Godfrey v. Eames, 68 U.S. 317 (1863)

U.S. Supreme Court

Godfrey v. Eames, 68 U.S. 1 Wall. 317 317 (1863) Godfrey v. Eames

68 U.S. (1 Wall.) 317

ERROR TO THE CIRCUIT COURT FOR

THE DISTRICT OF MASSACHUSETTS

Syllabus

If an applicant for a patent choose to withdraw his application for a patent, intending at the time of such withdrawal to file a new petition, and he accordingly does so, the two petitions are to be considered as parts of the same transaction, and both as constituting one continuous application within the meaning of the seventh sections of the Patent Acts of 1836 and 1839. CLIFFORD, J., dissenting.

The question of the continuity of the application is a question to be submitted to the jury.

The Patent Act of 1836 provides [Footnote 1] that on the filing of an application for a patent,

"the commissioner shall make or cause to be made an examination of the alleged new invention or discovery, and if on any such examination it shall not appear to the commissioner that the same had been . . . in public use or on sale with the applicant's consent or allowance prior to the application, . . . it shall be his duty to issue a patent therefor, but whenever on such examination it shall appear to the commissioner that . . . the applicant was not the original and first inventor or discoverer thereof, or that what is claimed as new had before been invented or discovered, . . . or that the description is defective and insufficient, he shall notify the applicant thereof, giving him briefly such information and references as may be useful in judging of the propriety of renewing his application or of altering his specification to embrace only that part of the invention or discovery which is new."

"In every such case," the act goes on to say,

"if the applicant

Page 68 U. S. 318

shall elect to withdraw his application, relinquishing his claim to the model, he shall be entitled to receive back $20, part of the duty required by this act, on filing a notice in writing of such election in the Patent Office. . . . But if the applicant in such case shall persist in his claim for a patent, with or without any alteration of his specification, he shall be required to make oath or affirmation anew, in manner aforesaid, and if the specification or claim shall not have been so modified, as in the opinion of the commissioner shall entitle the applicant to a patent, he may on appeal, and upon request in writing, have the decision of a board of examiners,"

&c.

A subsequent act -- an act of 1839 [Footnote 2] -- provides that those who shall have purchased, sold, or made the thing patented "prior to the application of the inventor or discoverer for a patent, shall be held to possess the right to use and vend to others to be used" the same, and that

"no patent shall be held to be invalid by reason of such purchase, sale, or use, prior to the application for a patent as aforesaid except on proof of abandonment of such invention to the public or that such purchase, sale, or prior use has been for more than two years prior to such application for a patent."

With these enactments in force, Godfrey, on the 31st January, 1855, filed an application for a patent for boot trees. This application the commissioner, on the 17th May, 1855, rejected for want of novelty. On the 24th April, 1857, within the time required by the rules, Godfrey submitted his case again. The old application was withdrawn and a new one filed simultaneously, the withdrawal fee of $20 going to make part of the new application fee of $30, and not in fact being received by the applicant. These different applications were made through different attorneys, and the description of invention, the claims of novelty, and the models were in some respects different. It was admitted, however, at the bar, "that that which was finally patented might, if it had been properly introduced, have been engrafted as an amendment

Page 68 U. S. 319

to the first application." A patent was issued March 2, 1858.

It was part of the case "that the patentee, in the summer and fall of 1854, and since, publicly manufactured and sold boot trees containing his alleged invention."

On a suit by the patentee, Godfrey, in the Circuit Court for the District of Massachusetts against Eames for the use of the boot tree patented, the question was whether Godfrey had forfeited his patent by more than two years' public use or sale of his invention prior to his application. The court below instructed the jury that he had, and accordingly that the plaintiff could not recover. The correctness of this instruction, was the matter now before this Court on error.

Page 68 U. S. 324

MR. JUSTICE SWAYNE, after quoting the statutes of 1836 and 1839, delivered the opinion of the Court: [Footnote 3]

In this case, the patentee filed his application in the Patent Office on the 31st of January, 1855, and from that time it was constantly before the office until the patent was issued on the 2d of March, 1858, except that on the 24th of April, 1857, it was withdrawn and refiled on the same day with an amended specification. It was admitted and proved "that the patentee, in the summer and fall of 1854, and since, publicly manufactured and sold boot trees containing his alleged invention." The sales and use as thus shown were less than two years before the first application was filed, and hence, according to the letter of the act of 1839, cannot affect the validity of the patent.

In answer to this, two propositions are relied upon by the plaintiff in error:

1. It is said the original and the renewed application are for patents for different things.

Both specifications are before us, and it is our duty to construe them.

The act of 1836 gives the applicant a right to change his specification after receiving the suggestions of the commissioner. Doubtless this right exists and may be exercised independently of such suggestions, at any time before the commissioner has given his formal judgment upon the application; and the inventor may "persist in his application for a patent, with or without any alteration of his specification." A change in the specification as filed in the first instance, or the subsequent filing of a new one, whereby a patent is still sought for the substance of the invention as originally

Page 68 U. S. 325

claimed, or a part of it, cannot in any wise affect the sufficiency of the original application or the legal consequences flowing from it. To produce that result, the new or amended specification must be intended to serve as the basis of a patent for a distinct and different invention, and one not contemplated by the specification, as submitted at the outset.

We are satisfied that there was here such substantial identity in the two specifications as brings the case within the rule thus laid down. This objection cannot be sustained.

2. It is said that the withdrawal of the first application broke the continuity of the claim, and that the case stands as if the only application were the one of the 24th of April, 1857.

This question could not have arisen upon the same state of facts, under the act of 1836. According to that act, and the prior legislation of Congress, the public use or sale by the inventor of the thing invented, at any time before the application, was fatal to his claim for a patent. The act of 1839 relieved him from this consequence and introduced a new and more liberal policy. It gave him the right to apply for a patent at any time within two years after the use and sale of his invention, "except on proof of the abandonment of such invention to the public." The provision in the act of 1836, allowing the withdrawal of the application, was intended only to provide for the disposition in such cases of the duty which had been deposited, and to enable the applicant to resume a part of it upon the condition prescribed; it is silent as to everything beyond this, and we do not feel authorized to interpolate into the statute so important a qualification. The new provision in the act of 1839, is wholly independent of the act of 1836; by necessary implication it repeals the conflicting provision upon the same subject in the earlier act. It must be examined by its own light, and so construed as to give the fullest effect to the beneficent purpose of the legislature.

In our judgment, if a party choose to withdraw his application for a patent, and pay the forfeit, intending at the time of such withdrawal to file a new petition, and he accordingly

Page 68 U. S. 326

do so, the two petitions are to be considered as parts of the same transaction, and both as constituting one continuous application, within the meaning of the law.

The question of the continuity of the application should have been submitted to the jury. In directing them to return a verdict for the defendant, we think the learned judge who tried the case in the court below, committed an error.

MR. JUSTICE CLIFFORD dissents.

Judgment reversed and venire de novo awarded.

[Footnote 1]

§ 7, 5 Stat. at Large 119.

[Footnote 2]

§ 7, 5 Stat. at Large 354.

[Footnote 3]

MR. CHIEF JUSTICE TANEY and MESSRS. JUSTICES WAYNE, GRIER, and FIELD had not been present at the argument.