DIGESTED ABSTRACT.

.

ABANDONMENT.

1. An inventor may abandon his invention, or dedicate it to the public; and this inchoate right, thus once gone, cannot afterward be resumed. Pennock v. Dialogue, 127.

2. Under the act of 1793, the acquiescence of an inventor in the public sale or use of his invention before his application for a patent, creates a disability to comply with the terms and conditions on which alone he could receive a patent. Ibid.

3. Any acquiescence in the public use by the inventor will be an abandonment of his right; but if the right were asserted by one who fraudulently obtained it, perhaps no lapse of time could give it validity. Shaw v. Cooper, 173.

4. If an individual witness a sale and transfer of real estate, in which he has an equitable lien or interest, and does not make known his interest, he shall not afterward be permitted to assert it. On this principle it is that a discoverer abandons his right, if before the obtainment of his patent his discovery goes into public use. But his right would be secured by giving public notice that he was the inventor of the thing used, and that he should apply for a patent. Ibid.

5. A strict construction of the act, as it regards the public use of an invention before it is patented, is required also by sound policy. The doctrine of presumed acquiescence, where the public use is known, or might be known, to the inventor, is the only safe rule which can be adopted on this subject. Ibid.

6. Whatever may be the intention of the inventor, if he suffers his invention to go into public use, through any means whatever, without an immediate assertion of his right, he is not entitled to a patent; nor will a patent obtained under such circumstances protect his right. Ibid.

7. After the right is perfected by a patent, no presumption arises against it by a subsequent use by the public. Ibid.

8. The decision of the court below as to a dedication of an invention by a description of it in the specification of a former patent, is erroneous. By the defects mentioned in the statute, and to remedy which a surrender and reissue is permitted, nothing passes to the public from the specifications and claims within the scope of the patentee's invention. Battin v. Taggert, 969.

9. An inventor may abandon his invention to the public, either by express declaration or conduct equally significant-such, for instance, as an acquiescence, with full knowledge, in the use of his invention by others. Kendall v. Winsor, 1108.

10. The cases of Pennock v. Dialogue, 2 Pet., 1, and Shaw v. Cooper, 7 Pet., 292, may be regarded as leading cases upon the questions of the relinquishment of patent privileges as resulting from abandonment, neglect, or use known and assented to. Ibid.

See APPLICATION; JURY; PRIOR USE; SECRET USE.

ACCOUNT OF PROFITS.

1. In a bill filed for an injunction and for an account of profits, the defendant is accountable for such profits as he has actually made, and not for such as “with due diligence and prudence" might have been made. Livingston v. Woodworth, 922.

2. An account of profits may be ordered under the prayer for general relief. Stevens v. Gladding, 981.

3. The right to an account for profits is incidental to the right to an injunction in copyright and patent cases. Ibid.

4. An agreement made with a patentee to manufacture his patented machines, and the making and selling of such machines under the patentee's title, estops such party, in an action for account brought by the patentee, from alleging the invalidity of the patent. Kinsman v. Parkhurst, 997.

5. Even if the patent was invalid, it would not have rendered the sales of the machines illegal, so as to release such party from the obligation to account. Ibid.

6. And if such an agreement was void, as against public policy, it would furnish no answer to a claim for an account of profits realized. Ibid.

See DAMAGES.

ACTIONS.

1. Under section 5 of the act of 1793, an assignee of a part of a patent-right cannot maintain an action for a violation of it. Tyler v. Tuel, 1.

2. In construing a patent, the intention of the government and the patentee is entitled to great consideration; the authorizing the issue of the patent, the petition for the issue of the patent, and the specification may all be resorted for such intention. Evans v. Eaton, 8.

3. The purchase of an article, made in violation of a patent of a third person, but without any connection on the part of such purchaser with the manufacture, except as a purchaser, will not make the party buying guilty of an infringement of the rights of the patentee, as having used the patented invention. Keplinger v. De Young, 122.

4. At common law, the author has a property in his manuscript, and may obtain redress against any one who deprives him of it, or endeavors to realize a profit from its publication. Wheaton v. Peters, 200.

5. The grantee of an exclusive right, limited to the use of a certain number of machines within a certain territory, has such an exclusive right as will enable him to maintain an action for an infringement within that district, under section 14 of the act of 1836. Wilson v. Rousseau, 357. 6. A contract to use a patented machine during the continuance of the patent, and to pay therefor a fixed proportion of the value of the fuel saved thereby, will not support an action until the expiration of the patent. Washington and Alexandria Steam Packet Co. v. Sickles, 554.

7. But if the defendants had agreed to pay by installment at the end of certain times, an action would lie for every breach as occurring. Ibid.

8. An action for an infringement cannot be maintained by an inventor against any one for using his invention before a patent is obtained. Gayler v. Wilder, 576.

9. The purchaser of a machine or implement for use in the ordinary pursuits of life, does not become possessed of a portion of the franchise or monopoly conferred by the patent; but when the machine passes into his hands it is no longer within the limits of the monopoly, or under the protection of the acts of Congress, and if his right is infringed he must seek redress in the

ACTIONS-continued.

courts of the State, and not in the courts of the United States, or under the acts of Congress. Bloomer v. McQuewan, 730.

