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struction, which may be disturbed by the an ernment, to William Robert Blake, on a comnouncement of a different rule.

munication from Bate under date of January 3. Where the language of a statute is plain 29, 1877, which patent was sealed July 13, and unambiguous, it is the duty of the court to enforce it according to the obvious meaning of 1877, and the complete specifications of the words, without attempting to change it by which were filed July 26, 1877; the other, for adopting a different construction, based upon the term of 5 years, by the government of some supposed policy of congress in regard to the subject of legislation, or upon considerations of

the dominion of Canada, to Bate himself, uninjustice or inconvenience arising from the en der date of January 9, 1877. forcement of the statute according to its terms.

After these foreign patents were issued, 4. The act of July 8, 1870, entitled "An act to revise, consolidate, and amend the stat

namely, on the 20th day of November, 1877, utes relating to patents and copyright" (16 Stat. Bate received a patent from the United 198), was not, as finally passed, a mere revision States, expressed to be for the term of 17 and consolidation, as the language of some of the committee reports in the house would seem

years, and assigned it to the Bate Refrigeratto indicate, but, on the contrary, it contained nu

ing Company, the plaintiff in this suit. merous amendments and changes of prior laws, The present suit was brought by that comsome of them of considerable importance; and

pany July 25, 1892, for an injunction against hence the former statutes are not to be resorted to as controlling, where changes in phraseology

the infringement of the American patent, as seem to indicate a purpose to change the law.

well as for a accounting. It was heard in 5. The twenty-fifth section of the patent act the circuit court on pleas to the bill, and a deof 1870 (16 Stat. 198) having been immediately construed by the patent commissioner according

cree was passed dismissing the suit. From to the ordinary and natural meaning of the that decree an appeal was taken to the cir. words, and having been subsequently reproduced cuit court of appeals. in section 4887 of the Revised Statutes, and

Both foreign patents for the Bate invention never amended, the supreme court will not, after a lapse of 25 years, adopt a different construc

having expired before the expiration of the tion.

17 years specified in the United States patent, On a Certificate from the United States Cir. the following questions arose in and have cuit Court of Appeals for the Second Circuit.

been certified by the circuit court of appeals: This was a bill in equity by the Bate Re

Whether the invention for which the patent frigerating Company against Ferdinand Sulz from the United States was issued had be berger, Samuel Weil, and Frederick Joseph, "previously patented in a foreign country,” doing business under the firm name of within the meaning of those words in section Scharzchild & Sulzberger, for infringement 4887 of the Revised Statutes; and whether of letters patent No. 197,314, issued Novem the American patent expired, under the ber 20, 1877, to John Bate, for an improve

terms of that section, before the expiration ment in processes for preserving meats. The of 17 years from its date. cause was heard in the circuit court on pleas The Revised Statutes of the United States to the bill, and a decree entered dismissing provide that any person inventing or discovthe suit. 56 Fed. 713. Complainant took an ering any new and useful art, machine, man. appeal to the circuit court of appeals, which ufacture, or composition of matter, or any court certified to the supreme court the ques new and useful improvement thereof, “not tion of issue.

known or used by others in this country, and James C. Carter, Charles E. Mitchell, and

not patented or described in any printed pubJ. J. Storrow, for appellant. Wheeler H.

lication in this or any foreign country, before Peckham, Edmund Wetmore, and Leonard

his invention or discovery thereof, and not E. Curtis, for appellees. B. F. Lee filed

in public use or on sale for more than two briefs for Chemical Rubber Co. B. H. Bris

years prior to his application, unless the same ton and W. H. Kenyon filed briefs for Harri.

is proved to have been abandoned," may obson International Tel. Co. Chas. H. Aldrich

tain a patent therefor, which shall contain filed briefs for Milo G. Kellogg.

a grant of the exclusive right for the term

of 17 years to make, use, and vend such inMr. Justice HARLAN delivered the opinion vention or discovery throughout the United of the court.

