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LOANED TO
UNIVERSITY OF CALIFORNIA

DEPARTMENT OF MECHANICAL AND ELECTRICAL ENGINEERING
FROM PRIVATfe LIBRARY OF

c. L.

1930




Library



Patents/ Trademarks
and Copyrights



SECOND EDITION



BY

FRANK L. GRAHAM, L. L. B.

AND

FORD W. HARRIS, Member A. S. M. E.
Fellow A. I. E. E.



Copyright 1921 by Graham dff Harris



Library



Engineering
library



GRAHAM & HARRIS

A ttorneys-at-Law
Solicitors of Patents

Specializing in Patents, Copyrights, Trademarks,

and Unfair Trade

Practicing before The United States Patent Office,
The Federal Courts, Courts of California



Los ANGELES, CALIFORNIA



PREFACE



The reception accorded the first edition of
this modest attempt to explain, in an elemen-
tary manner the fundamentals of patent prac-
tice, met with such success that we have been
encouraged to somewhat extent its scope and
to publish a second edition.

We have not attempted to write a law book
and those who wish to study the law, are
referred to Walker, Robinson, Hopkins or
other standard text books on this subject.

It is the purpose of this book to present a
broad and general explanation of those points
in patent practice which the patent attorney is
most often called upon to explain. It is
thought that such an explanation will be of real
service to the inventor and business man and,
to a certain degree, to the lawyer in general
practice.

The treatment of the subject is, however,
both brief and general and it should be borne in



793262



mind that the answer to a specific question in
this field can only be determined after a full
and complete consideration by a competent
patent attorney, of all the facts surrounding the
question.

FRANK L. A. GRAHAM.

FORD W. HARRIS.



Los Angeles, CaL,
October, 1921.



CONTENTS



PAGE

ABANDONMENT

of application 78

of experiments 38

of invention 82

AGGREGATION 31

AMENDMENTS
of applications 57

APPEALS

to Examiner-in-chief . . 63
to Commissioner of

Patents 63

to Courts 63

APPLICATIONS

abandonment of 78

amendments of 57

divisional 62

examination of 56

forfeiture of 79

formal parts 46

procedure in patent

offce ....56,57,58,59,60
where made . 45



ART
defined



16



ASSIGNMENTS

assigned interest 21

requisites of 86

undivided interest 83

CAVEATS

law repealed 46



PAGE

CLAIMS

character of . .49, 50, 51, 52
definition of monopoly. 15



COMBINATION
claim for .



