The New York herald. [volume] (New York [N.Y.]) 1840-1920, 1848-11-23
egraphic-Morse VS.. Bain-Attorney Ge-
nersl's Decision.

Telegra phlc-MOrse VS.. Bain-AttOrney Ge-
nersl's Decision.
The annexed decision, recently made by the
Attorney General of the United States, IN his Off
elal capacity on reference of the matter from the
Commissioner of Patents is an able document
and presents the strongly and clearly, for the
FIRST time, in new light. We also annex the
copy Of letter from the Commissioner OF Pa
tents, in which he lays down the future prac-
tee OF the Patent Office in similar cases, in view
Of this declsion:-.
UNITED STATES PATENT OFFICE,
November 8, 1913
SIR-Agreeably with your request, enclose copy
Of the Attorney Generals decision In the case Of Mr.
i viii here observe that have decided on the inter-
ference between Balm and Morse that in the future
action of this office the date Of the enrolment, and
not that Of the sealing shall be considered the date
Of foreign pa ent, behind which the foreign appl
cant will not be permitted to In order to prove the
priority of hisinvention. am, respectfully.
EDMUND BURKE.
ATTORNEY GENERALS OrrrcE,(
30th OF August, 1S4S.
How. JAMES BUCHANAN, SECRETARY STATE
Sir IL have the honor to reply to your letter sub
uniting On inquiry PROFOUND by the commissioner
Of patents, whether foreign patentee can go behind
the date Of his foreign patent and prove the actual
date Of his invention in order to defeat the rights Of
an Ameri inventor, there having been previous
description OF the invention in any printed pubca-
ton in other words. whether the fact Of inven
ton discovery abroad. which had not been patent
ed described in any printed publication, will de-
feat patent to original inventor who has invent
ed or discovered the same thing in this country.
upon the act Of Congress Attn Of July 1856 when the
patent Of the United States underwent revision
and several important provisions were for the first
time introduced.
By the sixth fecton it is enacted "that any person
or persons having discovered or invented any or
useful art, machine manufacture, composition Of
matter, any new and useful improvement in any
art machine, manufacture, composition of matter,
OF usea ~ S Dn n Of Their as
his application for patent in public use SALE
with his consent or allowance, as the inventor dis
coverer, and shall desire to obtain an exclusive pro-
perty therein make application In writing to the
commissioner Of patents, expressing such desire aud
Ths seoop
1.-The applicant shall make oath affirmation that he
does verify believe that he is the original first in
OF improvement, for which he solicits patent and
that he does not know or believe that the same was
ever before known or used and ass Of what country
he ia citizen %.
Thus far the law Is left substantially it stood be-
fore and If net accompanied by any new provs' ,,ns
would be controlled by previous
in a considerable degree upon enactmep.. - now he
obsolete. But the seventh seotio-. introduces
Of the gassoa
OF any such application des ption and specA cation
and tho payment Of the duty hereinafter provided,
examination Of tie new Invention or discovery and
IT. on any sdot application it shall not appear to the
commissions, that the same hath been invented or
d by any other person In this country prior
to the alleged invention or discovery thereof by
ePcant or that 1t had bee patented or described in
S in III OF the
applies consent allowance prior to the appica-
tion if the shall deem It to be sufficiently
useful and important, it shell be his duty to issue
patent therefor The rule prescribed the COM
missioner, is afterwards rearmed and carried out in
Sdips q rule Of adjudication, namely, That When.
II shall satisfactorily appear that the patentes at
the time Of making his application, believed himself
patented the shall not be held to be void
count Of the invention or discovery, or any part
thereof, having been before known, or used In any
foreign country If not appearing that the same,
any substantial past thereof had been before patented
or described In any printed puotSano 5.,,. That
patent sha issue TO the inventor, (sl other conditions
being complied with) the thing proposed to be Sc
cured had not been invented or discovered by any
other pereon in this country' the provise Of the
Ateenth secon enacts that the patent shall not be
held veid tall other conditions being complied witty
on account of the invention discovery any part
foreign country"
tion of the law Of patents designed to protect the
American inventor against the injustice Of being
thrown out of the fruits Of his ingenuity by the exis
tence Of . secret invention or discovery abroad.
That to say one not patented ana not described IN
any printed is we'll known that such
withheld from the public and when, therefore, the
American inventor has been fortunate as to invent
factor if the secret did not exist In any foreign
country ; and 1t the intention Of Congress to
not permit to be- defeated X. fsrssn
coming afterwards either for patent or with
out q patent There Is NO more reasonable or just
foundation title Of property than that which has
been mperfecty secured by law in the products Of
mind and is to be regarded IS the presumed nten
ton Of the legislator eectuay to secure It, where the
reason Of the Law win apply and the Language used
will admit favorable Interpretation. In the present
case the is clear and the Language exp icit
rn;vn 1nUu rnOun or
The proyiso, without the aid Of the sixth section
furnishes clear rule Of adjudication by which the
that an executive officer should regard that as an OBJ
lection to the grant OF patent, which the courts OF
I as thu.
nal bona de inventor in this who verify be-
heved himself the original or rst discoverer, at the
that his invention or discovery was ever before
known or used and when, in fact, 1t had not been
this eoantry, and had not Itself OF any substantial
part Of It, been before patented described In any
printed publication in any country, that the Ameri.
can inventor In such not entitled to patent
for his discovery because 1t had been before known or
used in foreign country is directly opposed to the
Congress, and /. without my legal foundation.
In such case the American inventor Is, In contem-
plaon Of law under the provision, OF the b scs OF
that invention not pate nted and not described In
any printed publication, has been before known or
used In any foreign country, is rendered immateria
except 60 far it may to the knowledge Of
the applicant and may thus conflict with the oath or
affirmation which he is required to take, or with his
aims as original inventor. IL he Is an original In
ventor and is in condition to take the oath or afr
nation prescribed then the act removes the supposed
objection out of the way requires the commissioner to
issue the patent the courts to declare it valid and
tsbshes the American right to the exclusion Of the
foreign discovery which has not, in either mode ind
GATED by the act Of Congress, bee communicated to
the public. have the honor to be,
Very respectfully, sir,
Your obedient servant,
ISAAC TOUCEY.
1t thus appears that we have only Morse and
House left to occupy the telegraphc ground in this
country.