States and the territories thereof, and bear This case is before us upon a certificate date as of a day not later than six months made under the sixth section of the act of from the time at which it was passed and alMarch 3, 1991 (26 Stat. 826, c. 517), providing lowed, and notice thereof sent to tie applithat a circuit court of appeals may, in any cant or his agent. Sections 48844856. case of which it has appellate jurisdiction, By section 4887 it is provided that “no percertify questions or propositions of law foi son shall be debarred from receiving a patthe proper decision of which it desires the ent for his invention or discovery, nor shall instruction of this court.

any patent be declared in valid, by reason of On the 1st day of December, 1876, John J. its having been first patented or caused to be Bate made application to the United States patented in a foreign country, unless the for letters patent for an improvement in proc same has been introduced into public use in esses for preserving meats during storage the United States more than two years prior and transportation.

to the application. But every patent grant. Pending this application, two foreign patents ed for an invention which has been previouswere granted for the Bate invention.-one, ly patented in a foreign country shall be so for the term of 1+ ycars, by the British guro limited as to expire at the same time witb

* 21

the foreign patent, or, if there be more than Pet. 1, 19, 21, Mr. Justice Story, speaking for one, at the same time with the one having the court, said that the addition made by the the shortest term, and in no case shall it be act of 1793 of the words "before the applica. in force more than seventeen years."

tion," after the words “not known or used," Other sections prescribe what the applica- in the act of 1790, was made ex industria tion for a patent shall contain, the nature of with the intention “to clear away a doubt, the oath or affirmation to be made by the ap and fix the original and deliberate meaning plicant, and the time within which an appli of the legislature,” which was that the incation shall be completed and prepared for vention should be one not known or used by examination. Sections 4888, 4892, 4894. the public before the application.

The plaintiff insists that an invention pat Then came the act of April 17, 1800, which ented or caused to be patented in a foreign extended the provisions of the act of 1793 to country before being patented in this country | all aliens residing for two years in the United should not be deemed to have been "pre- States, and who should make oath or afviously patented in a foreign country," with. firmation that the invention, art, or discov. in the meaning of section 4887, unless the ery for which a patent was asked had not foreign patent was granted prior to the appli "been known or used either in this or any cation for the American patent.

foreign country.” That act further provided The defendants contend that the respective that any patent for an invention, art, or disdates of the American and foreign patents, covery, subsequently found to have been and not the date of the American application, "known or used previous to such application determine the question whether an invention for a patent," should be void. 2 Stat. 37, c. patented here has been "previously patented 25. in a foreign country.”

"The provisions of the act of 1800 were exCounsel for the respective parties have tended by the act of July 13, 1832, to every deemed it necessary to refer very fully to the alien who, at the time of petitioning for a principal statutes relating to patents for in- | patent, was a resident of this country, and ventions. In our consideration of the case had declared his intention, according to law, the same method will be pursued, reserving of becoming a citizen of the United States. any observations we may make upon the But every patent granted under the latter words of particular acts until we shall have act was to become void if the patentee failed given an outline of the history of such legis for one year after its date to introduce into lation by congress as is supposed to bear up- public use in the United States the invention on the questions certified.

or improvement for which his patent was isThe first act of congress passed under the sued, or in case the invention or improvement authority given by the constitution to pro should, for any period of six months after such mote the progress of science and useful arts introduction, not continue to be publicly used by securing for limited times to authors and and applied in the United States, or in case inventors the exclusive right to their respec of his failure to become a citizen of the tive writings and discoveries was approved United States at the earliest period within April 10, 1790. 1 Stat. 109, c. 7. The per which he could become such citizen. 4 Stat. sons to whom, under that act, patents could be 577, c. 203. issued, were those inventing or discovering On the 4th day of July, 1836, congress any useful art, manufacture, engine, machine, passed an act entitled “An act to promote or device, or any improvement therein “not the progress of useful arts, and to repeal all before known or used." The applicant was acts and parts of acts heretofore made for required, at the time the patent was grant that purpose.” 5 Stat. 117, c. 357. ed, to deliver to the secretary of state such By the fifth section of that act it was prospecification in writing, containing a de vided that every patent should be for a term scription of the invention or discovery,-ac

of 14 years. companied, when necessary, with drafts or The sixth section described those entitled to models, and explanations of the thing in-| receive patents, namely, “any person or pervented or discovered,-as would distinguish sons having discovered or invented any new the invention or discovery from other things and useful art, machine, manufacture, or "before known and used," and enable one composition of matter, or any new and useskilled in the art or manufacture to make, ful improvement in any art, machine, manuconstruct, or use the saine, “to the end that facture, or composition of matter, not known the public may have the full benefit thereof or used by others before his or their discovafter the expiration of the patent term." ery or invention thereof, and not, at the Sections 1, 2.