50



COMMISSIONER OF

PATENTS
appeals to 63

COMPOSITION OF
MATTER

defined 17

subject of patents 16

CONTRACTS

patent as contract 14

relating to patents .... 85

COPYRIGHTS
in general 113

COURTS

jurisdiction in suits on
contracts 101

jurisdiction in infringe-
ment suits 100

suits, where brought.. 101

DAMAGES

for infringement 106

DEFENSES

in infringement suits ..103

DEFENDANTS

in patent actions ....101



PAGE

DESIGNS
subject of patents 18

DESIGN PATENTS

infringement of 106

duration of 18

field for 19

DISCLAIMERS

purpose of 78

DISCLOSURE

in specification 47, 48

DIVISIONAL

APPLICATIONS
nature of 62

DRAWINGS
nature of 54

EMPLOYER AND

EMPLOYEE

shoprights 83,88

when employer entitled

to patent 87

EQUIVALENTS
mechanical equivalents 30

EXAMINATION

of applications 56

EXAMINERS IN CHIEF
appeals to 63

EXTENSIONS
of life of patent 79

FEES

attorneys 56

Patent Office 55

IMPROVEMENTS
subject of patents 16



PAGE

INFRINGEMENT

avoiding 91

damages for 106

defenses to 103

of letters patent 95

of machine patent .... 98

of process patent 98

suits for 99

INJUNCTIONS

against infringement ..105

INTERFERENCES

applications for patent

in 67

between application and

issued patent 69

issues 68

preliminary statements. 67
procedure ....70,71,72,73
question raised 67

INVENTION

defined 25

element of patentability 25

interests in 85

JOINT INVENTION

defined 21

joint inventors 20

mechanical assistance
not 22

JURISDICTION

of Federal courts 100

of state courts 101

LICENSES

express 85

implied 87

shopright 87



PAGE

MACHINES

defined 17

subjects of patents 16

MANUFACTURES

defined 17

subjects of patents 16

MARKING

method of 81

patent applied for .... 81

MECHANICAL EQUIV-
ALENTS 30

MODELS

when required with ap-
plications 47

MONOPOLY

building a 89

NEW MATTER

in applications 58

NOTICE

before grant 81

marking patented 81

NOVELTY

defined 34

necessary to patentabil-
ity 25

prior art 29

prior patent 36

prior printed publica-
tions 35

prior use 37

OPINIONS

on commercial value.. 94
on scope 93



PAGE

. 47



OATH

PATENTS

classification of 16

correction of errors in

letters patent 77

design patents 18

duration of 79

extension of 79

foreign patents 109

in general 7

scope of 96

title to 22

utility patents 16

validity of 92

PATENT APPLIED
FOR 81

PATENTABILITY

aggregation 31

invention 25

mechanical equivalent 30

mechanical skill 27

mere changes in old

things 29

novelty 34

prior art 29

requirements of 25

utility 39

PATENT RIGHTS

forms of 85

in general 84

nature of 9

patent not a license. ... 10

purpose of grant 8

specification does not
define rights 15

PERSONAL VISITS TO
PATENT OFFICE.. 60

PETITION . . 46



PAGE



PAGE



PRELIMINARY

EXAMINATIONS

how made 41

not conclusive 41

not made by Patent
Office 40

PRINTED PUBLICATION

defined ....... 35

when negatives novelty 35

PRINTS AND LABELS
in general 114

PRIOR PATENT

when negatives novelty 36

PRIOR USE

as anticipation .' . 37

in foreign countries ... 35

PRIORITY

question of, between
rival inventors 67

PROCESS 16

PUBLICATIONS

Official Gazette 117

Copies of patents 118

Manual of Classifica-
tion 118

PUBLIC USE

bar to grant 37

RECORDING

of assignments 86

REVIVAL OF ABAN-
DONED APPLICA-
TIONS 78

REDUCTION TO
PRACTICE

actual and constructive 68



REISSUES

broadened 75

intervening rights .... 76
narrowed 75

SHOP RIGHTS

implied from employ-
ment 83,88

SPECIFICATION

claims 49

description 47

STATE OF THE ART
defined 29

SUBJECTS OF PATENTS
classification of 16

SUITS

courts 100

defenses 103

jurisdiction of 101

technical nature of ...100
where brought 99

TRADE MARKS

United States 110

foreign 112

TIME REQUIRED TO
OBTAIN ALLOW-
ANCE 59

TITLE 22

UNDIVIDED IN-
TEREST 83

UNFAIR COMPETI-
TION 107

UTILITY

necessary to patentabil-
ity 25

amount of 39

WHO MAY APPLY . . 19






CHAPTER I.



PATENTS IN GENERAL



The United States Government has recog-
nized inventions as an important factor in the
industrial development of the nation and for
the purpose of promoting the progress of
science and the useful arts Congress has by
appropriate laws, provided for the granting of
patents of invention.

To the individual, patents open a new field
for personal endeavor and advancement,
whether the patent is used as a nucleus for a
business or whether the inventor, by license or
sale, derives an income therefrom.

To the business man, patents mean protec-
tion and insurance to his business; protection,
as the owner of a patent can prevent competi-
tion by others; and insurance, as his ownership



[7]



of a patent relating to his business prevents this
patent ;r!om falling into the hands of his com-
petitors who might then prevent him from
[using he"<m>vention covered by the patent.

To the public, patents mean new industries
and developments. Under the protection of
patents, new business enterprises spring up and
invention and progress are fostered. The
public shares largely in the fruits of a success-
ful invention, as it must be better or cheaper
to supplant what went before, and the public is
the great gainer by the introduction of better
or cheaper things.

Purpose of grant. It is the purpose of
the Patent Laws to grant to the inventor the
exclusive right to make, use, and sell his inven-
tion for a limited time, provided the inventor
will make a full disclosure of the invention
accessible to the public. This disclosure of the
invention is made by the inventor in his appli-
cation for a patent and remains confidential
between the inventor and the Patent Office until
the patent is finally issued. The patent is a
public record of the advancement made in the



[8]



art by the invention, and, at the same time, it is
notice to the public of the exclusive rights of the
inventor in his inventions.

