New-York tribune. [volume] (New York [N.Y.]) 1866-1924, 1889-08-07
SELECTIONS FROM THE MAIL.
AN IMPORTANT PATENT DECISION
THE RIGHT TO PROTECT SEVERAL JOINT CLAIMS
BY SINGLE PATENT.

BY \ SINGLE PATENT.
TO ne Edttor or The TrfbWne
Sir: 4 decision % great importance 10 inventors
has been recently given by Assistant Commissiohet
Fisher. confirming the right Of an applicant to protect
by his several claims in a single patent machine
process and a product The case, which Is Ah'"n
as Ex-Pare Mcmahon, was referred 90 the Assistant
Commissioner by Commissioner Mitchell for hearing
and decision and indicates tha' the Patent once.
under the latter officer viii the harsh ruling o
Commissioner Hail. which required an Inventor 10
take out three separate patents paying three GOV
eminent fees nor his process, his machine Oy ""''"
that process was operated. and bis pI-'-
uct or article which was produced, instead Vi
protecting all three IL patent for one fee as ha"
been the well nigh uniform procedure under bis prooe
cessors in office.
In the present case of Ex-Parte Mcmahon, the
Assistant Commissioner decides that an applicant IS
entitled 10 have his machine. his process and his pro-
duct protected In a single patent, unless they are 81
entirely distinct TO constitute absolutely separate
and independent inventlons-a condition which prsc
tcaly never will arise when machine and pro
cess have been invented 10 work together to single
end as the production of some article Of manufacture
For many years there was no question of the rislt
Of an inventor to combine in one patent claims Oh
his machine process and product, any two OF them
Nor was there any doubt of the validity OF patent
for these several related inventions. The doctrine
clearly stated in 1S4o, in Wyeth VS.. Stone when
the court decided the joinder of several related IN
venons to be valid, and said that in order TO render
separate patents necessary, the inventions must DC
wholly Independent OF each other and distinct inveh
tons, as one 10 spin cotton and another to weave
paper" The Supreme Court reiterated and reailrmed
the doctrine OF th, case in Emerson VS.. Hogg 1o4o
and from then till now the courts have practically
uniformly held the view. The same DIOad
policy in the main controlled the Commissioners III
the granting of patents though there were occasoN
assertions that the practice OF the Patent Once
should be changed, and separate patents be Insisted
in the indicated.
Thus stood matters when the case Ex-Parte Blythe
came before Commissioner Butterworth in 1884. In
this case the Commissioner held that machine, o.
process and a product were constituted by the Re-
vised Statutes distinct classes Of inventions, which
incapable of being united in single valid patent
But this view Of the law was erased from Patent
Office presidents of practice after II was slated
In EX-Pare Young, decided in December, 1885, Com
missioner Montgomery rejected the view Of the law
taken by Commissioner Butterworth and held that the
statutes do not forbid joindcr Of a process ana
machine in one patent; that when "unitary in
vcntion consists Of process and a product they
ordinarily should he included in patent and.
generally that "when two moro inventions are
kindred auxiliary in their nature or operation
connected together, they may DO included In emo
patent"
We now reach the leading opinion of Commissioner
Hall in Ex-Parte Herr. in October, 1887, wherein
he attempted re-estabsh the practice desired by
Commissioner Blrterworth, but different grounds
Commissioner Hall was obliged TO admit there WIS
no statutory ground for prOnouncing patent cor
tanning machine and process Invalid BUT ne helu
that Congress had invested the Commissioner win
great Discretionary powers in the granting or with
holding Of patents, including the dechlng whetnoI
one patent might might not include machlhe
aud a process Thus he aimed 10 establish as
could issue with rare EXCEPTIONS obtaining In The
one instrument claims for machine process anu
a product or any two of them.
The practical result was that an inventor was
often obliged 10 pay two or three ices WEI a. oi
the VALIDITY Of one OF the separate patents issueu V
such divided applications has been developer py
experience. though II escaped the notice OF ,Nh-
mission IIall-the danger that the patent hi'r
Tor higher numbered may be declared void by uie
courts because when compared With the other lower
numbered patent granted 10 the same aPpnaoea..;;
the later patent NAV not show dinerences suIhcou,
To sustain patrntabillty Now comes the case VI
Fx-Par Mcmahon Just decided by Assistant tom
missioner Fisher in which. I have stated me
intention OF Commissioner Mitchell seems 10 BE- evchl
to clear from the practice OF the once me ruips
of Commissioners Hall and restore the liberal poncI
which prevailed from the earliest days OF our pa'on
system down 70 1884. ,,, =,
In conclusion I would add that the validity OF
a pateut for a machine and a process mas noeh
established in the fullest manner by the Sunrfn'
Court, speaking by the late CHIEF justice NM1o
Bell's patent sustained In the fnilest manner
in one Of tho most far-reachng patent decisions ever
given by the court as valid both for machine anG
a process. These two Glasses OF inventions "ere
indeed united In a single claim $50 or>,
iN0e7 D. WAITER BROWN.
No II Nassa,i-s st. New-York July IL, 1889