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and to give them the first information respecto term of the domestic patent to the period of ing his invention, and the earliest opportunity time that the foreign patent has to run; or, of using it, the law makes no distinction be if there be more than one, then to make it tween him and the foreign inventor who ob- expire at the same time with the one having tains his first patent at home.” Com. Dec. the shortest term. We do not see how any (1870) pp. 130, 131.
language could have been employed that In the Case of Smith and Skinner, decided would more clearly express the legislative October 26, 1870, the commissioner said: "In design that the life of the domestic patent the cases of Ward and Boyer I held that the should expire with the term of any out. grant of a foreign patent before the issue of standing foreign patent. But the counsel an American patent was fatal to the applica- for the complainant contended on the argution for the extension of the American patent ment that the present case did not fall withif the foreign patent expired before the origi in the limitation of the statute, because the nal term of the patent sought to be extended application for the United States patent was It is immaterial whether the American pat filed antecedent to the application for or the ent was applied for before the foreign patent grant of the Canadian patent. We are at a
or not. This was important under the first loss to understand what the time of filing the laws, but no such distinction exists under the application for the patent has to do with the ''act of*1870. This invention was patented in matter. It is true that the eighth section
England, France, and Belgium on October 17, of the act of 1836 and the sixth section of the 1856, prior to the grant of the American pato act of 1839 made the date of filing the speci. ent, and the English patent had already ex fications and drawings in the one case and pired. This point is fatal to the present ap- the date of the application of the home patplication." Com. Dec. (1870) p. 131.
ent in the other the point of time from which We have not been referred to any ruling of to reckon the six months intervening between the patent office, after the passage of the act the issue of the foreign and domestic patent. uf 1870, in conflict with or different from that It is also true that by section 4886 and the of Commissioner Fisher, except one made by first clause of section 4887, of the Revised Commissioner Paine in 1880. But in refer Statutes an inventor is required to file an apence to the latter ruling, and the construction plication for his patent within two years aftof the act of 1870, under which the commis er his invention or discovery has been in pubsioner of patents had uniformly proceeded, lic use or on sale, from all of which the late Commissioner Marble, in a letter to the secre commissioner of patents (Paine) was led to tary of the interior, under date of March 17, the opinion that the word 'previously,' used 1882, said: "As will be seen by Col. Mason's in the last clause of section 4887, bad ref. communication, the construction now put up erence to the time prior to the filing of the on the statute is the construction which application, rather than to the time prior to It has received since it was enacted, except the granting of the patent. See 17 O. G. during a short interval of the term of my 330. But this seems to be wresting the lanpredecessor, Mr. Commissioner Paine. I may guage of the section from its plain and obstate, however, that Mr. Commissioner Paine
vious meaning, and we are not able to fol. addressed to me a letter within one month
low the reasoning by which such an interpre after he had retired from office, stating that tation is reached." he believed his construction of section 4887 This decision was followed in Gramme was erroneous."
Electrical Co. v. Arnoux, etc., Electric Co. It is appropriate now to inquire as to the
(1883) 17 Fed. 838, 840, which turned upon course of judicial decision upon the question the construction of section 25 of the act of before this court.
1870. One of the questions in that case That question was directly presented in Re was whether an American patent, dated Oc. frigerating Co. v. Gillett, 13 Fed. 553, 555, tober 17, 1871, and the application for which which case related to the patent here involv
was made August 17, 1870, was limited, as ed. Bate's application in Ca ada having been
to its term, by the term of an Austrian patent made after his application in this country, issued after the American application was and the Canadian patent having been issued made, but before the American patent was before the American patent was issued, the issued. *Mr. Justice Blatchford, referring to * principal question was whether the invention section 25 of the act of 1870, said: “It is was patented in Canada previous to the issu contended that under the foregoing proviing of the patent in the United States, in the sions (patent] No. 120,057 expired either on sense in which the words “previously patent December 30, 1871, or on December 30, 1880, ed" were used in section 4887 of the Revised the date of the expiration of the Austrian Statutes.
