sale 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 proceedings had, obtain
a patent therefor."
The effect of the two amendments made by the act of 1897 should first be noted: (i.) The old law failed to state at what time the invention should be known or used by others in America so as to bar a patent; whether before the application or before the invention. This ambiguity is removed by the use of the words " before his invention or discovery thereof." (ii.) Under the old law a foreign patentee could take out a patent in America for the same invention at any time during the life of the foreign patent, provided it had not been in use in America more than two years prior to his application, unless anticipated by a prior invention or publication. The words " or more than two years prior to his application, " merely give the same force to a foreign patent or publication that had previously been given to prior use. An invention to be patentable must, according to American law, be both novel and useful. Utility may be evidence of novelty and vice versa, and commercial success is relevant evidence of utility. As in England, a bare principle is not patentable. A " process " is included under the words " useful art " in the above definition of patent ability, and is good subject matter for a patent when the term is used to represent a practical method of producing a beneficial result or effect. The word " machine " in the definition includes every mechanical device or combination of devices for producing certain results. Such a device or combination is patentable when it possesses utility and novelty, and produces either a new result or an old result in a better form.
Under the law of 1790, which was exclusively American in spirit, the duty of granting letters patent for inventions was discharged by the secretary of state, the secretary of war and the attorney general, or any two of them. The law from 1793 to 1836 was exclusively English in spirit, and during that period the duty fell to the secretary of state, subject to the attorney-general's approval. It was in 1837 that the marked divergence between the English and American patent system began. In that year the patent business of the United States had attained to such dimensions that the powers and duties of the secretary of state in regard to patents were transferred to a sub-department of the state department known as the Patent Office. The American Patent Office consists of a commissioner of patents, one assistant commissioner, and three examiners-in-chief, who are appointed by the President of the United States with the advice and consent of the Senate; and also of other examiners, and a staff of officers, clerks and employes, appointed by the secretary of the interior on the nomination of the commissioner of patents. The commissioner of patents, under the direction of the secretary of the interior, is charged with the superintendence or performance of all duties respecting the grant and issue of patents, and has the control and custody of all books, records, papers, &c., belonging to the Patent Office. He is authorized to make, from time to time, regulations not inconsistent with law, for the conduct of proceedings in the Patent Office, and prepares an annual report which is laid before Congress, and which is framed on the same lines as that of the comptroller-general in England. " He is the final judge, so far as the Patent Office is concerned, of all controverted questions arising in the office, and in granting or withholding patents he is not b)ound by the decisions of his inferiors " (Robinson on Patents, i. 84). The examiner sin-chief are required to l>e persons of competent legal knowledge and ability. Their duties are: On the written petition of inventors to revise and determine upon the validity of the adverse decisions of subordinate examiners, upon applications for patents, and for reissues of patents, and in interference cases, and when required by the commissioner of patents to hear and report upon claims for extension, and to do such other similar work as he may assign to them. The Patent Office publishes an Official Gazette corresponding to the English Patent Office Illustrated Journal, and discharges similar functions to those of the English Patent Office in regard to the public dissemination of information as to patented inventions. The number of original applications for patents in the period covered by the report of the commissioner of patents for 1906-1907 was 58,762; the number of patents granted was 36,620; the receipts amounted to $1,910,618, the expenditure to $1,631,458, leaving a surplus of $279,160.