Nature of rights granted. The exclu-
sive rights or monopolies granted by a patent
comprise the right to exclude others from mak-
ing, selling or using the invention claimed in the
patent during the life thereof. These rights
are not collective but separate and distinct, as
for instance, devices embodying the invention
covered by a patent cannot be made abroad and
used or sold in this country, neither can the
invention be made in this country for sale or
use abroad without the patentee's consent. In
the United States the monopoly granted by the
patent is absolute during the life of the patent
and cannot be lost by the failure of the patentee
to work or develop the invention. In some
foreign countries the patentee must pay taxes
at periodic intervals, and in most foreign coun-
tries some effort must be made to put the inven-
tion into public use or to "work" it. Failure to
pay taxes or to work the patent in such coun-
tries causes the patent to lapse. No such rule
applies, however, in the United States.



[9]




A patent is not a license. A patent is
not a license to make anything. It is merely a
right to exclude others from making, using or
selling the thing claimed in the patent during
the life of that patent. As stated by Mr. Chief

"Justice Taney, "The franchise which the patent
grants consists altogether in the right to exclude
everyone from making, using or vending the
thing patented, without the permission of the
patentee." A patentee may have a right to
stop others from making, using or selling his
claimed invention without having the right him-
self to make, use or sell the invention disclosed
in his patent. This situation frequently arises

where an earlier patent has been granted which
covers broadly various means for producing the
same result. This can only occur where the
earlier patentee is a pioneer in the field to which
his invention relates. It must be understood
that in the case of such a broad patent the
claims of the patent may be so worded that the
patent not only covers the specified form of the
invention disclosed in the patent, but also covers
various forms and modifications not directly
shown.



[10]



Broad patent no bar to later narrow
patents. The fact that a broad patent has
been granted, however, does not mean that a
later narrower patent cannot be granted for an
improvement over the forms of the invention
disclosed in the broad patent, as the Patent Stat-
ute expressly states that patents may be granted
for any new or useful invention or any improve-
ment thereon.

If the later applicant can convince the Pat-
ent Office that he has invented an improvement
on the invention disclosed in the earlier patent,
the Patent Office will grant him a patent on his
improvement having claims expressing the dif-
ference between what the later applicant dis-
closes in his application and what is disclosed
in the earlier broad patent. The Patent Office
in examining an application does not concern
itself with the question of infringement, but
merely with the question of whether the inven-
tion shown in the application is new and useful.
It is the regular practice of the Patent Office to
grant improvement patents where there are
existing prior broad patents which contain
claims which are infringed by the devices shown
in the later improvement patents.

[11]



Result of grant of narrow patent.

The results of granting the earlier patent con-
taining broad claims and then granting a later
patent covering improvements over the inven-
tion disclosed in the earlier patent is as follows.

When the first or earlier patent has claims
that cover the invention disclosed in the second
or later patent, the second patentee cannot
make such improvement without infringing the
first or earlier patent.

When the second or later patent has claims
that cover the specific form of invention dis-
closed therein, which must be somewhat differ-
ent from the form shown in the broad patent,
to result in a patent, the first patentee cannot
make such mprovement without infringing the
second patent, or in other words, the first pat-
entee cannot make the specific form of the in-
vention claimed in the later patent.

Ownership of patent no evidence of
right to make. It is therefore evident that
the fact that a patent has been issued is no rea-
son for assuming that the patentee thereunder
can make, use or sell the invention shown and

[12]



described in such patent. -It may be that he
has merely an improvement patent, and that
the invention shown and described therein in-
fringes one or more prior patents.

The fact that the Patent Office issues nar-
row patents showing inventions which infringe
earlier patents makes the determination of the
legal effect of any patent a task for an expert
and only a person thoroughly skilled in the art
of interpreting patents should undertake to con-
strue one. Patent Attorneys are often called
on for opinions in this connection and can fur-
nish such opinions only after an examination
of the patent, the circumstances surrounding its
grant, and the state of the art at the time it was
granted.

Large sums of money have been lost by in-
vestors due to accepting patents at their face
value or neglecting to consult an expert regard-
ing their validity and scope.