patent, accordingly as that patent is to be Referring to that section, Judge Nixon said: | regarded as a patent for one year or for ten "The phraseology here used materially differs years. To this the plaintiff replies that the from the previous legislation on the subject. application for No. 120,037 was filed before The power of the commissioner of patents the application for the Austrian patent was is defined and abridged. Where a foreign filed. But the date of the application for patent has been granted for the same subject No. 120,057 cannot affect the question. I'nmatter, he is expressly required to limit the der the act of 1870 a patent takes effect from
the time when it is granted, and cannot be ence in the phraseology of section 4887 and antedated. The meaning of section 23 of the that of section 25 of the act of July 8, 1870, act of 1870 is that the United States pat- from which the section is reproduced.” Reent shall expire at the same time with ferring to the above cases at the circuit, he the foreign patent having the shortest time remarked that the question should not be conto run, which was granted before the United sidered as an original one. States patent was granted, and not that it In Refrigerating Co. v. Hammond, 35 Fed. shall expire at the same time with the for- 151, Judge Colt followed the decision in Re eign patent having the shortest time to run, frigerating Co. v. Gillett. And a like ruling which was granted before the time when the was made by Judge Coxe in Accumulator Co. application for the United States patent was V. Julien Electrical Co., 57 Fed. 605. made. Refrigerating Co. v. Gillett, 13 Fed. In view of this history of the question pre 553."
sented by the certificate of the circuit court There is nothing in the opinion delivered of appeals, what is the duty of this court? by Mr. Justice Blatchford which, in our judg. In Andrews v. Hovey, 124 U. S. 694, 717, 8 ment, justifies the suggestion that he felt Sup. Ct. 676, it was said that the construction constrained by principles of comity to follow of a statute of the United States concerning the decision of Judge Nixon without consid- patents for inventions cannot be regarded as ering the question upon its merits. He seems judicially settled when it has not been so set. to have expressed his mature judgment as tled by the highest judicial authority which to the scope and meaning of the act of 1870. can pass judgment upon the question. “Nor,"
Tbe case of Refrigerating Co. V. Gillett the court further said, "is this a case for the came before Mr. Justice Bradley at the cir-application of the doctrine that, in cases of cuit in 1887, and what he said is reported in ambiguity, the practice adopted by an execu31 Fed. 809. Referring to the construction tive department of the government in intergiven by Judge Nixon to section 4887, he ob- preting and administering a statute is to be served that, if the question were an open one,
taken as some evidence of its proper construche would have some hesitation, as it was one tion. The question before us as to the validof considerable doubt. Expressly stating ity of a patent by reason of pre-existing acts that he had not come to any decided conclu or omissions of the inventor, of the character sion on the subject, he declined, while sitting of those involved in the present case, is not at the circuit, to modify the decision of a question of executive administration, but is Judge Nixon, and gave to it full effect. This properly a judicial question. Although it may court would undoubtedly attach great value be a question which, to some extent, may to the deliberate judgment of Mr. Justice come under the cognizance of the commissionBradley upon the question now before it, er of patents in granting a patent, yet, like indeed, upon any question.
all the questions passed upon by him in grant• In Edison Electric Light Co. v. U. S. Elec- ing a patent which are similar in character tric Lighting Co. (1888) 35 Fed. 131, 137, 138, to the question here involved, his determinathe subject was carefully considered by Judge tion thereof, in granting a particular patent, Wallace. In that case, which was a suit for has never been looked upon as concluding the the infringement of a patent, he said, after determination of the courts in regard to those quoting section 4887: “The real inquiry is questions respecting such particular patent, whether the section limits the term of a do- and, a fortiori, respecting other patents.” The mestic patent to the term of a foreign patent appellant, therefore, properly insists that the when the application for the foreign patent is determination of the present question shall not made until subsequent to the application not be deemed absolutely concluded either by in this country, but the foreign patent issues the practice that has obtained in the patent before the domestic patent. If it were proper office since the passage of the act of 1870 nor to treat this question as an original one, it by decisions in the inferior courts of toa would be necessary first to inquire whether United States. there is any ambiguity in the language of the If section 4887 of the Revised Statutes is so statute. If there is not, the duty of the court worded as to express clearly the intention of is to give effect to its obvious meaning, not congress, the court must give effect to that withstanding it may be thought to make an intention. But, even if the statute be not so unreasonable and harsh innovation upon the explicit as to preclude construction if, upon pre-existing privileges of our own inventors. applying to it the established rules of interIt is not only the safer course to adhere to the pretation, if looking at it in the light of prewords of a statute, construed in their ordi- | vious legislation on the subject, if there be pary import, instead of entering into any in reasonable ground for adopting either one of quiry as to the supposed intention of con two constructions, this court, without depart. gress, but it is the imperative duty of the ing from sound principle, may well adopt court to do so. Where the meaning of the that construction which is in harmony with Revised Statutes is plain, the court cannot the settled practice of the executive branch of look to the sources of the revision to ascer the government, and with the course of juditain whether errors have or have not been cial decisions in the circuit courts of the committed by the revisers. U. S. v. Bowen, United States, especially if there be reason to 100 U. S. 508. There is no practical differ suppose that vast interests may have growo
up under that practice and under Judicial de a foreign country before being patented here cisions, which may be disturbed or destroyed is to be exempt from the operation of the pro by the announcement of a different rule. vision limiting the term of the American pat.