time of his application for a patent, in pubThe act of February 21, 1793, which took lic use or on sale, with his consent or althe place of the act of 1790, made no material lowance, as the inventor or discoverer." change, except to restrict the right to a pat The seventh section prescribed an examinaent to citizens of the United States, and to tion of the alleged new invention or discov. provide that the invention or discovery ery, and provided: If, on any such exam. sought to be patented should be one "not | ination, it shall not appear to the commisknown or used before the application.” 1 sioner that the same had been invented or Stat. 318, c. 11. In Pennock v. Dialogue, 2 discovered by any other person in this coud

try prior to the alleged invention or dis term of fourteen years from the date or pubcovery thereof by the applicant, or that it lication of such foreign letters patent." had been patented or described in any print By the act of March 2, 1861, it was provided publication in this or any foreign coun ed that all patents thereafter granted should try, or had been in public use or on sale with remain in force “for the term of seventeen the applicant's consent or allowance prior years from the date of issue,” and all extento the application, if the commissioner shall sions of such patents were prohibited. 12 deem it to be sufficiently useful and impor- Stat. 246, c. 88, 8 16. tant, it shall be his duty to issue a patent By an act approved June 27, 1866 (14 Stat. therefor. But whenever, on such examina- | 74, c. 140), provision was made for the aption, it shall appear to the commissioner that pointment of three persons, learned in the the applicant was not the original and first law, as commissioners, “to revise, simplify, inventor or discoverer thereof, or that any arrange, and consolidate all statutes of the part of that which is claimed as new had United States, general and permanent in before been invented or discovered, or pat their nature," which should be in force at ented, or described in any printed publication the time of their final report. They were in use in this or any foreign country, as directed to "bring together all statutes and aforesaid, or that the description is defective parts of statutes which, from similarity of and insufficient, he shall notify the applicant subject, ought to be brought together, omitthereof, giving him, briefly, such information ting redundant or obsolete enactments, and and references as may be useful in judging making such alterations as may be neces. of the propriety of renewing his application, sary to reconcile the contradictions, supply or of altering his specification to embrace the omissions, and amend the imperfections only that part of the invention or discovery of the original text; and they shall arrange which is new."

the same under titles, chapters, and sections, The eighth section, after providing for the or other suitable divisions and subdivisions, hearing and decision of opposing claims of with head-notes briefly expressive of the priority of right or invention, declared: matter contained in such divisions; also with

"But nothing in this act contained shall side-notes, so drawn as to point to the conbe construed to deprive an original and true tents of the text, and with references to tbe inventor of the right to a patent for his in original text from which each section is comvention by reason of his having previouslypiled, and to the decisions of the federal taken out letters patent therefor in a foreign courts, explaining or expounding the same, country, and the same having been pub and also to such decisions of the state courts lished, at any time within six months next as they may deem expedient; and they shall preceding the filing of his specification and provide by a temporary index, or other exdrawings. And whenever the applicant shall | pedient means, for an easy reference to every request it, the patent shall take date from portion of their report." Upon the comple the time of the filing of the specification tion of their work they were to "cause a and drawings, not however exceeding six copy of the same, in print, to be submitted months prior to the actual issuing of the to congress, that the statutes so revised and patent; and on like request, and the pay consolidated may be re-enacted, if congress ment of the duty herein required, by any ap shall so determine; and at the same time plicant, his specification and drawings shall they shall also suggest to congress such con. be filed in the secret archives of the office tradictions, omissions, and* imperfections ag* until he shall furnish the model and the pat may appear in the original text, with the ent be issued, not exceeding the term of one mode in which they have reconciled, supyear, the applicant being entitled to notice plied, and amended the same; and they may of interfering applications." 5 Stat. 120, c. also designate such statutes or parts of stat. 357.

utes as, in their judgment, ought to be reWe come next to the act of March 3, 1839, pealed, with their reasons for such repeal." entitled "An act in addition to 'An act to They were authorized to cause their work promote the progress of the useful arts.'' to be printed in parts as fast as it was ready 5 Stat. 354, c. 88, 86. By that act it was for the press, and distribute the same to declared:

members of congress, and to such other per“That no person shall be debarred from re sons, in limited numbers, as they saw fit, for ceiving a patent for any invention or discov the purpose of obtaining their suggestions. ery, as provided in the act approved on the 14 Stat. 74, c. 140, S$ 1-4, incl. fourth day of July, one thousand eight hun

