesses. 3. An oath to the following facts: (a.) That applicant believes himself to be the original inventor of the thing for which patent is claimed. (b.) That he is sole inventor, or they are joint inventors. (c.) That the invention has not been patented to him, or to others with his knowledge and consent, in any country, or except in certain named countries, and that no applications for foreign patents have been filed for the invention more than seven months prior to the date of the oath. (d.) That the same has not to his knowledge been in public use or on sale for more than two years prior to his application. (e.) That he does not know and does not believe that the invention was ever known or used prior to his invention thereof. The oath must be signed by applicant and sealed by notary public. Kennedy v. Hazleton, 46 O. G. 973. Attorneys should not be witnesses. Art.- Process.-The word "art," section 4886, R. S. is defined to mean process; and " process is defined by the supreme court in Cochrane v. Deener, 94 U. S. 787, as