Looking at the words of the statutes re ent to expire with the foreign patent. Serred to, neither unduly enlarging nor un Was the Bate invention patented abroad duly restricting their meaning, we are of before it was patented in this country? If opinion that congress intended by the twenty so, the American patent expired with the fifth section of the act of 1870, preserved in foreign patent, and thereby the American section 4887 of the Revised Statutes, to intro public became entitled to use the invention duce a new test in respect of the term of an from the time the foreign public were perAmerican patent where the same invention mitted to use it. Congress, in effect, by the was the subject of a foreign patent previously existing law, says to an inventor seeking Issued. It has already been observed that the to enjoy the exclusive use in this country statutes relating to patents show upon their of his invention for the full term prescribed face that congress always had in mind the by law: "If your invention has not been difference between an application for a pat introduced into public use in the United ent and the patent itself. And that differ States for more than two years, you may, ence is apparent in the act of 1870. We find upon complying with the conditions prescribthere the words "application," "patent," "pat | ed, obtain an American patent, and you may, ented," "first patented," and "caused to be if you can, obtain a foreign patent. But the patented."
American patent will be granted on the conThe inventor whom the act of 1839 was de dition that if you obtain the foreign patent signed to protect was one whose invention first, your invention shall be free to the had not been introduced into public and com American people whenever, by reason of the mon use in the United States prior to his ap expiration of the foreign patent, it becomes plication for an American patent, and which free to people abroad; but in no case shall had been "patented in a foreign country more the term of the American patent exceed serthan six months prior to his application." In enteen years.” This we deem to be a sound reference to an American patent, granted un interpretation of the statute, giving to tbe der those circumstances, that act expressly words used the meaning required by their declared that it should be limited to 14 years, ordinary signification. -not, let it be observed, from the date of the In our judgment, the language used is so American patent, but from the date or publi- | plain and unambiguous that a refusal to cation of the foreign letters patent.
recognize its natural, obvious meaning would The act of 1870 provided for the case of be justly regarded as indicating a purpose!: an inventor whose invention had not been in to change*the law by judicial action based.? troduced into public use in the United States upon some supposed policy of congress. But, for more than two years prior to bis applica as declared in Hadden v. Collector, 5 Wall. tion, but which had been “first patented or 107, 111: “What is termed the policy of the caused to be patented in a foreign country." government with reference to any particular In such a case, that statute expressly provid- | legislation is generally a very uncertain ed that tbe American patent should expire thing, upon which all sorts of opinions, with the foreign patent having the shortest each variant from the other, may be formed term to run.
by different persons. It is a ground much The case provided for by section 4887 of too unstable upon which to rest the judgThe Revised Statutes is the same as that pro ment of the court in the interpretation of vided for by the twenty-fifth section of the statutes." "Where the language of the act uct of 1870, and the words, "first patented, or is explicit,” this court has said, “there is caused to be patented, in a foreign country," great danger in departing from the words in the first clause of that section, are enpha- | used, to give an effect to the lair which may sized by the words in the succeeding clause, be supposed to have been designed by the "previously patented" in a foreign country. legislature. • • It is not for the court
We cannot superadd, in section 4887 of the to say, where the language of the statute is Revised Statutes, the words “prior to the ap clear, that it shall be so construed as to emplication," either after the words, “first pat brace cases because no good reason can be ented, or caused to be patented, in a foreign assigned why they were excluded from its country," or after the words, "previously pat provisions.” Denn v. Reid, 10 Pet. 524, 527. ented in a foreign country," without defeating Undoubtedly the court, when endeavoring the intention of congress as manifested by the to ascertain the intention of the legislature language it selected to indicate its purpose. may be justified, in some circumstances, in And the express command of the existing giving weight to considerations of injustice statute is that every American patent for an or inconvenience that may arise from a parInvention "previously patented in a foreign ticular construction of a statute. Wilson v. country"—that is, “first patented, or caused to Rousseau, 4 How. 616, 680; Bloomer y. Je be patented, in a foreign country”-shall ex Quewan, 14 How. 539, 553; Blake v. Bank, pire at the same time with the foreign pat 23 Wall. 307, 320; U. S. v. Kirby, 7 Wall. ent. No words are used that will justify the 482, 486. It is therefore said that the time court in holding that an invention patented in ordinarily intervening in other countries be
