Papers Of Abraham Lincoln

THIRTIETH CONGRESS—FIRST SESSION.
H. R. 102.
(No Report.)
IN THE HOUSE OF REPRESENTATIVES.
January 19, 1848.
Read twice, and committed to the Committee of the Whole House on the
state of the Union.
Mr. Farrelly, from the Committee on Patents, reported the
following bill:
A BILL
In addition to, and amendment of the several acts to promote
the progress of the useful arts.

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3 Be it enacted by the Senate and House of Repre-
sentatives of the United States of America in Congress
assembled, That the Commissioner of Patents may, in all
cases, refuse to grant letters patent, for any matter or cause
which would render the same invalid on a process for the
repeal of letters patent, as hereinafter provided; but, in all
such cases, the applicant shall be entitled to an appeal from
the decision of the commissioner, as provided in the sev-
eral acts to which this is in addition.
Sec. 2. And be it further enacted, That hereafter, on
filing of a caveat for any specific invention, the caveator
shall make oath to his alleged invention or discovery, as in

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20 the case of an application for letters patent, and that no
portion of the duty required by law to be paid into the
treasury on applications for patents, shall be withdrawn or
refunded to the applicant on any application entered in the
Patent Office after the passage of this act.
Sec. 3. And be it further enacted, That whenever a
patent which has been heretofore granted, or shall be here-
after granted, shall be adjudged or deemed by the inventor
inoperative by reason of any defect, or by reason of the
patentee having omitted to claim an essential part of his
invention, he may, if the part omitted to be claimed is in-
cluded in his specification or drawings, surrender such
patent for amendment and re-issue in the same manner as
is provided in other cases by the thirteenth section of the
act approved the fourth of July, eighteen hundred and thir-
ty-six, to which this act is in addition: Provided, That this
section shall not be so construed as to authorize a re-issue
for a distinct invention, which could not be inferred from
the original claim in connexion with the description or
drawings: And provided, also, That after the payment of
the treasury fee, the Commissioner of Patents shall not
accept the surrender of any patent until he shall have de-
cided to grant the re-issue: And provided, further, That
if the Commissioner of Patents shall refuse a re-issue,
remedy shall be had from such decision in the same man

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13 ner as in the case of an original application: Provided
further, That after the lapse of two years from the date of
any letters patent, which may have been or may be sur-
rendered for correction and re-issue, the original claim
shall not be enlarged in the re-issued letters patent, by the
introduction of new matter, notwithstanding the same may
have been embraced in the original specification or draw-
ings: And provided, also, That, in all cases of surrender
and re-issue, assignees deriving title from said patent prior
to such surrender, shall not be deprived of the right to hold
under the original or the re-issued letters patent at their
election.
Sec. 4. And be it further enacted, That all actions
which may be hereafter brought to recover damages for
the infringement of the rights of any patentee, his heirs, or
legal representatives, or of any person or persons holding
under him or them, it shall be the duty of the court before
whom the same may be commenced, to instruct the jury
to find the actual damages sustained by the plaintiff, by rea-
son of such infringement; and the court shall also instruct
the jury to find the fact whether or not the infringement of
the letters patent by the defendant, was knowingly and wil-
fully done; and if the jury, on being so instructed, shall find
that such infringement was knowingly and wilfully done,
it shall be the duty of the court to render judgment for a

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38 sum equal to three times the amount of the actual damages
found by the jury, with treble costs, and reasonable counsel
fees to be allowed by the court, and to issue execution
therefor against the goods and estate of the defendant and
all such machinery which shall have been used in the
knowing and wilful violation or infringements of the rights
of the plaintiff, if the patent be for a machine or machines,
or the apparatus so employed, if the invention be for a
process or composition of matter, and all articles manu-
factured by the defendant in such knowing and wilful vio-
lation of the rights of the plaintiff, which have not become
the property of a bona fide purchaser, shall be forfeited to
the use and benefit of the plaintiff by the order or decree
of said court, which forfeiture shall be irrespective of the
damages which may have been recovered in said action:
And provided further, That if the party charged with the
infringement of a patent, shall file his complaint, as here-
inafter provided, to procure the repeal of said letters pat-
ent, and shall prosecute the same in good faith, he shall
not be deemed a wilful infringer for the making, using, or
vending the invention so patented, prior to the decision of
the court sustaining said letters patent: Provided, also,
That the production in court of the original letters patent,
or duly authenticated copies thereof, shall be deemed con-
clusive evidence of the right of the patentee to recover in

