We give below the most valuable portions of a decision lately made by Judge Clark in the New Hampshire District, in the suit in equity, George Crompton vs. Tile Belknap Mills et (tl. The respondent oblects to the Marshall Patent of December 11,1849, that the invention was neither new nor useful, and that the patentee did not, before the gr; mting- and issuing of the letters to him, take the oath prescribed by section 6th, of the act of July 4, 1836, that he verily believed he was the original inventor or discoverer of the art, machine, etc., for which he solicited a patent. I A Patent is deemed prima /aae evidence that the patentee has made the invention. There is, in this case, no sufficient evidence to overcome that . presumption, or prima facie case. There is evidence that» open- slied» fan cy looms were used prior to Marshalls invention, but not involving the combination of Marshall. His invention must there fore, be t aken to be new. Precisely how useful it may be, the court have not undertaken to decide ; but that it is suflicientlyso to support a paten , we haveno doubt. Other loomsmay have been preferred by different persons, or may have found a readier sale ; but that good cloth can be woven by Marshalls loom and invention there is sufficient evidence. J lo warrant a patent, the invention must be usefulthat is, capable of some beneficial use, in contradistinction to what is pernicious, or frivolous, Or worthless. These Objections to the p atent cannot therefore avail. Nor c,m the other, th t the oath required by the 6th section of the act of 1836 was not taken, for two reasons. 1st. Ve a re not satisfied the oath was not t akcn. The letters patent recite that it was . The respondent finds, among the papers on file III the cage in , the Patent Office, a blank form of the oath, with thejura^ n^^^^^by any- ! magistrate, and hence he argues the oath wTas not taken. But theoathniay have been taken for 8.11 th at, an d this negative testimony cannot overcome the direct recital of the letters 13 atent that the oath was taken ; or the pre- ; sumption that the require! nents of the law were complied with in issuing the p atent. But suppose it we re so. Sup pose the oath was not taken, would the patent be void on th at account d It was held otherwise by Justice Story in the cade of Whittcmore . Cutter, 1 Gal., 439. The taking of the oath, though to be done prior to the granting of the patent, is not a condition precedent, failingwhieh the p atent must fail. It is the evidence required to »befurnished to th a Patent Office, th at the applicant verily believes he ib the original and first inventor of the at t, etc. If he take this o ;itli, and it turns out that he was not the first inventor or discoverer, Ins patent must fail, is void. So, if he do not take it, and still he is the first inventor or discoverer, the patent will b e supported. It is prima facie evidence of the novelty and or iginaiity of the invention until the contrary appear. So the aet says, on payment of the dutythat is, feesthe commissioner shall make an examination, and, if t!ie invention shall be found useful and , important, shall issue a p atent. Supposc the fees should not be req uired orpaid,would the patent therefore be vold? Yet the one requirement appears to be as much a condi tion precedent as the other, Both directory, not to b dieiised with , but neither involving the validity of the patent »hen granted. The next objcctlons ai-e to the reissued patent, and they are two. 1st. That the ori fin a] patent was void, and the reiss ue was therefore so ; and W. That the reissue was not for the same invention as the original. The first of th ese objections has alreadybecn disposed of. It was main-i,aiued 11 the argument, that the original patent was void forwant of the pro per oath, and th at the defect could not be cured by the reissue. But, whether the oath were taken or not, we are of the opinion, as already expressed, th at such an omission would not invalidate the patent, nor would it affect tlie reissue. The second objection to the reissue is a iiore serious one, as id for its pro per determination requires a careful examination and comp-ti is m o f the original patent to Mars hall, and the reissue to Crompton . We think that substantlally the same invention is described in the two p atents. Hut if it should be held that the original patent to Marshall, and the reissue to Crompton, assi»-ne<\ were valid, itis contended that the extension to Marshall, was not, for three reasons, to wit: 1 , That as Marshall never had any into rest in the reissued patent, it could not he extended to him. 2, That no sufficient notice was given to the public of the application for the e xtensio n of the patent, and 3. Th at the extension was obtained by fraud. To the first o in ect ion, to wi t, » that as Marshall never had any interest in the reissued p ;itent, it could not be extended to him,» it is a full answer, that,iiijudgment of law, the reissue is only a continuation of the original ]) atent. So held in Read r Bowman, 2 Wallace, 004; and as Marshall \vus the original patentee, the extension was legally and properly to him. The extension enuring, under the ttatnte,to the assignees and grantees to the extent of their respective 11 terests. The second objection Is th 11 there was no notice ever ordered, or given of anv application to extend the reissued patent. There was of the application to extend the original patent, and the objection stands upon the supposition, or idea, that they are two distinct patents, while in judgment of law they are one. If the reissue was only a, eontinnation of the original patent, th en a notice to extend the original would seem to have been sufficient.
This article was originally published with the title "Omission of Oath Under Sec. 6. Act of 1836—Fraud in Obtaining the Extension—Third Parties Cannot take Advantage of Same—Law of Combinatlons—What Will Infringe a Combination Claim"