tween the filing of an application and the of congress that would imply bad faith upon granting of a patent is very short in com the part of the government. But the conparison with the time ordinarily consumed tention just referred to assumes the very in this country in obtaining a patent after matter in dispute. It assumes that the prom-* the inventor has filed his application in the ise to the inventor was not accompanied by patent office, and, consequently, the statute conditions authorizing the government to lim-if construed as we have indicated its words it the term of its patent to some period less reasonably require--might operate to the in than 17 years from its date. But if the jury of an American inventor in that he will promise to issue a patent is made with the be deprived of so much of the statutory reservation in the statute containing the term of his American patent as will be in promise that the patent, when issued, shall excess of the term of any foreign patent be limited to expire with any foreign patent previously obtained for the same invention. previously issued for the same invention, If the statute thus construed does not give then there is no basis for the suggestion that to the inventor all the benefits he would like the enforcement of that condition violates to have, the remedy is with another depart any promise made to the inventor. ment of the government, and it is not for Another suggestion in behalf of the plainthe courts to tamper with the words of a tiff is that in the case of a revision of statstatute, or, by a strained construction of utes neither changes of phraseology nor a legislative enactments, the language of different arrangement of clauses in themwhich is clear and explicit, to accomplish selves show an intention to change or alter results not contemplated by congress. This the existing law; that the new law should court, speaking by Chief Justice Marshall, be held to mean what the prior law meant, in U. S. v. Fisher, 2 Cranch, 358, 385, said unless a purpose to change or alter is mani. that, where the meaning of the legislature fested by clear, unambiguous language; and was plain, “it must be obeyed."
that, in the interpretation of any particular Besides, the principle that limits an Amer part of a revision, resort may be had to ican patent to expire with a previous foreign the previous law on the subject, whenever patent covering the same invention was not the revisers have not, in explicit language, first introduced by the act of 1870. It ap disclosed their meaning. The circumstances pears in the act of 1839; for it is there ex under which the courts may look at prior pressly declared that the American patent la ws for which a revision has been substiwhich the inventor shall not be debarred tuted are stated in U. S. v. Bowen, 100 U. S. from receiving by reason of the invention 508, 513. That case depended upon the conhaving been patented in a foreign country struction to be placed upon certain sections more than six months prior to his applica of the Revised Statutes. Mr. Justice Miler, tion in this country "shall be limited to speaking for the court, said: “The Revised fourteen years from the date of publication Statutes must be treated as the legislative of such foreign letters patent.” While that declaration of the statute law on the subact was in force, the term prescribed for an jects which they embrace on the 1st day American patent was 14 years. And yet, of December, 1873. When the meaning is according to its provisions, that time-if the plain, the courts cannot look to the statutes inventor had a foreign patent antedating his which have been revised to see if congress American application Sy more than six erred in that revision, but may do so when months-was to be computed, not from the necessary to construe doubtful language date of the American patent, but from the used in expressing the meaning of congress.' date or publication of the foreign patent. This principle was reaffirmed in Vietor v. That principle is preserved in the existing Arthur, 104 U. S. 498; Deffeback v. Hawke, law, for under the Revised Statutes, as un 115 U. S. 392, 402, 6 Sup. Ct. 95; Iron Co. der the act of 1970, if there be an American v. Ashburn, 118 U. S. 51, 57, 6 Sup. Ct. 929; patent for an invention previously patented U. S. v. Lacher, 134 U. S. 624, 627, 10 Sup. a broad, the former expires, not, it is true, at Ct. 625. For the reasons already stated, the expiration of any given number of years, the principle announced in the cases just as under the act of 1839, but at the time the cited cannot avail the plaintiff if the existforeign patent expires.
ing statute is interpreted to mean what its It is also said that the United States prom words import according to their natural sig. ised the inventor, when making his applica nification; for, the words used in* section. tion, to give him a patent for the full term 4987 of the Revised Statutes, as well as those of 17 years from the date of his patent, if, in section 25 of the act of 1870, clearly upon examination, it was found that he evince the purpose of congress to so curwas entitled to one at the time of such ap tail the term of an American patent (where plication; and, consequently, that a curtail the same invention is previously patented ment of that term by reason of something abroad) that it will expire at the time the occurring after the filing of the application, foreign patent expires, even if the latter was and for which he may not be responsible, is applied for and granted after the filing of inconsistent with good faith upon the part of the American application, but before the the government. Of course, this court would American patent issues. hesitate to accept any construction of an act But it is confidently asserted that tbe pro
ceedings in congress relating to the bill which, after numerous amendments, became the act of 1870, show that congress did not contemplate any such change in the law as is involved in the construction we have placed on the twenty-fifth section of that act.
