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render the letters-patent, even though he secure them, mere worthless paper. In the United States the specification is referred to in the patent itself when granted, a copy being always annexed; and thus our rule, unlike that prevalent in England, is to construe patent and specification together, in order to ascertain the subject-matter of the invention; and the same is true of drawings annexed to the specification. Hence, the general terms of the patent, of which these form a part, may be controlled by the specification and its accompanying drawings.1

The leading objects of a specification are two, as writers on patent-law have shown: first, to inform the public what the thing really is of which the patentee claims to be the inventor and (during the existence of his patent) the exclusive owner; second, to enable the public, from the specification itself, to practise the invention so described after the patent has expired. To meet the first object, the specification ought to clearly present the subject-matter of the discovery or invention, not, indeed, with technical or scientific exactness necessarily, but in language reasonably accurate; distinguishing between the old and new with fulness sufficient to enable the court to understand what he claims to have first introduced, and avoiding that ambiguity and darkness of description, or misuse of terms, which, wherever found, most likely indicates that the patentee or his attorney groped in the dark for some patentable feature, without a clear idea whether the thing would bear a patent or not.3 To meet the second object, he should not omit any step or process in his specification which facilitates description, though in a long and complicated process this legal requirement would doubtless be liberally construed; he should make no false statements; nor should he so far conceal as in effect to cover up, instead of display, his invention, as an inventor is often

1 Act 1870, § 22; Curt. Pat. §§ 219221, and cases cited; Hogg v. Emerson, 6 How. 478; Turrill v. Michigan, &c. R. R., 1 Wall. 491.

2 Curt. Pat. § 228; Phillips Pat. 237; Evans v. Eaton, 7 Wheat. 356.

3 Curt. Pat. §§ 229-250, and cases cited; Prouty v. Ruggles, 16 Pet. 336; O'Reilly v. Morse, 15 How. 62; Blanchard v. Sprague, 2 Story, 164; Bright. Dig. "Patents."

strongly tempted to do where pecuniary success may depend largely on secrecy as to his process; and, in brief, the language of the specification should be such as to enable persons skilled in the particular art or science to apply the invention for themselves, without invention or addition of their own, or even repeated experiments. What the drawings or model might suggest is no part of the invention, apart from what the specification intended.2

§ 527. Patents; how issued; their Tenor. In this country, letters-patent or patents, as they are usually called — are issued in the name of the United States of America, under the seal of the Patent Office. They are signed by the Secretary of the Interior and countersigned by the Commissioner of Patents. And under existing statutes, patents are granted for the term of seventeen years to the patentee, his heirs or assigns, and confer "the exclusive right to make, use, and vend" the invention or discovery throughout the United States and the Territories thereof. Every patent dates as of a day not later than six months from the time at which it was passed and allowed, and notice sent to the applicant or his agent. Whether an invention or improvement should be embraced in one, two, or more patents, is a matter of discretion with the head of the Patent Office.4

§ 528. Legal Title to Letters-Patent; Heirs, Assignees, and The right, it is seen, is in the patentee,

Licensees.

1 See Curt. Pat. §§ 252-261, and cases cited; Wood v. Underhill, 5 How. 1. Thus, where a patent is claimed for a discovery of a new substance, by means of chemical combinations of known materials, it should state the component parts of the new manufacture claimed with clearness and precision, and not leave the person attempting to use the discovery to find it out by experiment. Tyler v. Boston, 7 Wall. 327. The scope of letters-patent must be limited to the invention covered by "the claim;" and the latter cannot be enlarged by the language used in other parts of the specification. Railroad Co. v.

"his

Mellon, 104 U. S. 112. As to sufficiency of expression in a specification, see Loom Co. v. Higgins, 105 U. S. 580; Carlton v. Bokee, 17 Wall. 463. Telephone Cases, 126 U. S. 1. A specification is sufficiently clear and descriptive when expressed in terms intelligible to a person skilled in the art to which it relates. 152 U. S. 561.

2 127 U. S. 563.

8 See Act July 8, 1870, §§ 21-23. All officers designated by the statute must sign, or the letters are void. 128 U. S. 605.

Bennet v. Fowler, 8 Wall. 445.

heirs or assigns." So far are the rights of heirs and assigns protected, that if the inventor dies before the patent is granted, the right of applying for and obtaining the patent will devolve on his executor or administrator, in trust for his heirs-at-law, or otherwise, in accordance with his testamentary disposition; and if the right has been assigned by the inventor before the patent is granted, the patent may be granted and issued and reissued to the assignee, provided the assignment be first recorded in the Patent Office; though the claim papers should be executed by the inventor himself if he be alive.1 It is thus evident that the patentee is frequently a different person from the inventor. The patentee, of course, holds the legal title to the patent; and when the inventor's assignee has the patent issued to himself, the exclusive right is vested in the assignee as a legal estate, and the inventor is divested of the legal title. Where a patent is granted to one as executor, he can maintain a suit on the patent in all respects as if he had been designated in the patent as trustee instead of executor.2 If the patent be void, it is void as to the assignee as well as the inventor. The title to a patent passes to the patentee's assignee in bankruptcy, subject to the latter's election to accept it. But the patent monopoly is an entire right, and cannot be divided up by assigning separate claims under the same patent.5

