Sec. 4923. Whenever it appears that a patentee, at the time of making his application for the patent, believed himself to be the original and first inventor or discoverer of the thing patented, the same 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 his invention or discovery thereof, if it had not been patented or described in a printed publication. (U. S. Comp. St., 1901, pp. 3382, 3396.)

The proposition of law for which complainants contend is that De Kando's date of invention in this country is May, 1904, when Waterman, arriving here with knowledge of the completed invention, disclosed that knowledge to others here skilled in the art capable of understanding the same. That by reason of his knowledge and disclosures to others in this country prior to June 28, 1905, the invention was "known" in the legal sense in this country before Armstrong's application was filed. This proposition has been discussed at great length in the opinion of the two judicial tribunals which have had to do with this case; we are inclined to affirm on the opinion of the Court of Appeals of the District of Columbia, which, in substance, holds that, for the purpose of defeating a patent application, reduction to practice in a foreign country is a nullity unless the invention is patented or described in a printed publication.

If section 4886 stood alone, we might be inclined to the conclusion that upon this record Armstrong was not entitled to a patent because although, prior to his date, his art or machine had not been used here, it was known by others in this country. A machine is certainly knowable when its various components parts are brought together and, coöperating with each other. function successfully. De Kando's device was knowable in this sense when it was installed in Italy. It would become known to any competent person who examined it, saw what its component parts were and what function it performed. Waterman, upon the facts as found above, acquired that knowledge and he carried his knowledge with him wherever he went. When he was here he was a person in this country by whom the De Kando device was known. And when he imparted his knowledge to others here they also became persons in this country by whom the De Kando device was known. Considering this section only, it might seem to make little difference where the knowable machine be located, provided the persons who knew it are themselves in this country.

But the patent law is contained in many sections, and they must be construed together to get at the precise code which they set forth. Section 4886 states generally the conditions which must exist in order to entitle an inventor to the grant of a patent. Section 4923 deals specifically with the effect of knowledge and use in a foreign country, and it makes no distinction whether such use is made or such knowledge is acquired by persons who, after using the thing or acquiring the knowledge remain abroad or come here. This section (4923) provides that the patent taken out by an applicant for the same thing here shall not be void on account of such knowledge or use unless the invention had been patented or described in a printed publication. As we construe this section, reduction to practice in a foreign country can never operate to destroy a patent applied for here, however widely known such reduction to practice may be, either among foreigners or among persons living here, unless the invention be patented or described in a

printed publication. To that extent section 4923 qualifies the language of section 4886, which without such qualification might well lead to a different result. The decree is affirmed, with costs.

Patents.

Commissioner's Decisions.

EX PARTE, VAN NOSTRAND.

Decided September 23, 1913.

REISSUE-APPLICATION-DIVISION-CANNOT BE REQUIRED.

Where an application is filed for the reissue of a patent, Held that division cannot be required. (Ex parte, Lippincott, 16. O. G., 632, overruled.)

APPEAL from Examiners-in-Chief.

ROTARY PLOW.

Messrs. Bacon & Milans, for the applicant.

EWING, Commissioner:

This is an appeal from the decision of the Examiners-in-Chief affirming the requirement of division by the Primary Examiner.

Two questions are raised by this appeal, first, whether division can be required in a reissue application, and, second, whether the claims of this application cover divisible inventions.