One of the results of that statute was the dred and thirty-six, to which this is addi passage by congress of the act of July 8, tional, by reason of the saine having been 1870, entitled "An act to revise, consolidate, patented in a foreign country more than six and amend the statutes relating to patents months prior to his application: provided, and copyrights." 16 Stat. 198, c. 230. The that the same shall not have been introduced original bill upon which that act was based into public and common use in the United was the work of the revisers appointed unStates, prior to the application for such pat der the above act of 1866. ent: and provided, also, that in all cases The act of 1870 declared, among other every such patent shall be limited to the things, that every patent should be express

ed for the term of 17 years, and should date | granted, in conformity with the sixth section as of a day not later than 6 months from the of the act of 1839, for an invention "patenttime at which it was passed and allowed. ed in a foreign country more than six Sections 22, 23.

months prior to the American application,” But the parts of that act which have most it expired, in every case, at the end of 14 to do with the case before us are its twenty years “from the date or publication of such fourth and twenty-fifth sections. The twen foreign letters patent;" and when in conty-fourth section describes, in the language formity with the twenty-fifth section of the of section 4886 of the Revised Statutes, as act of 1870, a patent was granted for an inabove quoted, those who are entitled to pat vention "first patented or caused to be patents. The twenty-fifth section is in these ented in a foreign country,” it expired “at words:

the same time with the foreign patent," or, “Section 25. That no person shall be debar if there were more than one, “at the same red from receiving a patent for his invention time with the one having the shortest term." or discovery, nor shall any patent be de *(6) That, under the Revised Statutes, while clared invalid, by reason of its having been & patent could not be withheld nor deemed first patented or caused to be patented in a invalid by reason of the invention “having foreign country: provided, the same shall been first patented or caused to be patented not have been introduced into public use in in a foreign country, unless the same has the United States for more than two years been introduced into public use in the Unitprior to the application, and that the patent ed States more than two years prior to the shall expire at the same time with the for application," yet "every patent granted for eign patent, or, if there be more than one, an invention previously patented in a forat the same time with the one having the eign country shall be so limited as to expire shortest term; but in no case shall it be in at the same time" with the one having the force more than seventeen years." 16 Stat shortest term,-in no case to remain in force 198, 201, c. 230.

longer than 17 years. From this history of acts of congress relat Notwithstanding the difference in the ing to patents for inventions, it appears: wording of these statutes, the plaintiff con

(1) That in all of them congress had in tends that the words in the act of 1870, "first mind the date of an'application for a patent, patented or caused to be patented in a forthe date of the filing of specifications, and eign country," and the same words, together the date of the patent.

with the words, "previously patented in a (2) That, under the act of 1836, a patent foreign country," in the Revised Statutes, could not be granted if it appeared that the refer to a foreign patent issued prior to the applicant was not the original and first in. | application for the American patent, and do ventor or discoverer, or that any part of that not embrace a foreign patent issued after which was claimed as new had before been such application, although issued before the invented or discovered, or patented or de American patent was issued. In other scribed in any foreign publication in use in words, the contention is that when the same this or any foreign country. Yet an original invention is patented both in this country and true inventor was not to be deprived of and abroad, the American patent remains a patent for his invention “by reason of his in force for 17 years from its date, if the having previously taken out letters patent foreign patent was issued after the applitherefor in a foreign country, and the same cation for, although prior to the date of, having been published at any time within the American patent. sis months next preceding the filing of his What was the interpretation placed upon specification and drawings."

the act of 1870 by the executive branch of (3) That, under the act of 1839, an invent the government? or, whose invention bad not been introduced The objects and scope of that act were coninto public and common use in the United sidered by Mr. Fisher, the commissioner of States prior to the application for a patent, patents, in several cases, within a few should not be debarred from receiving a months after the passage of the act of 1870. patent by reason of his invention “having The decisions of the commissioner derive been patented in a foreign country more some importance from the fact that they than six months prior to his application." were rendered while the changes made by

(4) That, under the act of 1870, one whose the act of 1870 were fresh in the minds of invention had not been introduced into pub those who, like himself, took special inter: lic use in the United States for more than est in legislation affecting patent rights. two years prior to the application for an In Mushet's Case, decided September 19, American patent sliould not be debarred 1870, the question was as to the extension of from receiving a patent by reason of bis in letters patent for an improvement in the vention “having been first patented or manufacture of iron and steel, granted May caused to be patented in a foreign country." 26, 1857, and antedated September 2, 1836. -those words not being qualified, as in the The commissioner, referring to the twenty-"; act of 1839, by any reference to the date of fifth section of the act of 1870, said: "When: the application.