It appears that the revisal of the statutes relating to patent and copyrights was reported to the house of representatives by the com
missioners appointed under the act of 1866, and was referred first to the house committee on revision of the laws of the United States, and afterwards to the house committee on patents, of which Mr. Jenckes was chairman,
The different forms in which the section now in controversy appeared prior to the passage of, as well as in, the act of 1870, are thus indicated:
As Anally adopled.
As reported by the Commissioners
of Revision. $ 25. No person shall be debarred from receiving a patent for his invention or discovery by reason of his having first patented it in a for. eign country; provided. the same shall not have been introduced into poblic and common usein the United Staten prior to the application, and that the patent shall be limited to seventeen years from the date or publication of the loreign patent.
As reported by the Committee on
$ 25. No person shall be debarred from receiving a patent for his invention or discovery, nor shall any patent be declared invalid, by rea Bon of its having been Arst patented or caused to be patented in a for eign country: provided, the same shall not have been introduced into public use in the United States for more than two years prior to the application, and that the patent sball expire at the same time with the foreign patent, or, if there be more than one, at the same time with the one having the shortest term; but in no case shall it be in force more than seventeen years.
Now, it is true that, according to the report | trolling, much less conclusive, the opinion of in the Congressional Globe of the proceedings the house committee on the revision of the in the house of representatives, Mr. Jenckes laws of the United States, as reported by Mr. said, when reporting that bill from the com Jenckes, that the bill it reported embodied mittee on patents, that the report of the re only the existing law. Nor can we assuine visers had been examined by the house com that the house of representatives, much less mittee on revision of the laws of the United the senate, based their action upon the opinStates, and “found to embody all the pro ion of individual members of the house as to visions of existing law in brief, clear, and the scope and legal effect of the report of the precise language." 90 Congressional Globe, revisers. Comparing the bill reported by the 41st Cong., 2d Sess., pt. 3, p. 2679. And it revisers and the bill reported by the house is claimed that other observations made by committee on patents with the act as it Mr. Jenckes on the same occasion tend to nassed, we find it impossible to sustain the show that, in his opinion, the bill as reported view taken by the plaintiff. by the revisers did not change the prior law. It is quite true, as the plaintiff contends,
These considerations, it is supposed, should that congress did not intend by the act of have controlling weight in our interpretation 1870 to upturn the entire policy of the govof the act as it finally passed. We cannot ernment in reference to patents; but, beyond assent to this view. If the act of 1870 was all question, its final action shows that it nothing more than a revision or consolida made and intended to make important tion of previous statutes on the same subject, amendments of existing laws. there would be much greater force in the The revisers, as well as the house commitplaintiff's contention than there appears to tee on patents, proposed that it should be a be. But that act made numerous changes in condition of the protection of an American the previous statutes, some of them of con patent, where the same invention had been siderable importance. The congress that first patented in a foreign country, that the passed the act of 1870 was not restricted to invention should not have been introduced mere revision or consolidation, even if the into public use in the United States “prior to act of 1806 be construed as contemplating the application.” The bill as it passed cononly the revision and consolidation of pre gress made it a condition that the invention vious statutes without material change. should not have been introduced into public But, whatever may have been the scope of use in this country "for more than two the act of 1866, the purpose, in the act of years prior to the application." 1870, to go beyond revision, and to amend the The revisers proposed that the patent existing statutes, is manifest from the title should run 17 years from the date or publicaof that act, and from the bill that came from tion of the foreign patent; whereas, the house the house committee on patents. When that committee on patents proposed, and it was bill, as it passed the house, reached the sen so declared in the act as passed, that the ate, various amendments were made in that American patent should in no case be in c! body. And upon the face of the act, as it force beyond 17 years, and should "expire at
finally passed, there are such*alterations of the same time with the foreign patent, or, if the prior law as to impose upon this court the there be more than one, at the same time responsibility of determining the effect of with the one having the shortest term." such alterations. We cannot accept as con The revisers, the house committee on pat.