The first step in the procedure to obtain a patent is the lodging by the inventor at the Patent Office of a written application, together with a specification of particular written description of his mvention, and a claim distinctly pointing out and claiming what he alleges to be his invention or discovery. The specification and claim are signed by the inventor and attested by two witnesses. Drawings, specimens of ingredients, and models may be required to be furnished. On the filing of each original application for a patent, a fee of $15 is payable. The applicant is required to verify his claim to the invention on oath, taken, if he resides within the United States, before any person authorized by American law to administer oaths; if he resides in a foreign country, before any diplomatic or commercial agent of the United States, or any notary public of the foreign country in which the applicant may
be. The commissioner of patents then causes an examination to be made into the novelty of the invention, and if the result is satisfactory the patent issues. On the issuing of each original patent, a fee of $20 is payable. A patent is issued in the name of the United States of America and under the seal of the Patent Office. It consists of a short title or description of the invention or discovery, correctly indicating its nature and design, and a grant to the patentee, his heirs and assigns. Patents, it may be observed in passing, may be granted and issued or reissued to the assignee of the inventor or discoverer, and every patent or any interest in it is assignable, the assignment being recorded in the Patent Office, for the term of seventeen years, of the exclusive right to make use of and vend the invention or discover throughout the United States and the territories thereof. The rights of property in patents granted in Cuba, Porto Rico, the Philippines and other ceded territory under Spanish law are to be respected in those territories as if that law were still in force there. A patent is dated as of a day not later than three months from the time at which it was passed, and if the fee is not paid within six months the patent is withheld. In case, however, the issue of a patent has been prevented by a failure to pay the fee within the prescribed period, the application may be renewed within 2 years after the allowance of the original application. But the applicant has no right to damages for any use of the invention in the interval, and on the hearing of the renewed application abandonment may be considered as a question of fact. So far we have followed the procedure to obtain a patent where its course is uninterrupted. A double form of interruption is, however, possible. A claim for a patent may be rejected on the ground of want of novelty in the alleged invention. In this case, the fact of the rejection, together with the reasons for it, is communicated to the applicant by the commissioner; and if he persists in his claim a re-examination is ordered. Or, again, an application may appear to the commissioner to interfere with a pending application, or with any expired patent. In these circumstances, he gives notice to the applicant, and directs the primary examiner to proceed to determine the question of priority of invention. This interruption of the course of the proceedings to obtain a patent is called an " interference." In either of the cases above mentioned an appeal lies, on payment of a fee of $10, from the primary examiner to the board of examiners-in-chief, and, on payment of a fee of $20, from the examiners-in-chief to the commissioner in person. An applicant for a patent, but not a party to an interference, may appeal from the decision of the commissioner to the supreme court of the District of Columbia sitting in banc. In interference cases the appeal lies to the District of Columbia qourt of appeals. There is an ultimate right of appeal, in cases involving the validity of a patent, to the Supreme Court of the United States. Patents are obtainable by bill in equity, although the commissioner of patents (or, on appeal, the supreme court of the District of Columbia) may have refused them. The circuit courts of the United States have original jurisdiction in all patent suits. Appellate jurisdiction is vested in the circuit court of appeals; and on the certificate of that court, or by certiorari, an appeal may be brought to the Supreme Court of the United States.
Section 4887 of the revised statutes provides that:-
"No person otherwise^ entitled thereto shall be debarred from receiving a patent for his invention or discovery, nor shall any patent be declared invalid by reason of its having been first patented or caused to be patented by the inventor or his legal representatives or assigns in a foreign country, unless the application for the said foreign patent was filed more than seven months prior to the filing of the application in this country, in which case no patent shall be granted m this country."
The words italicized in the above section were added by an Amending Act of the 3rd of March 1897. In its original form the section provided that no person should be debarred from receiving a patent because the invention was first patented in a foreign country, whether he was otherwise entitled to the patent or not. The words " otherwise entitled to " merely postulate that no other bar to the issue of the patent shall exist. The words " by the inventor or his legal representatives or assigns " safeguard the inventor to some extent against fraud by third parties; while the provision requiring the application in the United States to be filed within seven months of the filing of the foreign patent is intended to carry out the provisions of the International Convention. It should be noted that the duration of an American patent for an invention already patented abroad is no longer limited by that of the prior foreign patent, but is granted for 17 years from the date of issue.
Patented articles are required to be marked as such, either by the word " patented, " together with the day and the year the patent was granted, being affixed to them, or, when from the character of the article this cannot be done, by fixing to it, on the package containing one or more of such articles, a label containing the like
A citizen of the United States, or an alien who has within the preceding twelve months given notice of his intention to become one, may, by filing in the Patent Office a " caveat, " the fee for which is $10, secure for himself notice of possibly conflicting applications.