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21 all actions for the infringement of the invention secured
by said letters patent, until the same shall have been re-
pealed in manner and form as hereinafter provided; nor
shall any defence be made against the validity of the same.
Sec. 5. And be it further enacted, That in all cases,
after the commencement of an action for the infringement
of letters patent, upon the affidavit of the plaintiff, together
with the affidavit of three disinterested witnesses, that the
defendant is in fact infringing the plaintiff’s letters patent,
it shall be the duty of the court, before whom the cause is
to be tried, to appoint a suitable person, qualified by a
knowledge of the progress of inventions, and of the
science of chemistry, or of mechanics as applied to the
arts, who shall be a competent witness in all matters touch-
ing such patent, and who shall receive the sum of
dollars, to be charged to the costs of suit, to inspect the
thing charged as being an infringement of the rights of the
plaintiff; and if the person so appointed shall, after inspec-
tion, report to the court, that, in his opinion, the thing so
charged is an infringement of the plaintiff’s letters patent,
it shall be the duty of the court to grant a preliminary in-
junction, and require the defendant to render to the plain-
tiff, or the court, a monthly account of all sales or manu-
factures, and to give sufficient security to the plaintiff to
pay all damages and costs which may be recovered in said

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5 action; and if he neglect or refuse to give such security,
the injunction shall be made absolute. And in all cases
after a judgment sustaining the patent, the court shall grant
and injunction restraining further manufactures or sales;
and such injunction shall apply to all articles or machines
that have been made by the defendant in violation of the
said patent, whenever found, that have not been bona fide
sold to purchaser for actual use as a
manufactured article or product, and not for profit; and
all persons owning any interest whatever in said let-
ters patent, or any person who has, as a manufacturer
or factor, laid himself liable to an action for an infringe-
ment of said letters patent, shall be deemed an interested
witness in said suit. And the knowing and wilful sale
by a factor, or the knowing and wilful use by an in-
corporated company, or a company enjoying the rights
and privileges of an incorporation of the product of a pat-
ented machine, shall be deemed an infringement within the
meaning of this act; and the parties so selling or using
shall be liable as in other cases of infringement.
Sec. 6. And be it further enacted, That, upon com-
plaint made upon oath or affirmation before one of the
judges of the circuit court in the district in which the pat-
entee, his executors, administrators, or assigns reside, set-
ting forth that any patent was obtained surreptitiously, or

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30 upon false suggestions, or that the same is invalid by rea-
son of any matter which might before the passage of this
act have been given in evidence by the defendant under
the general issue, in an action for the recovery of damages
for the infringement of the rights of the patentee, or those
holding him, according to the provisions of the fifteenth
section of the act of July fourth, eighteen hundred and
thirty-six, before recited, or that the same is invalid for any
matter contained in this act, security for the costs upon
such complaint being first given by the complainant, it
shall and may be lawful for the judge, or the said court, to
grant a rule on the patentee, his executors, administrators,
or assigns, to show cause why process should not issue to
repeal such patent, and on notice being given of said
rule to the patentee, and through the post office or other-
wise to all persons whose names are recorded in the Pat-
ent Office as being interested in said patent, if no sufficient
cause be shown to the contrary, the rule shall be made ab-
solute, and the said court shall award process to be issued
against such patentee, his executors, administrators, and
assigns. And in case no sufficient cause shall be shown
to the contrary, or if it shall appear that the patentee was
not the original inventor or discoverer of the thing patent-
ed, or of a substantial and material part thereof claimed as
new, or that it had been clearly described in some public

