On supporting science journalism
If you're enjoying this article, consider supporting our award-winning journalism by subscribing. By purchasing a subscription you are helping to ensure the future of impactful stories about the discoveries and ideas shaping our world today.
There are hopeful indications that a final stop may he put to the fraudulent acquisition of patent rights by means of reissues, the most fruitful source of complaint against the working of the Patent Office. A characteristic illustration of this sort of proceeding was brought out in a case lately decided in the United States Supreme Court. A patent was taken out in 1860 for an alleged improvement in lamps. The patent described a com-bination of devices, including two domes, one over the other, elevated above a perforated cap through which a wick tube ! and a vapor tube ascended. It was claimed that this combination of devices, especially including the two domes (which admitted the external air between them for producing a more perfect combustion), would allow a chimney to be dispensed with. The invention was a failure, but the inventor and others found that a single dome, used with a chimney, would be a real improvement; and for fifteen years such lamps, as undisputed common property, were manufactured in large numbers for burning kerosene. Notwithstanding its rent worthlessness, a reissue of the patent was ask id obtained in 1873, extending the time, but, as would appear, without any material change in the claims. Meantime, the holder of the patent (not the original patentee) had discovered that, had it covered only a single dome to be used with a chimney, the patent would have been valuable, whereupon another reissue was sought and obtained in 1876, the amended claims being made to cover the very thing the original patentee professed to avoid and dispense with. The object, of course, was to make all manufacturers of kerosene lamps tributary to the assignee of the extended patent. Suit was brought in the Circuit Court of the United States for the District of Connecticut by the holder of the extended patent, Edward Miller & Company, against the Bridgeport Brass Company, to restrain the infringement of the patent and for an account of profits, etc. The court dismissed the bill on the ground that the second reissue was not for the invention claimed in the original patent. The case was appealed to the Supreme Court of the United States, and the decision of the Circuit was sustained. 1 In his decision Mr. Justice Bradley comments upon the case and upon the matter of reissued patents in a manner which indicates a clear determination on the part of the Court to discourage, so far as possible, further proceedings of this nature. After pointing out the effrontery of claiming in the reissue a combination involving the specific device which it was the avowed purpose of the inventor to dispense with, the court points out another grave objection to the validity of the reissued patent, namely, that tbe suggestion of inadvertence and mistake in the original specification was a mere pretence, " too bald for human credence," or if not, the mis-: take was so obvious as lo be instantly discernible, and the right to have it corrected was abandoned by unreasonable delay. "If two years'public enjoyment of an invention, with the consent.and allowance of the inventor, is evidence of abandonment and a bar to an application for a patent, a public disclaimer in the patent itself should be construed equally favorably to the public. Nothing but a clear mistake or inadvertence, and a speedy application for its correction, is admissible w;hen it is sought merely to enlarge a claim." After tracing the historical development of the abuses which have arisen under the laws granting reissues, the court observes that it is clear that it was not the special purpose of the legislation on this subject to authorize the surrender of patents for the purpose of reissuing them with broader and more comprehensive claims, although under the general terms of the law such a reissue may be made where it clearly appears that an actual mistake has inadver-' tently been made. But, adds the court, by a curious mis-i application of the law it has come to be principally resorted , to for the purpose of enlarging and expanding patent claims. This is clearly wrong, except where an actual mistake has occurred, not from a mere error of judgment (for that may be rectified by appeal), but a real bona-fde mistake inadvertently committed; such, a court of chancery, in cases within ' its ordinary jurisdiction, would correct. The court adds: " Reissues for the enlargement of claims should be the exception and not the rule. And when, if a claim is too j narrow, that is, if it does not contain all that the patentee is entitled to, the defect is apparent on the face of the patent, ; and can be discovered as soon as that document is taken out i of its envelope and opened, there can be no valid excuse for delay in asking to have it corrected. Every independent inventor, every mechanic, every citizen, is affected by such ', delay, and by the issue of a new patent with a broader and .! more comprehensive claim. The granting of a reissue for ! such a purpose, after an unreasonable delay, is clearly an ': abuse of the power to grant reissues, and may justly be declared illegal and void. It will not do for the patentee to ) wait until other inventors have produced new forms of im- i provement, and then, with the new light thus acquired, ! under pretense of inadvertence and mistake, apply for such JI an enlargement of hisclaim as to make it embrace these new j forms. Such a process of expansion carried on indefinitely, without regard to lapse of time, would operate most unjustly against the public, and is totally unauthorized by the law. J In such a Case, even he who has rights, and sleeps upon them, justly loses them." The sigidficance and importance of this decision need B not be enlarged upon.. The practice of expanding and idealizing claims in reissues has been the source ot serious wrong to the public and of hazard to the entire patent system. The Patent Office, as well as honest inventors and the public at-large, is interested in having it stopped.