10. Under section 11 of the judiciary act of 1789, jurisdiction of the person of a defendant can only be obtained, in a civil action, by service of process on his person within the district where the suit is instituted. Chaffee v. Hayward, 1054.

11. And this provision is not changed by any of the process acts, or by the act of Congress conferring jurisdiction on the Circuit Courts in patent cases, without regard to citizenship. Section 11 of the judiciary act is not affected by the subsequent process acts, and it applies to all civil suits. Ibid.

See APPEALS; ASSIGNMENT; COMMISSIONER OF PATENTS; COURTS; DamAGES; DEFENSES; INFRINGEMENT; PATENT; PLEADING.

ADMINISTRATORS.

1. Section 18 of the act of 1836 authorizes the extension of a patent on the application of the executor or administrator, although the patentee had, during his lifetime, disposed of all his interest. Wilson v. Rousseau, 357. 2. Such extension inures to the benefit of the administrator only in such capacity, and not to assignees or grantees, so as to vest in them any exclusive right whatever. But those who are in the use of the patented article at the time of the renewal may continue to use such machines or articles. Ibid. (McLean, J., and Woodbury, J., dissenting.)

3. An administrator may, under section 18 of the act of 1836, take an extension of a patent. Woodworth v. Wilson, 428.

AFFIRMED CASES.

See EXAMINED CASES.

AGREEMENTS.

1. Where a contract provided for a certain mode of ascertaining the amount of fuel saved by the use of the patent in steam machinery, evidence having been given of that test, it is competent to confirm it by other tests made by others in other boats. Washington and Alexandria Packet Co. v. Sickles, 554.

2. An agreement between B and C and others, as follows, "that the said parties may each hereafter manufacture and vend spikes of such kind and character as they see fit, notwithstanding their conflicting claims to this time," must be construed with reference to the situations of the parties to it; and B having claimed that he had the exclusive right, under his patent, to make such spikes, which right the defendant, C, was infringing, but the defendant claiming that he did not infringe such patent, but made spikes by an entirely different method: Held, That such agreement did not give C a license to make such spikes after B's patent, but only a right to make them by the same process or machinery he had been using before. Troy Iron and Nail Factory v. Corning, 691.

3. A stipulation in a patent suit provided a decree should be entered for the plaintiffs, unless the machine used by the defendant was constructed before the date of the application of plaintiffs for their patent: Held, That the time when such machine was so "constructed" meant when it was substantially complete in its parts, and that it was not necessary that it should be doing work. Troy Iron and Nail Factory v. Odiorne, 967. 4. An agreement made between a patentee with another, that in case of

AGREEMENTS-continued.

renewal he will convey to him such renewed patent in consideration of a certain sum, is valid; and if the patent is renewed, such agreement conveys to the assignee an equitable interest or title to the entire interest of the assignor, which can be converted into a legal title by paying, or offering to pay, the agreed consideration. Hartshorn v. Day, 1031.

5. An agreement made between a patentee and a trustee, that the latter should hold the patent and have control thereof, for the benefit of those who had a right to use the same, without the written consent of such trustee, transfers the entire interest, legal and equitable, of the patentee to such trustee, for the benefit of those interested. Ibid.

6. A neglect to pay to such patentee an annuity provided for in such agreement to be paid by the trustee to the patentee, will not rescind the contract or remit to the patentee the interest conveyed. The right to such annuity rests in covenant, for a breach of which an action at law will lie. Ibid.

See ACCOUNT OF PROFITS; ACTIONS; ASSIGNMENT; INFRINGEMENT; LICENSE; RESTRAINT OF TRADE.

ALIENS.

1. As to the rights of a patentee to surrender a defective patent, there is no difference between a citizen and an alien. Shaw v. Cooper, 173.

2. By the provisions of the Patent Acts, (1793 and 1800,) citizens and aliens, as to patent-rights, are placed substantially on the same ground. Ibid.

AMBIGUITY IN PATENTS.

1. The invention cannot be established by comparing the invention specified in the patent with former ones in use. Evans v. Eaton, 48.

2. The degree of clearness required in the specification, under the act of 1793, is to "distinguish the invention from things before known, and to enable any person skilled in the art or science to make and use the same." Hogg v. Emerson, 438.

3. But the patentee need not describe particularly, and disclaim all the old parts. Ibid.

See COMPOSITION OF MATTER; DEFENSES; PATENT; SPECIFICATION.

AMOUNT IN CONTROVERSY.

1. Where a bill is filed to enforce a specific performance of a contract in relation to a patent, the Supreme Court has no appellate jurisdiction, unless the matter in controversy exceeds the value of two thousand dollars. Brown v. Shannon, 1044.

2. The amount of the penalty in a bond taken in the court below, cannot be referred to, to give jurisdiction. Ibid.

1. Under section 17 of the act of 1836, if a writ of error is allowed in cases where the amount in dispute does not reach two thousand dollars, and in