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55 work anterior to the supposed discovery thereof by the
patentee, or that he had abandoned his invention to the
public, or that the patentee, if an alien at the time the
patent was granted, had failed and neglected, for the space
of two years from the date of the patent, to put and con-
tinue the invention in public use in the United States, or
that the bona fide use of the foreign invention in the Uni-
ted States had been discontinued for more than two con-
secutive years, judgment shall be rendered by such court
for the repeal of such patent, in whole or in part, as the
case may be. And if the party, at whose complaint the
process issued, shall have judgment rendered against him,
he shall pay all such costs, including reasonable counsel
fees, as the defendant in said process shall incur in defend-
ing against the same, to be taxed and allowed by the court,
and recovered in due course of law; but if he shall suc-
ceed in procuring the repeal of said letters patent, the de-
fendant in said complaint shall be adjudged to pay the costs
of suit. And if any issue of fact shall arise between the
parties, in the course of the proceedings upon said process,
the same shall be tried by jury according to the practice of
the court: Provided, That after the validity of a patent has
once been bona fide tested and sustained by the judgment
of a competent court, and the patentee, his executors, ad-
ministrators, or assigns, shall again be cited to appear and

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80 show cause why the said letters patent shall not be repeal-
ed, and the party complainant shall have judgment render-
ed against him, he shall be held to pay treble cost, including
reasonable counsel fees: Provided, also, That when the
party, at whose complaint the process issued, relies on the
fact of a previous invention, knowledge, or the use of the
thing patented, he shall state in his complaint the names
and places of residence of those persons by whom he in-
tends to prove such prior knowledge or use, and in what
particular place the same was known or used, and in what
public work or works, and in what parts thereof it is
described; and such description shall be so clear as to en-
able any competent person to make or compound the same:
Provided further, That whenever it shall satisfactorily ap-
pear that the patentee, at the time of making his applica-
tion for the patent, believed himself to be the first inventor
or discoverer of the thing patented, the same shall not be
held to be void on account of the invention or discovery,
or any part thereof having been before known or used in
any foreign country, it not appearing that the same or any
substantial part thereof had before been clearly described
in any public work: Provided, also, That whenever the de-
fendant in such complaint shall fail in his defence against
the same, on the ground that in his specification or claim
is embraced more than that of which he was the first in

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11 ventor, if it shall appear that any part of the invention is
justly and truly specified and claimed as new, it shall be in
the power of the court to adjudge and award costs as may
appear to be just and equitable: Provided further, That,
in all cases affecting the validity of letters patent, under
the provisions of this act, a write of error shall lie to the
Supreme Court of the United States. And when in any
proceeding, for the repeal of letters patent, final judgment
shall be rendered against said letters patent, and that the
same be repealed, the court rendering said judgment
shall certify the same to the Commissioner of Patents, who
shall cause said judgment to be entered of record in the
Patent Office as evidence of the fact that said letters pat-
ent have been repealed and recalled.
Sec. 7. And be it further enacted, That the board,
consisting of the Secretary of State, the Commissioner of
Patents, and Solicitor of the Treasury, as provided for
under the eighteenth section of the act to which this is ad-
ditional, approved July fourth, eighteen hundred and thirty-
six, is hereby abolished; and instead thereof, the Commission-
er of Patents shall make, or cause to be made, by the principal
examiner of patents, an examination into the merits of all
applications for the extension of letters patent; and if it
shall appear that the patentee, without neglect or fault on
his part, has failed to obtain from the use and sale of his

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36 invention, a just and liberal remuneration, for the time, in-
genuity, and expense bestowed upon the same, and the intro-
duction thereof into use, and the benefit it has been or may
be to the public, it shall be the duty of the commissioner,
to renew and extend the patent as provided for in the said
act as hereinafter amended; and from and after the first
day of January, in the year eighteen hundred and forty-
nine, no application for the extension of letters patent, shall
be considered by the commissioner, unless the same shall
have been filed in the patent office six months or more
prior to the expiration of the term of the original patent;
and the patentee or his legal representative of any patent
that has expired, an application for the extension of which,
shall have been made six months prior to its expiration,
shall, on application therefor, be entitled to a renewal and ex-
tension thereof, for the same term, and in the same manner
as herein before provided: Provided, however, That no ac-
tions hall be maintained for any infringement of such patent,
committed between the expiration and extension thereof,
and all persons who shall after such expiration, and before
such extension, have put in use the invention, secured by
such patent, their executors or administrators shall be en-
titled to continue the use thereof for the extended term,
upon such conditions as the parties interested shall agree
upon, or in failure of such agreement, as shall be determin

