The Austin weekly statesman. (Austin, Tex.) 1883-1898, 1895-03-07
PATENTS INVOLVED.
IMPORTANT OPINION BY JUSTICE
HARLAN.
American Patents Expire With Foreign
Ones Previously Patented-Esti-
mated That $6O0,000,O00 Hinges
On the Decision-Many
Patents Effected.


Bate Refrigerator company against 5. L
Sulsberger & Co., upon which the ques
ton of American patents expiring witt
foreign patents that have been previously
issued was decided today in an eXnaus
tive opinion by Justice Harlan. IT Is es
timated that not less than S6OO,OOO,OOO OF
capital hinges upon the decision. 1t de
termines the status of many valuable
patents. The court held that the inven
| ton for which Bate received a patent was
! previously patented in foreign countries
| The United States patent did expire with
the foreign patent. The decision is
against the electric and other patents in
volved in the decision of this suit.
The case involves the construction OF
section 1877 Revised Statutes, which pro
vides that every patent granted for an
invention which has been previously pat
ented in a foreign country, shall expire
at the same time as the foreign patent,
or if there be more than one at the same
time, with the one having the shortest
term. In no case shall it be in force more
than II years. Among the patents eff
fected are three issued to the Western
Union Telegraph company, on applica-
tions by Thomas A. Edison, as follows:
Patent No. 474, 2S4, No. AZ ,241 and AZ ,242,
applications filed July 81, 1877.
On March Z, 1893, patent 1872, 7S9 was
issued to the same party on application
filed by the same party. These inyen-
tions became the property of the American
Bell Telephone company by the telephone
consolidation contract on Nov. l, 1879.
These Edison patents are claimed to- be
fundamental and they, with the Berliner
patent, now in litigation, and which re-
manned in the patent Office from 1877 to
November, 1891, expire at the date of eX-
piration of the foreign patents. The in
ventions have been in use since 1878. The
other inventions were patented abroad in
England, France, Canada in 1877; in
Belgium, Austria Hungary, Italy, Ger
many and Spain in 1881 and Prussia in
1882.
They are free in foreign countries and
under the construction now given OF sec
ton 1877 are free in this country. Sub
stantially the decision will affect in the
same way the quadrupleX telegraph pat
ents, which were issued December 10,
1885. The incandescent lamp patents,
filed by the General Electric Light com
pany are also included in those which
will be affected by the decision. There
was no dissention of opinion. The decis-
ion reviews the patent laws since the foun-
dation of the government, tracing in min
uteness the two questions as to foreign
and domestic patents. 1t sums up the law
thus
"From this history of the several acts
of congress relating to patents for inven-
tons it appears:
"First-That in all the above facts con-
gress had in mind the date of an appli-
cation for patent, the date of filing the
specifications and the date of the patent.
Second-That under the act of 1886
a patent could not be granted if it APP
peared that the applicant was not the
original and first inventor or discoyerer,
or that any part of that which was
claimed to be new had been invented or
discovered or patented or described in
any foreign publication issued in this or
any foreign country. Yet an original
and true inventor was not to be deprived
Of patent for his invention by reason
Of his having previously taken out letters
patent therefor in foreign country and
the same having been published at any
time within six months next preceding
the filing of his specification and draw |
ings.
"Third-That under the act of 1889 an
inventor whose invention had not been
introduced into public and common use
in the United States prior to the appli-
cation for patent, should not be de-
of his invention having been patented in
u foreign country more than six months
prior to his application.
"Fourth-That under the act of 1870
an inventor whose inventions had not been
introduced into public use in the United
States for more than two years prior to !
the application should not be debarred |
from receiving patent by reason of its
having been first patented in q foreign |
words not being qualified,
rs in the act of 1889, by any reference |
to the date of the application.
"Fifth-That when an American pat |
ent was granted in conformity with the |
sixth section of the act of 1889 for an |
invention patented in a foreign country |
more than six months prior to his applica-.
ton it expired in every case at the end |
of IA years from the date of publication |
of such foreign letter patent and when, |
in conformity with the 25th section of |
the act of 1870, a patent was granted |
for an invention first patented or caused |
to be patented in a foreign country it |
expired at the same time with the for |
eign patent or, if there be more than |
one, at the same time with the patent |
having the shortest term.
''SiXth-That under the revised stat
utes, while a patent for an invention
could not be withheld or deemed invalid
by reason of its having been first pat
ented or caused to be patented in a for
eign country, unless the same has been
introduced into public use in the United
States more than two years prior to the
application yet every patent granted
for any invention previously patented in
a foreign country shall be so limited as
to expire at the same time and with the
one having the shortest term'-in no case
to remain in force longer than II
years"
The decision then takes up the legal
contention of the plaintiff that when the
same invention is patented both in this
country and abroad that the American
patent remains in force for II years
from its date if the foreign patent was
issued after the application; for, although
prior to the date of the American patent
the Interpretation placed upon the act
of 1870 by the patent Office and the
courts is infinitely considered and copious
decisions cited, and the decision, says
this court, may well adopt that construc-
ton which is in harmony with the set
tied practice and decisions, especially
IF there be reason to suppose that vast
interests may have grown up under that
practice and under judicial decisions
which may be disturbed or destroyed
by the announcement of new rule"
The decision also says: WAS the Bates
invention patented abroad b fore it was
patented in this country. If so. the Ameri-
can patent expired with the foreign pat
ent and thereby the American public
became entitled to use the Invention from