is to enable patentees to remedy accidental mistakes; and the law endeavors to place parties as they would have stood in case the original specification had been made out in the corrected form. But interpolations in a reissued patent, of new features, ingredients, or devices, are not allowable, though parties often try to get reissues from the Patent Office for the purpose of inserting some expanded or equivocal claim.1 The statute permits of a reissue in divisions; and several reissues may be required to constitute a complete machine, and on a proceeding for infringement these may be introduced in one bill.2 The error to be corrected may be either that of specification or claim, it matters not which; and the patentee has a right to restrict or enlarge his claim, so as to give it validity and carry out the purposes of the invention.3 Specifications may also be amended by filing a disclaimer at the Patent Office, whenever through inadvertence, accident, or mistake, and without fraudulent intent a patentee has claimed more than that of which he was the original or first inventor. The patent, in this case, is valid for all that part which is justly and truly his own, provided it be a material or substantial part of the thing patented. This disclaimer is to be in writing and attested, and it should be recorded, — all in accordance with the statute requirements; and it is then considered a part of the original specification to the extent of the interest of the claimant and those claiming under him 1 See Act July 8, 1870, § 53; U.S. Rev. Sts. § 4916; Act March 24, 1871; Eureka Company v. Bailey Company, 11 Wall. 488; Burr v. Duryee, 1 Wall. 531; Curt. Pat. §§ 279-285; 158 U. S. 366; 150 U. S. 38. 2 Eureka Company v. Bailey Company, supra. 8 See Battin v. Taggert, 17 How. 74; Rubber Co. v. Goodyear, 9 Wall. 788; O'Reilly v. Morse, 15 How. 62. And as to surrender after an extension, see Wilson v. Rousseau, 4 How. 646. Reissued letters-patent are void if they embrace a broader claim than that for which the original letters after the record. But no disclaimer shall affect any action pending at the time when it was filed, except so far as may relate to the question of unreasonable neglect or delay in filing it.1 - § 530. Rule as to Extension of Patents. The policy of Congress has varied considerably with regard to the extension of patents. By the act of 1836, the Secretary of State, the Commissioner of the Patent Office, and the Solicitor of the Treasury were constituted a Board of Commissioners to hear evidence, and decide upon granting an extension of the term of any patent, where such extension was paid for; and the question for their consideration was whether, having due regard to the public interest therein, it was just and proper to grant the extension, because the patentee had failed to obtain a reasonable remuneration. Upon their favorable decision the patent was to be extended for seven years beyond its original expiration. As the duties of government officers increased, it became necessary to change the board; and Congress, by the act of 1848, vested the sole power of extension in the Commissioner of Patents. But the arbitrary power thus exercised by a department officer became obnoxious; and the more the patent business grew, the greater became the danger that improper influences would be brought to bear upon an officer who already was burdened with duties; and there were good reasons, besides, for leaving all patents to expire at the same reasonable period, subject to such redress in special instances as might be furnished by legislation. Hence Congress, by the act of 1861, extended the original term from fourteen to seventeen years, as it now remains, and prohibited all extensions of patents to be granted in the future. No patent granted since the 2d of March, 1861, can lawfully be extended.2 But Congress may, and frequently does, authorize by special act the 1 Act July 8, 1870, § 54; U. S. Rev. Stat. § 4917; Abb. Nat. Dig. "Patents," 6. See Leggett v. Avery, 101 U. S. 256; Smith v. Nichols, 21 Wall. 112; 145 U. S. 29; 130 U. S. 56. A disclaimer cannot be used to change the character of the invention. 123 U. S. 582; 130 U. S. 56. 2 See Curt. Pat. § 287; Act March 2, 1861, c. 88, § 16; Act July 8, 1870, §§ 22, 63-67. extension of a patent; and such legislation avails, as it would appear, even though the invention may have already been introduced to public use.1 Extended or reissued letters-patent cannot be annulled in any collateral proceeding for fraud.2 § 531. Appellate Proceedings for obtaining a Patent. There is a sort of special procedure in the matter of obtaining letters-patent, by which the controversy may sometimes be brought into the courts, though originating in an executive department. The rules applicable in such cases are fully detailed by statute; and the right secured to the applicant for a patent or its reissue is substantially that of an appeal, in case he is dissatisfied, from the primary examiner to a board of examiners-in-chief; from this board to the Commissioner in person; and from the Commissioner in person to the Supreme Court of the District of Columbia sitting in banc. And, finally, the applicant, if his patent be still refused, may resort to a bill in equity. Cases of interference, where application is made for a patent which appears to interfere with any pending application, or with any unexpired patent, are subject to a like right of appeal. The law prescribes, further, how far copies of records and foreign patents shall be admissible in evidence.4 The decision of the Commissioner of Patents in the allowance and issue of a patent creates a prima facie right only; 5 and upon all the questions involved therein, the validity of the patent is subject to judicial examination, which should be searching on the issue of patentable invention.7 1 See Abb. Nat. Dig. "Patents," 10; Bourne v. Goodyear, 9 Wall. 811; Agawam Co. v. Jordan, 7 Wall. 583. 