The right of reissue to correct defects arising from inadvertence, accident, or mistake is so obviously necessary and fair that it became the established practice before statutory provision was made for it. (Grant v. Raymond, 6 Peters, 218.) The first statutory provision for reissue was enacted in the act of July 3, 1832, which read in part as follows:

That wherever any patent which has been heretofore, or shall be hereafter, granted to any inventor in pursuance of the act of Congress, entitled "An act to promote the progress of useful arts, and to repeal the act heretofore made for that purpose," passed on the twenty-first day of February, in the year of our Lord, one thousand seven hundred and ninety-three, or of any of the acts supplementary thereto, shall be invalid or inoperative, by reason that any of the terms or conditions prescribed in the third section of the said first-mentioned act, have not by inadvertence, accident, or mistake, and without any fraudulent or deceptive intention, been complied with on the part of the said inventor, it shall be lawful for the Secretary of State, upon the surrender to him of such patent, to cause a new patent to be granted to the said inventor for the same invention for the residue of the period then unexpired, for which the original patent was granted, upon his compliance with the terms and conditions prescribed in the said third section of the said act. The act of 1836 repealed all prior statues relevant to patents. Section 13 of this act provided that the applicant should pay the further duty of fifteen dollars, and contained the further provision:

And whenever the original patentee shall be desirous of adding the description and specification of any new improvement of the original invention or discovery which shall have been invented or discovered by him subse

quent to the date of his patent, he may, like proceedings being had in all respects as in the case of original applications, and on the payment of fifteen dollars as hereinbefore provided, have the same annexed to the original description and specification; * * * and the same shall thereafter have the same effect in law, to all intents and purposes, as though it had been embraced in the original description and specification.

By the act of 1837, section 5, it was provided that—

Whenever a patent shall be returned for correction and reissue under the thirteenth section of the act to which this is additional, and the patentee shall desire several patents to be issued for distinct and separate parts of the thing patented, he shall first pay, in manner and in addition to the sum provided by that act, the sum of thirty dollars for each additional patent so to be issued.

By the act of 1861, section 10, the fee on every application for the reissue of a patent was thirty dollars.

These provisions were modified by sections 53 and 68 of the act of 1870, which became sections 4916 and 4934 of the Revised Statutes, and have not since been modified.

In ex parte, Lippincott (C. D., 1879, 212; 16 O. G., 632), it was held that division might be required in reissue applications. The portion of section 4916 of the Revised Statutes which was deemed to give this authority reads as follows:

The Commissioner may, in his discretion, cause several patents to be issued for distinct and separate parts of the thing patented, upon demand of the applicant, and upon payment of the required fee for a reissue for each of such reissued Letters Patent. The specifications and claims in every such case shall be subject to revision and restriction in the same manner as original applications are.

It was held in this case that the words

subject to revision and restriction in the same manner as original applications are

included the right to require division, so that the Commissioner might exercise his discretion in acceding to the demand of the applicant for a reissue and might require the applicant to take out several, instead of a single, reissue patents.

This practice has obtained ever since this decision was rendered, and it has been the practice to require the payment of an additional fee for each reissue patent, whether the division of the original patent was demanded by the applicant or required by the Commissioner.

I cannot find in the law any warrant for requiring an applicant for reissue to pay more than the one fee, unless he shall "demand" that the patent be reissued in divisions; nor can I find warrant in the law for granting more than one reissue without payment of a fee for each reissue.

The statute seems to me plainly to assume that the Commissioner having once granted a patent will not change his opinion as to the propriety of allowing in a single reissue claims covering the whole subject-matter thereof. The issuance of a reissue patent is not the granting of a patent, but the exercise of the privilege of correcting a patent already granted, for which the law provides a fee different from the fee required originally, and I find no authority for requiring the applicant to pay more.

There are reasons why such a requirement by the Commissioner may work a hardship upon the patentee applying for a reissue which make it important that the right granted by the statute should be fully recognized; but these reasons do not aid in defining what the right is.

In view of the above holding it will not be necessary to consider the ground for the requirement of division.

The decision in ex parte, Lippincott, supra, is overruled.

The decision of the Examiners-in-Chief is reversed.

United States.

Design Protection.

In our last number, page 22, we reprinted a paper on this subject read by Mr. C. R. Clifford before the Federation of Trade Press Associations. In connection with this paper it was stated that a committee had been appointed by the Associations to arrange for a Convention of Manufacturers and Importers to prepare a bill and present the same to Congress.

