Bartholomew v. Sawyer

As, on the trial, there was no proof that the patentee did not, at the time of his application for a patent, believe himself to be the first invent- or or discoverer of the thing patented, and as, at the time of his application, he made oath that he did believe that he was such first inventor and discoverer, it must be held, that it satisfactorily appears that, at the time of such application, he believed himself to be the original and first inventor and discoverer of the thing patented.

The 6th section of the patent act of July 4th, 1836, (5 Stat. 119,) provides, “that any person or persons having discovered or invented any new and useful art, machine, manufacture, or composition of matter, or any new and useful improvement on any art, machine, manufacture, or composition of matter, not known or used by others before his or their discovery or invention thereof, and not, at the time of his application for a patent, in public use or sale, with his consent or allowance, as the inventor or discoverer,” may, on application to the commissioner of patents, obtain a patent for the thing invented or discovered. If the thing discovered or invented by the applicant was known or used before his discovery or invention, within the meaning of these terms, as used by the patent law, then no legal patent can be granted, and, if granted, the same cannot avail the patentee. It appears clearly, by the latter part of the 15th section of the same act, that a use in a foreign country was not meant to be included within the terms, above recited, “not known or used by others before his or their discovery or invention thereof,” and that such use will not, by itself, avoid the patent.- For, it is expressly provided, by the 15th section, “that whenever it shall satisfactorily appear, that the patentee, at the time of making his application for the patent, believed himself to be the first inventor or discoverer of the thing patented, the same shall not be held to be void on account of the invention or dis*962covery, or any part thereof, having been before known or used in any foreign country.” In the present case, it appeared, on the trial, that the patentee did, at the time of making his application for a patent, believe himself to be the first inventor or discoverer of the thing patented. The patent of the plaintiff, therefore, could not be_avoided by the mere fact that the invention or discovery patented had been known or in use in a foreign country before the discovery of the plaintiff. It also appears, by the 7th section of the same act, that the use meant by these terms was intended to be confined to a use, discovery or invention in this country, made prior to the discovery or invention of the applicant, the proof of which prior use must be so limited, provided the patentee, at the time of his application, believed himself to be the first inventor or discoverer. The 7th section makes it the duty of the commissioner upon the application of anyone for a patent, to make an examination of the alleged new discovery or invention, and then provides, that “if, on any such examination, it shall not appear to the commissioner that the same had been invented or discovered by any other person in this country, prior to the alleged invention or discovery thereof by the applicant, or that it had been patented or described in any printed publication in this or any foreign country, or had been in public use or sale, with the applicant’s consent or allowance, prior to the application, if the commissioner shall deem it to be sufficiently useful and important, it shall be his duty to issue a patent therefor.” The terms, in this section, “prior to the application” for a patent, refer only to the ‘.'public use or sale” (of the invention) “with the applicant’s consent or allowance.” They do not refer to anything else. And the terms, “prior to the alleged invention or discovery thereof by the applicant,” refer to an invention or discovery by some one other than the applicant, in this country; and also to a patent or description in some printed publication in this or some foreign country. The true meaning of this section, taken by itself, is, that a patent shall issue to the applicant and be valid, if he is the originator and author of a useful invention or discovery, unless the thing invented by him had, prior to the alleged invention or discovery by the applicant, been invented or discovered or used by some one else in this country; or, unless the invention of the applicant had been patented or described in some printed publication, in this or some foreign country, prior to the alleged invention or discovery by the applicant; or, unless said invention of the applicant had been in public use, or on sale, with the applicant’s consent or allowance, prior to his application to the commissioner for a patent This latter restriction was modified by the act of March 3d, 1839, (5 Stat. 354,) so that the public sale or use, with the consent and allowance of the applicant, must, in order to forfeit his right, be more than two years before his application.

Other portions of the act of 18315 confirm the view thus taken of the subject. In the 15th section, it is provided that, upon the general issue, with notice, certain matters may be given in evidence, to avoid the patent. Among those matters are, that the thing patented had been described in some public work anterior to the supposed discovery thereof by the patentee, (not anterior to the application for a patent,) or that it had been in public use or on sale with the consent and allowance of the patentee, before his application for a • patent. The publication, to avoid the patent, must be anterior to the discovery by the patentee. It is not sufficient that it should be anterior to the application to the commissioner for a patent.

It has been urged, that the proviso to the 15th section, gives a different rule on this subject. That proviso is as follows: “That, whenever it shall satisfactorily appear, that the patentee, at the time of making his application for the patent believed himself to be the 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 before known or used in any foreign country, it not appearing that the same, or any substantial part thereof, had before been patented, or described in any printed publication.” It is claimed, that the time referred to by the terms, “having been before known or used in any foreign country,” is the time when the application for the patent was made; and that the terms, “had before been patented, or described in any printed publication,” refer, also, to the time when such application was made, and not to the time when the original invention or discovery was made. If there be any doubt as to the construction which this proviso should receive when considered by itself, the true construction of it is free from doubt, when it is considered in connection with other sections, and with the whole scope of the act. Viewed in such connection, it must be held, that the time referred to by the terms above recited, is the time when the original invention or discovery of the pat-entee was made, and not the time when he presented his application to the commissioner. Any other or different construction of this proviso would be in conflict with the whole scope of the act, and with the plain and clear enactments of certain parts of it, and would make several of its sections irreconcilable with each other.

With this view of the case, the motion for a new trial must be denied.