entered if accompanied by the additional fee and presented before the allowance of the application.

ON PETITION.

DESIGN FOR A DIFFUSION-DISK.

Mr. George H. Strong, for the applicant.

EWING, Commissioner:

The applicant in his petition filed with the application asked for the issuance of a patent for three and one-half years, and paid the fee provided by law for a patent for this term.

After the application had been acted upon several times by the Patent Office and found to be allowable, if certain objections were overcome, the applicant forwarded an amendment purporting to comply with the requirements of the Examiner and accompanied it by an amended petition, duly signed by him, asking that the patent be granted for the term of fourteen years and inclosing a check for the difference between the fee originally paid and the fee required by law for a fourteen-year patent.

The Examiner raises the question whether the amended petition should be accepted.

The provisions of the statute are as follows:

Sec. 4931. Patents for designs may be granted for the term of three years and six months, or for seven years, or for fourteen years, as the applicant may, in his application, elect.

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Sec. 4934.
The following shall be the rates for patent fees:
On filing each original application for patent, except in design cases,
fifteen dollars.

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In design cases; for three years and six months, ten dollars; for seven years, fifteen dollars; for fourteen years, thirty dollars.

Rule &o is substantially in the language of section 4931 of the Revised Statutes. The question here presented was first raised under the Act of Mar. 2, 1861, section II, which was as follows:

* * * The Commissioner, on due proceedings had, may grant a patent therefor, as in the case now on application for a patent, for the term of three and one-half years, or for the term of seven years, or for the term of fourteen years, as the said applicant may elect in his application: Provided, That the fee to be paid in such application shall be for the term of three years and six months, ten dollars, for seven years, fifteen dollars, and for fourteen years, thirty dollars.

Commissioner Fisher held that

this language contemplates an election to be made by the applicant, at the time of his application, of the term for which he desires his patent to issue, and the payment of a fee corresponding to that election. (Ex parte, Mayo, C. D., 1870, 14.)

Under the present Act it was held in two cases where the application had already been acted upon by the Examiner that the election of the applicant could not be changed. (Ex parte, Haley, C. D., 1888, 137; 44 O. G., 1399; ex parte, Kinnear, C. D., 1890, 54; 51 O. G., 156.)

In spite of these decisions I find that the practice has grown up of permitting amendments to petitions for design patents changing and enlarging the term and paying additional fees, provided they are submitted before any examination has been made by the Office. No decision or general order having been published, I quote some correspondence with the Chief Clerk, as follows:

Honorable Commissioner of Patents,
Washington, D. C.

New York, July 22, 1910.

Sir: I inclose herewith, amendments of the petition in eight applications for design patents, which amendments will have the effect to make the term of these patents seven years instead of three and one-half years, and I inclose herewith, my check for $40.00, covering the supplemental fee for the increased period of these patents.

The cases referred to are as follows:

Elliot, Number 565,418.
Spring, Number 569,238.
Reith, Number 569,240.
Merry, Number 569,245.
Sauer, Number 571,514.

Moffat, Number 571,520.

Forrester, Number 571,521.

Spring, Number 571,522.

Sir: The Office is in receipt of your letter of the 22nd instant, transmitting your check for $40, with amendments to the petitions in eight certain applications enumerated in your letter.

The Acting Commissioner directs me to say in reply thereto, that there appears to be no legal reason why an applicant for a design patent, having complied with the requirements of the law as to the filing of his application and the payment of the fee therein, should not be permitted to extend the period for which protection is asked over that originally requested. However, it is held that such request for a change in the term of the design patent must be made before the first consideration of the merits of the

case.

An examination of the application mentioned in your letter shows that the application of Elliot, Serial No. 565,418, received an action by the Examiner on the 5th instant, in consequence of which, and in accordance with the ruling of the Acting Commissioner, the petition cannot be amended. There are administrative reasons for this holding, inasmuch as during the first six months of the present year, there were filed 258 applications for design patent for the term of 7 years, a fee of $15 being paid in each case, and during the same six months, 175 applications for design patent for 14

years, a fee of $30 being paid in each case. Were it permissible to change the term of a design patent after consideration of the application on its merits, it will be seen that in a short while all applications for design patents would be filed with a request that such patents issue for the term of 31⁄2 years, the minimum fee for design patents being paid in all of these

cases.

The amendments offered in the applications of Spring, Serial No. 569, 238, Reith, Serial No. 569,240, Merry, Serial No. 569,245, Sauer, Serial No. 571,514, Moffat, Serial No. 571,520, Forrester, Serial No. 571,521, and Spring, Serial No. 571,522, will be entered in the cases to which they relate, changing the term asked for from 3% to 7 years, and the additional fees will be credited therein. The balance of $5 cannot be applied, but will be held to your credit.

Very respectfully,

W. F. WOOLARD, Chief Clerk.

As I am unable to see any ground in the statute for drawing a distinction between the cases discussed and the practice which has grown up, I find it necessary to overrule ex parte, Haley and ex parte, Kinnear, supra, the decisions in which were rendered under the present act, or to put a stop to the practice indicated in the letters quoted.

In the absence of any plain prohibition of the statute I think that the petition here presented ought to be entered. The consideration which led to the exclusion of the Elliot application in the above correspondence does not commend itself to my judgment. The fee which the statute provides for searches in patents of utility is only fifteen dollars, and the minimum charge of ten dollars for a shortterm design patent is ample to cover the search and the cost of issuing the patent. The fee is, in fact, so large that it deters designers from taking the benefit of the act in many instances. It is therefore, I think, peculiarly proper that the statute should be liberally construed.