The Committee then appointed has, in coöperation with the National Registration League, an organization formed for the express purpose of securing protection for commercial designs, arranged for a Convention of manufacturers, merchants and importers to be held at Hotel Astor, New York City, November 21, 1913, to advocate the enactment of a Design registration law.

The matter of design protection is now receiving the attention of other influential bodies and the time seems ripe for the enactment of a registration law that will afford protection promptly and at small cost, something our present law providing for design patents does not do.

"Kahn Law." Need for Amendment.

The text of this law (H. R., 7595) was given in our last issue, 12 P. & T. M. Rev., 25.

There has been much criticism of the law not only by patent lawyers but by manufacturers who feel that their interests are threatened thereby.

Many representative bodies have appointed Committees to consider the law and recommend action thereon. Among these are the American Bar Associatior, The New York County Lawyers' Association, The Patent Law Association of Washington and the Merchants' Association of New York.

It is conceded by all that foreign exhibitors should be protected against the theft of their designs and patterns, but the opinion is general that the law as enacted is so loosely framed as to permit of abuses, and that the features complained of are not essential to the ample protection of the foreign exhibitor.

It is hoped and believed that through collaboration of the various bodies having the law under consideration a measure will be proposed which will be acceptable to the Congress, and which, being enacted, will remove the harmful features of the law without impairing the protection which all agree that foreign exhibitors should receive.

Patents.

Executors and Administrators. Modification of Order No. 1,838.
(Order No. 2,076.)

Department of the Interior,

United States Patent Office,

Washington, D. C., October 14, 1913.

When an inventor dies after filing an application, the executor or administrator should intervene; but the allowance of the application will not be withheld nor the application withdrawn from issue if the executor or administrator does not inter

vene.

(Modifying Order No. 1,838, published 151 Official Gazette, page 453.) THOMAS EWING,

Commissioner

OFFICIAL

International Union.

Official Journals. Contents for October.

LA PROPRIÉTÉ INDUSTRIELLE.

PART. International Union: INTERNATIONAL EXPOSITIONS OFFICIALLY RECOGNIZED. Circular of the International Bureau, Oct. 6, 1913, concerning expositions recognized during 1913 by the government of the Netherlands. -ITALY. No international expositions during 1913.

Domestic Legislation: AUSTRALIAN FEDERATION. Law of Nov. 6, 1912, modifying that of 1905, concerning Trade-Marks.-Law of Nov. 6, 1912, modifying that of 1906, concerning manufacturers' designs and models.-CHILE. Regulation of Sept. 22, 1911, concerning the procedure to be followed in applications for Patents.

UNOFFICIAL PART. General Observations: THE PROTECTION OF MARKS OF COLLECTIVE ORIGIN.

Correspondence: LETTER FROM CUBA.

Jurisprudence: Belgium. Counterfeiting; good faith; means of action previous to deposit; acts accomplished in Germany; Madrid arrangement not applicable.-JAPAN. Patents of invention; action in infringement; agency; insufficient powers of attorney.

Miscellaneous News: FRANCE. Wares showing indications of British origin. Advices and Information: INTERNATIONAL CONVENTION. Application to the United States.-BRAZIL. Privilege for the exploitation of a new industry. Bibliography: PERIODICAL PUBLICATIONS.

Statistics: FRANCE. Trade and Commercial Marks during 1911.

LE DROIT D'AUTEUR.

UNOFFICIAL PART. General Observations: GARIAN COPYRIGHT LEGISLATION.

THE REVISION OF HUN

Jurisprudence: GERMANY. I. Public execution of musical compositions in a restaurant by a hired orchestra; proprietor considered as impresario.—II. Enlarged portrait exhibited without authorization; illicit public exhibition.-CANADA. English musical compositions reprinted in the United States and imported into Canada; prohibition.-FRANCE. I. Enlargement of a photographic portrait, piracy.