The exclusive right conferred by the patent is "to make, use, and vend" the invention. It is specially provided by statute that not only the patent, but any interest therein, shall be assignable in law by an instrument in writing; and in this manner may be granted an exclusive right under the patent to the whole or any specified part of the United States; but such assignment or grant shall be void as against any subsequent purchaser or mortgagee for a valuable con

1 Act July 8, 1870, §§ 33, 34. See Curt. Pat. §§ 167-174; Gayler v. Wilder, 10 How. 477.

2 Rubber Co. v. Goodyear, 9 Wall. 788. See Abb. Nat. Dig. "Patents," 5. And see, as to rights of assignee, Littlefield v. Perry, 21 Wall. 205.

3 Worley v. Tobacco Co., 104 U. S. 340.

4 145 U. S. 29.

5 Pope Man. Co. v. Gormully Mfg. Co., 144 U. S. 248; 138 U. S. 252.

sideration without notice, unless recorded in the Patent Office within three months from its date. Thus, then, a patent-right may be assigned after the issue of letters, as well as before, on compliance with certain requirements of law; though as to the extent of the right thus transferred and the mutual relations of assignor and assignee there is still some uncertainty. One point, however, which was formerly in doubt, seems to have been well established by the decisions of the Supreme Court of the United States and this is, that the patentee's assignment or grant of an extension or renewal of a patent, before any extension has issued, will carry, if the terms of the grant be proper ones, the legal as well as the equitable interest in the patent; and that by a sweeping transfer of all his property both patent-rights and extensions thereof may pass.2

But the decisions in our courts recognize a distinction beween the right to make and vend and the right to use a patent. And there is a kind of contract to which a patentee often makes himself a party, namely, a license to use the patent; and this is obviously different from an assignment or grant of the right; for the entire monopoly "to the whole or any specified part of the United States" is not thereby

1 Act July 8, 1870, § 36; U. S. Rev. Sts. § 4898. See Curt. Pat. § 182 et seq.; Pitts v. Whitman, 2 Story, 609, 614. As against the patentee and third persons not above indicated, the requirement of record within three months appears not essential to the validity of the assign

ment.

2 Railroad Co. v. Trimble, 10 Wall. 367. And see Wilson v. Rousseau, 4 How. 646; Bloomer v. McQuewan, 14 How. 539; Hartshorn v. Day, 19 How. 211; Bloomer v. Millinger, 1 Wall. 340; Chaffee v. Boston Belting Co., 22 How. 217. An assignment of an interest in a patented invention is a contract, and like other contracts should be so construed as to carry out the intention of the parties to it. Mr. Justice Davis in Nicolson Pave

ment Co. v. Jenkins, 14 Wall. 452. See, as to the right to assign, 104 U. S. 521. And see 130 U. S. 152.

As to the right of a purchaser from an assignee to use the machine, see Adams v. Burke, 17 Wall. 453. The assignment of an exclusive right to use a machine, and to vend it to others for use within a specified territory, authorizes the assignee to vend elsewhere, out of that territory, articles manufactured by the machine. Simpson v. Wilson, 4 How. 709. Such transfers are not revocable without cause. 140 U. S. 184. As to correcting a wrongful use by a subsequent purchase of a right to vend, see Emerson v. Dodge, 18 Wall. 414.

For the right of a recorded assignee to sue for an infringement, see Littlefield v. Perry, 21 Wall. 205.

granted. Our statutes provide that those who have purchased or acquired by consent the right to construct any newly invented machine before the patent is applied for may use, or sell for use, the specific thing, without incurring liability. And, in order that the rights of patentees and their assigns may be fully protected, patented articles should be marked.1 The licensee must assert his legal rights in the name of the original owner; he cannot in his own name prosecute for infringement.2 A license to use an invention implied from circumstances is not transferable unless the patentee waives his own rights.3 Nor is an oral license to use available against a subsequent assignee of the patent without notice.4

§ 529. Caveat, Surrender, Reissue, and Disclaimer. Where the inventor desires time to mature his invention he will do well to file a caveat. Our statutes provide that any citizen of the United States (and, upon certain conditions, an alien resident likewise) who makes a new invention or discovery, and desires further time to mature it, may, on payment of the fees, file in the Patent Office a caveat, setting forth the design thereof, and praying protection of his right until he shall have matured his invention. This caveat is filed in the confidential archives of the office; and the effect of its presentation is to protect the inventor a year, against applications which may meantime be presented by other persons.5

Then, again, the privileges of surrender and reissue and disclaimer become of importance to the patentee where his original patent claims too much, or is in any respect defective. If a patent be inoperative or invalid, because of some such reason, the error being honestly made, and not with fraudulent intent, the patentee may surrender his original patent and have a new one issued for its unexpired term. The object of conferring this power of surrender and reissue

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