2 Rubber Co. v. Goodyear, 9 Wall. 788; Seymour v. Osborne, 11 Wall. 516. The absolute owner of a patent may use or transfer his rights during an extended term; but the license to use a patent is not presumed to extend beyond the term during which the license was given. Paper-bag Cases, 105 U. S. 766. And as to cases of extension, see Bloomer v. VOL. I. McQuewan, 14 How. 539; Bloomer 8 See Act July 8, 1870, §§ 41-52; 4 Act July 8, 1870, § 57. 5 The Commissioner's disallowance of a patent may control in a doubtful case. 153 U. S. 120. 6 Reckendorfer v. Faber, 92 U. S. § 532. Infringement of Patents; Remedies, etc. But the great subject of infringement of patents belongs more especially to the courts; and here it is that an injured party has his more important remedies, whether it be by action at law to recover damages, or through the more ample process of a bill in equity. The word "infringement" is used in the patent law to denote the act of trespassing upon the incorporeal right secured by a patent. Any person who, without legal permission, shall "make, use, or vend to another to be used," the thing which is the subject-matter of an existing patent, commits the wrong of infringement. For this wrong the choice is of two remedies, either damages may be recovered against him at law by an action on the case, or else there may be a bill in equity for an injunction and account. What constitutes an infringement, however, within the meaning of our patent laws, is left mainly for the courts to determine; and upon this point there are a number of decisions in the Circuit and District Courts of the United States, which it is not our purpose to set forth, though they should be carefully examined by every patent. lawyer. But, in general, it may be said that, since the wrong consists in making, using, or vending to be used, it is not regarded an infringement to make a patented machine merely as an experiment; nor to vend the materials of a patented machine; nor to sell the articles which it may have produced, unless the patent covers both process and product; nor, where the proportions of certain ingredients are essential, to vary them. What constitutes infringement of a machine is not determinable by fixed rules; but it may arise where the invention is used without such variation as constitutes a new discov 347. As to suits for annulling a patent, see Mowry v. Whitney, 14 Wall. 434. The grant of letters-patent does not conclude the question of abandon101 U. S. 479. Courts should not unreasonably by construction enlarge the claim which the Patent Office has admitted. 100 U. S. 671. ment. 1 See Curt. Pat. c. 8; Bouv. Dict. "Infringement; "U. S. Rev. Stats. §§ 4918, 4919. 2 See Curt. Pat. c. 8, passim; Bright. Fed. Dig. "Patents," 12; Abb. Nat. Dig. "Patents," 9. ery; and here the doctrine of mechanical equivalents is properly applicable. In a manufacture the question is one of substantial identity, and so with any applied principle.1 Nothing can be held an infringement of a patent which does not fall within the terms in which the patentee has himself chosen to express his invention.2 § 533. The Same Subject.—Our statutes provide that damages for the infringement of any patent may be recovered by action on the case in certain specified courts of the United States; such action being brought in the name of the party interested, either as patentee, assignee, or grantee. And it is further declared that whenever, in any such action, a verdict shall be rendered for the plaintiff, the court may 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. So much for the remedy at law. As to remedies in equity, jurisdiction of patent cases is also conferred on courts of the United 1 Ib. And see Winans v. Denmead, 15 How. 330; Prouty v. Ruggles, 16 Pet. 336; Hogg v. Emerson, 11 How. 587; supra, § 520. It has been held by the Supreme Court of the United States that the right covered by a patent does not extend to a foreign vessel lawfully entering one of our ports. Brown v. Duchesne, 19 How. 183. Contra, English doctrine in Caldwell v. Van Vlissingen, 9 E. L. & Eq. 51. See Keplinger v. De Young, 10 Wheat. 358. And in an important case the question is considered, how far either the inventor of a device, or of an entire machine, or of a mere combination, can invoke the aid of the doctrine of equivalents. Seymour v. Osborne, 11 Wall. 516. The introduction of a newly discovered element or ingredient, or one not previously known to be an equivalent, would not constitute an infringement. Gould v. Rees, 15 Wall. 187. Nor is there an infringement where a single important element is left out. 150 U. S. 221. But the substantial equivalent of a thing is the same as the thing itself in patent law; and, notwithstanding differences of name and form, there may be an infringement. Machine Co. v. Murphy, 97 U. S. 120. See further, § 520. Putting the patented device to some other use, or slightly improving upon it, is an infringement. 129 U. S. 263; 139 U. S. 601. 2 McClain v. Ortmayer, 141 U. S. 419. Where the patentee is the pioneer, his patent deserves liberal construction. 129 U. S. 263; 145 U. S. 29. 3 Act July 8, 1870, § 59; U. S. Rev. Stats. § 4919. For practice in matters at law, see Curt. Pat. c. 9. For the cost or damages recoverable, see Parks v. Booth, 102 U. S. 96; Elizabeth v. Pavement Co., 97 U. S. 126. |