Disclosure and claims. The failure of
most people to understand the legal significance
of a patent arises from the fact that the distinc-
tion between the disclosure and the claims is not
understood, or if this distinction is understood,



13




that the general theory of claims is not under-
stood. We will try to make both of these
points plain.

Patent is a contract. The Courts have
adopted the view that a patent is a contract and
have so construed a patent. As stated in
National Hollow Brake Beam Co. vs. Inter-
national Brake Beam Co., 106 F. 693, "A pat-
ent is a contract, and its construction is gov-
erned by the same canons of interpretation
that control the construction of other grants
and agreements."

patent is a written contract between the
inventor and the public, the Patent Office acting
as the representative of the public. It is a rec-
ord of a bargain. The inventor has disclosed
a secret and is given a limited monopoly in
return. He has given something and has re-
ceived something. What he has given, that
is, his secret, is set forth in his patent, being
shown with great particularity in the drawing,
if the invention is subject to illustration, and
fully described in the specification. The draw-
ing and specification disclose the inventor's se-
cret to the public. In disclosing and describing



[14



his secret, the inventor must, of necessity, in-
clude many things that are old and which really
constitute no part of his real invention, that is,
his invention may relate only to a part of a ma-
chine and to fully describe the operation of the
invention it may be necessary to show the entire
machine. Having shown the entire machine he
is, therefore, required by statute to particularly
point out and distinctly claim his invention.
This he does by means of his claims. The
claims define the part he has invented and de-
fine his monopoly or what he receives just as
the disclosure of his invention defines what he
gives.

Specification does not define patentee's
rights.- ^The fundamental mistake made by
/ many people is to read the specification and
inspect the drawing of a patent and assume that
all that is described or shown is the exclusive
property of the patentee. This is not correct
as only a very small part of the matter shown in
the drawings and described in the specification
may be new or covered by the claims. It is in
the claims, and in the claims only, that we must
look for a definition of the patentee's monopoly.

[15]



If the patentee has disclosed something new
which he does not claim, he dedicates it to the
public. It is, therefore, quite essential that
the patentee understand the general theory of
claims and this subject will be more fully ex-
plained later.

Two kinds of patents. There are two
kinds of patents of invention, namely utility
patents and design patents. Utility patents are
granted for new and useful inventions and
design patents are granted for new and orna-
mental designs.

Utility patents. Utility patents are
granted for four general classes of invention,
namely, an Art, a Machine, a Manufacture or a
Composition of Matter.

Sec. 4886 of the Revised Statutes states, in
part, "Any person who has invented or dis-
covered any new and useful art, machine, man-
ufacture, or composition of matter, or any new
and useful improvements thereof * * * may
obtain a patent therefor."

Kinds of utility patents. The term
"Art" as used in patent law covers only a lim-



[16]



ited meaning of the word "process" and may be
defined as an operation performed by rule
accomplish a result. It is what is commonly
called a method, or process, of doing something.
While a principle of nature cannot ordinarily
be patented, it is often possible to patent the
method or process by which this principle is put
into use. Care should be taken to discriminate
between a method of operation or function of a
machine and a true process which can usually be
carried on by more than one type of means or
machine.

A Machine is a combination of connected
elements movable with relation to each other,
which when set in motion coact to produce a
predetermined result.

A Manufacture is an all inclusive term in-
cluding every artificial thing resulting from
human endeavor not a machine or a composi?x
tion of matter.

A Composition of Matter is a combination
of various substances which, taken together,
form a substance having certain new and useful
properties. Patents on compositions of matter
protect the formulae by which the compositions
are produced.



[17]



The Patent Office usually refuses to grant in
the same patent claims on a machine and a pro-
cess carried out by this machine so that two
applications are usually necessary to protect
both.

Design patents. Design patents are pro-
vided for in Sec. 4929 of the Revised Statutes
which states, in part, "Any person who has in-
vented any new, original and ornamental design
for an article of manufacture * * * may * * *
obtain a patent therefor."

Design patents, or patents for ornamental
designs, are granted for terms of three and
one-half (3j^), seven (7) and fourteen (14)
years. Design patents are granted for the pur-
pose of covering the ornamental appearance of
articles and relate to the form or surface deco-
ration of such articles. Design patents, in cases
where the invention is really not an ornamental
design, are comparatively easy to obtain and
such patents are often applied for after an appli-
cant has tried to obtain a utility patent and has
failed. In such cases the protection obtained
is almost negligible, but it allows the patentee
to mark the article "patented" and therefore
really serves a purpose.