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6 ed by the circuit court of the United States, for the district
where the person so using such invention shall reside, upon
a bill in equity to be filed by such person, his executors or
administrators, against the patentee, his representatives, or
assigns, within one year from such extension: Provided,
also, that the provisions of the eighteen section of the
herein-recited act shall not be construed to extend to as-
signees and grantees of the right to use the thing patented,
the further right to the continued use of the invention under
the extended term of the letters patent, without paying an
additional compensation therefor to the patentee, or those
holding under him; and, in case the parties cannot agree,
upon application by the assignee by bill in equity within
six months to the circuit court in the district in which the
patentee or those holding under him may reside, it may be
the duty of the court to appoint suitable qualified persons
to assess and fix the amount of compensation to be paid
for the continued use of the invention, under the extended
term,
Sec. 8. And be it further enacted, That so much
of the seventh section of the act approved July fourth,
eighteen hundred and thirty-six, as permits the commission-
er to judge of the utility and importance of an invention,
shall not be so construed as to authorize him to reject an ap-
plication for want of utility, when the purposes of the inven

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19 tion are immoral in the tendency, and the exception in the
seventh section of the act approved March third, eighteen
hundred and thirty-seven, expressed in the following words,
viz: “Except so far as may relate to the question of un-
reasonable delay in filing the same,” be, and the same is
hereby repealed.
Sec. 9. And be it further enacted, That every person
or corporation who has or shall have purchased or con-
structed, with the consent and approbation of the inventor,
any newly invented machine, manufacture or composition
of matter prior to the application by the inventor or discov-
erer for a patent, shall be held to possess the right to use
and vend to others to be used, unless otherwise contracted
for at the time of sale, the specific machine, manufacture
or composition of matter, or the specific apparatus em-
ployed, if the invention be for a process so made or pur-
chased, without liability therefor to the inventor or any
other person interest in such invention; and no patent
shall be held to be invalid by reason of such purchase,
sale or use, prior to the application for a patent as afore-
said, except on proof of abandonment of such invention to
the public, or that such purchase, sale or prior use, has
been for more than two years prior to such application for
a patent. And the abandonment of an invention to the
public, shall be either a public use of the invention, for

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5 more than two years by the inventor, or by others with
his knowledge, prior to the application for a patent, or an
open declaration to three or more witnesses of an inten-
tion not to secure the invention by patent, or a declaration
in writing under the hand of the inventor, or a neglect for
more than two years after the invention shall have been
completed to apply for a patent for the same, or the use of
an invention in secret, under circumstances tending to
show that the inventor intended to rely on such secret use
for protection instead of the law; or any other act which
shall clearly show that the inventor does not intend to
avail himself of the protection of a patent: Provided,
however, That the use of an invention, by the inventor or
by others under his direction, for experiment, either pub-
licly or secretly, shall not be considered a public use: And
provided also, That a prior invention retained and used in
secret, or an unsuccessful experiment in public abandoned,
shall not be held to deprive a subsequent and successful
inventor of the right to secure his invention by valid let-
ters patent.
Sec. 10. And be it further enacted, That, upon the
complaint on oath, or affirmation, before a judge of any
district or circuit court of the United States, by the paten-
tee of a new and useful invention, or by his executors, ad-
ministrators, or assigns, setting forth that, in his or their be

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2 lief, any person is using in secret his invention, or any sub-
stantial part thereof, secured to him by letters patent, it
shall be the duty of the said judge to appoint suitably qual-
ified persons to examine, with the consent of the party
charged with such infringement, the house, shop, or other
place, where such invention is said to be used, which house,
shop, or other place, shall be described in such complaint,
and such persons shall be competent witnesses, if not other-
wise legally disqualified, in any bill, suit, or other legal pro-
ceedings touching such patent, or the infringement thereof,
but shall be sworn by said judge not to divulge, at any time,
what they may see in such examination, which does not in
their judgment infringe the rights of the patentee, unless
absolved from such injunction of secresy in the presence
of the judge, or competent witnesses by the person whose
premises they were authorized to examine; and if the per-
son so charged with the secret use of any invention shall,
upon reasonable request, refuse to permit the premises de-
scribed in such complaint, to be examined by the persons
so appointed, such refusal shall be taken, and deemed, in
any bill, suit, or other legal proceedings touching such pat-
ent, or the infringement thereof, to be prima face evidence
that the person so charged is in fact using such invention.
Sec. 11. And be it further enacted, That the Com-
missioner of Patents, shall make, or cause to be made, and