therefore, the statute declares that the pat. (5) That when an American patent was ent shall expire at the same time with the

foreign patent, I am very clearly of the opin his own country, and permits it to expire ion that if, at the expiration of the original there, it shall also expire in this country, so term, it appears that the foreign patent bas that the right to use the invention without already expired, no prolongation of the term liability to the inventor shall be simultaneous of the American patent can be permitted. in this and in the most favored foreign naThis is in accordance with the letter and tion. Therefore, while I held that the section spirit of the enactment. The intention of did not shorten the term of patents already congress obviously was to obtain for this granted, I also held that it did prevent the country the free use of the inventions of for extension of such patents when the original eigners as soon as they became free abroad. term expired. It would, I conceive, be a This is indicated by the use of the phrase, manifest impropriety to grant to a patentee 'first patented, or caused to be patented, in seven additional years of protection, when the a foreign country,' for it was presumable fact has been brought home to me that he that American citizens would obtain their first patented his invention abroad, and that first patent here, while a foreigner would bis foreign patent has expired. Whether the first patent bis invention in his own coun section in question does or does not actually try. The statute was designed to prevent a forbid the extension, it so clearly declares foreigner from spending his time and capital that the American patent shall not survive in the development of an invention in his the death of the prior foreign patent that a own country, and then coming to this to en decent respect for the declared policy of the joy a further monopoly, when the invention legislature would determine an officer, wbile had become free at home. The result of exercising his discretion, to exercise it in acsuch a course would be that while the for cordance with that policy, and not in opposieign country was developing the invention tion to it. It is urged, however, that congress and enjoying its benefits, its use could be in intended only to reach the case of the foreign terdicted bere; while, if the term of the inventor who first patented his invention in monopoly could be further extended here, his own country, and that they did not intend the market could be controlled long after to put the American inventor, who obtained the foreign nation was prepared to flood a patent abroad, in a worse position than if this country with the unpatented products he had obtained no patent at all in a foreign of the patented process. It appears in this country. It is said, with much force, that if case that under the Bessemer patents, as the American patentee had not obtained an sisted by the Mushet process, English manu English or French patent, the invention facturers have been enabled to send to this would be free in those countries, even during country 100,000 tons of steel railroad iron, the lifetime of his original patent; and that against 10,000 tons manufactured here. If the fact that it was free there would be no now, when both patents are free to all Eng. bar to the grant of an extension.

This may lish manufacturers, the American manufac be true, but we have no means of judging of turer must pay a royalty for those inven. the intention of congress in this case, except tions, he is immediately placed at a disad by the language employed in the declaration vantage as compared with his foreign com of their will. The language of the statute petitor, and this by the act of the patentee, is, first patented, or caused to be patented, in either in neglecting to obtain that exten a foreign country. This, by its terms, insion abroad, for which he sues in this coun cludes American citizens as well as foreigntry, or by devoting his time during the orig. ers who first take out a patent abroad. The inal term to the development of the inven term 'patented' may well be construed as aption abroad to the neglect of the American plying to foreigners obtaining patents in their field." Com. Dec. (1870) 106, 108.

own country, and the phrase, 'caused to be A like ruling was made October 6, 1870, patented,' to such persons, not citizens of the in the Case of Ward, an American inventor. same country, including Americans, as should Com. Dec. (1870) 126.

cause their inventions to be introduced or patIn Boyer's Case, decided October 25, 1870, ented there. It does not include either forwhich was an application for the extension of eigners or citizens who first obtain their patletters patent granted November 4, 1856, to ents in this country. It was supposed that one Evans, for an improvement in spading American inventors would first obtain their machines, it appears that Evans obtained let. patents here, in which case they would not ters patent in England, dated December 17, have been within the terms of the section; 1855, sealed May 27, 1856, and which expired but if, on the other hand, they choose to obDecember 17, 1869. The commissioner, re tain patents abroad before doing so in their ferring to section 25 of the act of 1970, said: own country, they were to be placed upon the "In the case of Mushet it was a foreign in same platform as the foreign patentee. It is ventor, and in the case of Ward an Ameri. reasonable to suppose that the inventor will can inventor, who were seeking the exten follow up his earliest patent with the greatest sion; but in both cases letters patent were vigor, and that, other things being equal, he first obtained in the foreign country.

will protect his invention first in that country I was and am of the opinion that the policy where he expects to make most use of it. If, which congress plainly declares in this sec therefore, the American inventor chooses to tion is that if a foreigner obtains a patent in exhibit this preference for a foreign country,

v.15$.c.-33

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