[18]



Field for design patents. -Design pat-
ents, in their proper field, are just as legitimate
as utility patents, but their field is limited to
cases in which the appearance of the thing is
its chief value. In such cases, design patents
are quite valuable. Further, the statutes as to
infringement of design patents are more drastic
than the statutes relating solely to utility pat-
ents, there being a fixed initial liability of two
hundred and fifty dollars for such infringement.
So also it is not necessary that an infringer sell
the infringing design, the mere offering of it for
sale being an infringing act.

Who may apply for patent. The stat-
utes provide that "any person," who has in-
vented any new and useful invention or improve-
ment thereon, may apply for a patent. ' n ; /

As stated in Wende vs. Horine, 191 F. 620,
"Sections 4886, 4888, 4892, 4895 R. S. require
an application by thejnventor and this regard-
less of whether the inventor has parted with
title to the invention or not, and notwithstand-
ing he may even have taken steps to have the
patent issue to his assignee when granted."
The applicant need not be a citizen, nor need



[19]



he be of legal age. Insane persons may apply
through a guardian and an executor or admin-
istrator may apply for a patent on the invention
of a deceased person.

An invention, being a mental conception,
can only be produced by a natural person. A
corporation, for example, cannot produce an
invention. In the United States and in Can-
ada and many other foreign countries the appli-
cation must be made in the name of and signed
by the inventor, although he may at the same
time assign it to any person or corporation. In
England, and some other countries a corpora-
tion may apply for a patent, the theory in those
countries being that the patent is granted as a
reward for disclosing the invention and not for
making it. The actual inventor, or the joint
inventors, must sign the application in the
United States and execute the oath, which ac-
companies the application when the same is
filed in the Patent Office.

Joint inventors. Two or more persons
may be joint inventors. Mere financial assist-
ance to an inventor does not make the one ren-
dering such aid a joint inventor with the true

[20]



inventor. To create a joint invention all the
parties thereto must participate in its concep-
tion. There are no definite lines established
by law as to the extent a joint inventor must
have participated in the actual conception of
an invention, but all persons who have had
some part in the conception of the invention
are joint inventors, and must join in making the
application for patent

The rule as to what constitutes joint inven-
tion has been before the Courts on several occa-
sions and has been adopted as stated in Warden
vs. Fisher 11 Fed. 505, that it is not necessary
that the idea of an invention should occur
simultaneously to each of the joint inventors,
but it is sufficient that one conceives and the
other makes a suggestion essential to its suc-
cess, and where there is joint invention, it is im-
material in what order the suggestions or con-
ceptions are made so that the inventors work
together to the common end of completing a
single invention.

Assigned interests. Financial assistance
to the inventor is usually rewarded by the in-
ventor making an assignment of an interest in

[21]



the patent to the party giving such assistance,
which assignment should be recorded in the
United States Patent Office, preferable when
the application is filed, as all legal titles to
United States Letters Patent are dependent
upon the records of the Patent Office and all
transfers affecting the title are recordable there.

Mechanical assistant not a joint in-
ventor. When an inventor requires the as-
sistance of a skilled mechanic in order to give
physical expression to his idea, and instructs the
mechanic as to the result which he desires to
accomplish through mechanical means, and the
mechanic contributes merely the usual skill of
his calling, the mechanic does not participate in
the invention, and is therefore not a joint inven-
tor with the one who conceived the idea of the
invention.

On the other hand, if the mechanic makes
a valuable improvement over the original plan
suggested by the inventor, sometimes it is a diffi-
cult question to decide whether the mechanic has
a right to a patent on the improvement or not.
In the case of Agawam Co. vs. Jordan, 7 Wall.
583, it is stated as follows: "Where a person

%
[22]



has discovered an improved principle in a ma-
chine, manufacture, or composition of matter,
and employs other persons to assist him in carry-
ing out that principle, and they, in the course
of their experiments, make valuable discoveries
ancillary to the plan and preconceived design
of the employer, such suggested improvements
are in general regarded as the property of the
party who discovered the original principle, and
may be embodied in his patent as a part of his
invention. Where the employer has conceived


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