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1 attach to each letters patent to be hereafter granted, a cer-
tificate of the date of filing of each application for letters
patent in the Patent Office, which certificate, or any other
certificate of the date of such application by the commis-
sioner under the seal of the Patent Office, shall be compe-
tent evidence of the fact; and no application shall be con-
sidered as having been filed for the purpose, until the peti-
tion, specification, and drawings, when drawings and
models are necessary, together with the fee, shall have
been deposited in the Patent Office.
Sec. 12. And be it further enacted, That the Com-
missioner of Patents be, and he is hereby, authorized to
publish monthly in the Journal of the Franklin Institute
of the State of Pennsylvania, a description of all the pat-
ents granted at the office, accompanied with such plates
and illustrations of the more important inventions, as he
and the principal examiners may designate and direct:
Provided, That the expense shall not exceed six thousand
dollars per annum., to be paid out of the patent fund; and
that the Franklin Institute furnish monthly, twelve hundred
and fifty copies of their Journal, containing said publica-
tion, for the use of the Patent Office: Provided further,
That no patent shall be published until six months after
that time it was issued.
Sec. 13. And be it further enacted, That the Com

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18 missioner of Patents is hereby authorized to subscribe for
all such scientific and agricultural magazines, journals, and
other periodical publications, as he may deem necessary
for the use of the Patent Office, the cost of which he shall
charge to the account of contingent expenses of said office.
Sec. 14. And be it further enacted, That forms,
shapes, and configurations of any articles of manufacture
whatsoever, or of any machines, designs for printing wool-
en, silk, cotton, or other fabrics; designs for busts, statuary,
bas-relief, or composition in alto or baso-relievo, impres-
sions or ornaments to be placed on any articles of manu-
facture, patterns, prints, or pictures, to be worked into or
on, or printed, or painted, or cast or otherwise fixed on any
articles of manufacture, may be the subject of letters pat-
tent under the provisions of the third section of the act
approved August twenty-ninth, eighteen hundred and forty-
two, to which this is in addition; said letter patent being
granted for such subjects solely with a view to their orna-
ment, beauty, or symmetry of exterior, may properly be-
long to works of ornament beauty, or symmetry of ex-
terior: Provided, That such forms, shapes, and configura-
tion, designs, impressions, or ornaments, patterns, prints, or
pictures, have not been before known or used by others

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10 prior to the invention or production thereof by the appli-
cant for a patent.
Sec. 15. And be it further enacted, That patterns,
moulds, or dies, from which castings or impressions are to
be made of any new or original shape, configuration or
or design, may become the subjects of letters patent, like
proceedings being had as in other applications for patents;
said letters patent securing the right to said patterns,
moulds, or dies, and copies made therefrom by castings or
impressions or electric deposite of metals: Provided, That
the fee in all cases, provided for in this and the next pre-
ceding section, shall be fifteen dollars, and the duration of
such patents seven years; and that the grant of such pat-
ent shall be made solely with reference to its being a work
of ornament, beauty, or symmetry.
Sec. 16. And be it further enacted, That all patentees
or assignees of patents hereafter to be granted, are hereby
required, when practicable, to affix, or cause to be affixed
conspicuously, to each article manufactured in accordance
with said patent, the date of the year in which the patent
is granted; and if the patent is for a design, also the words
“design patent;” and when not practicable, the same shall
be affixed to the envelope or covering of such articles; and
if any patentee or assignee of said patent shall neglect so
to do, he, she, or they, shall be subject to the same penal

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4 ties and provisions as provided in the fifth section of the act
approved August twenty-ninth, eighteen hundred and forty-
two, to which this is additional.
Sec. 17. And be it further enacted, That such parts
of the several acts to which this act is in addition, as are re-
pugnant to the several provisions of this act, shall be, and
the same are hereby, repealed.