It seems to me clear that under the provisions of the statute the applicant may change his election in the manner indicated in the present case at any time. prior to the allowance of the application.

The statute provides for the payment of a single fee, and therefore if applicant were permitted to change his election after the case had been sent to issue and was in process of printing the Office might be put to expense and inconvenience. The propriety of permitting changes at such a stage of the application is not presented in this case.

It should be noted also that a request from an applicant to reduce the term and demand back a part of the fee paid would be affected by other provisions of the law than those quoted.

Ex parte, Haley and ex parte, Kinnear are overruled.

The petition will be entered.

Patents.

U. S. Circuit Court of Appeals-Second Circuit.

WESTINGHOUSE MACH. Co., et al. v. GENERAL ELECTRIC Co., et al.
Decided June 14, 1913.

PATENTS-RIGHT TO PATENT-USE OF INVENTION IN FOREIGN COUNTRY.
Under Revised Statutes, section 4923 (U. S. Comp. St., 1901, p. 3396),

which expressly provides that a patent shall not be held to be void on account of the invention or discovery or any part thereof having been known or used in a foreign country before the patentee's invention or discovery thereof if it had not been patented or described in a printed publication, for the purpose of defeating a patent application a previous reduction to practice of the invention in a foreign country is a nullity unless it was patented or described in a printed publication.

This cause

STATEMENT OF THE CASE.

comes here upon appeal from a decree of the District Court, Northern District of New York dismissing a bill in equity. The bill was brought under section 4915, United States Revised Statutes (U. S. Comp. St., 1901, p. 3392), which provides that whenever a patent on application is refused either by the Commissioner of Patents or by the Court of Appeals of District of Columbia, upon appeal from the Commissioner, the applicant may have remedy by bill in equity, and that in such suit the Court may adjudge that such applicant is entitled to receive a patent for his invention.

The opinion of Judge Ray in the District Court will be found in 199 Fed., 907; that of the Court of Appeals of the District of Columbia in De Kando v. Armstrong (169 O. G., 1185; 37 App. D. C., 314).

Messrs. Gifford & Bull (Mr. J. Edgar Bull, of counsel), for the appellants. Mr. Charles Neave (Mr. Albert G. Davis and Mr. A. A. Buck, of counsel), for the appellees.

Before LACOMBE, COXE, and NOYES, Circuit Judges.

LACOMBE, Cir. J.:

This case grows out of an interference in the Patent Office entitled De Kando v. Armstrong, which was decided adversely to De Kando and his assignee, the Westinghouse Machine Company. The interference was between an application of De Kando filed July 3, 1906, and a patent to defendant Armstrong, No. 811,758, dated February 6, 1906, on an application filed June 28, 1905.

There is controversy as to some of the important facts, but in view of the disposition we make of this cause we shall state them as they are found by the Court of Appeals, District of Columbia, and by the district judge, with some additional statements of them which complainant claims are established by the proof. In thus restating them it must be understood that we have not examined into the conflicting evidence or reached our own conclusions as to whether the testimony supports the findings of fact; our view of the law making it unnecessary for us to do so.

Quoting from the opinion below the facts there found are:

(1) That De Kando actually made his invention in a foreign country and reduced it to actual practice and put it in actual use, prior to the spring of 1904 on the Valtellina Railway in Italy.

(2) It was therefore an invention which could be and was seen, understood, and known to be practical. There was not only the patentable conception, but the idea of means, and means.

(3) That on March, 1904, Waterman went from the United States to Europe and met De Kando at Budapest, where the details of the invention were explained to him, and then, proceeding to Italy, Waterman saw the

invention in actual use. In addition De Kando then furnished Waterman with an elaborate written description of the invention.

(4) It appears from the evidence that Waterman was learned and skilled and fully capable of fully understanding and that he did understand the invention.

(5) Waterman therefore "knew" that the invention had been conceived and actually made and reduced to actual and successful practice.

(6) That Waterman not only brought the information he had gained in Europe with him to the United States, when he arrived May 5, 1904, but also the said written description of such invention and notes which he had made relating to such invention while in Europe.

(7) That Waterman made a written report as to this invention to Stillwell June 7, 1904, and during the year following he described same in the United States to a number of electrical engineers of standing, all capable of understanding same, and June 19, 1905, Waterman explained the invention to the American Institute of Electrical Engineers in the United States.

(8) Prior to 1901 or 1902 Armstrong had conceived the same invention and in * * * June, 1905, he filed his application for a patent. There is no claim or pretense that Armstrong exercised reasonable diligence, or any diligence, or that he made any effort whatever to reduce his invention to practice prior to filing his application for a patent.

Defendants, it may be noted, especially controvert the findings 3, as to what Waterman saw in Italy, and 8, as to the date of Armstrong's conception and the measure of his diligence. Waterman was an eminent electrician who went abroad to inform himself as to De Kando's invention on behalf of parties here who contemplated buying it. The testimony warrants a further finding of fact which complainant suggests, viz., that:

(9) The knowledge of De Kando's invention and its use abroad was communicated by De Kando to Waterman for the specific purpose of introducing such knowledge into the United States and of having the invention put into use in the United States.

Whatever other questions there are in the case, and many have been argued, it is manifest that the fundamental and crucial one is whether upon the facts shown Armstrong was entitled to the grant of his patent; it not being disputed that his invention and De Kando's are substantially the same, nor that the invention of each was made independently of any knowledge of the other's. Armstrong's patent was properly issued, that ends the cause. The question thus presented involves the construction of two sections of the United States Revised Statutes, which have been frequently before the courts:

If

Sec. 4886. 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 couitry, 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 proceedings had, obtain a patent therefor.