Bissell v. Fottinger ( 1915 )

Mr. Chief Justice Shepard

delivered the opinion of the Court:

Bissell testified to the construction of a model early in 1902. This model was thrown into the scrap heap. On his testi'mony the Examiner of Interference decided that Bissell’s evidence of reduction to practice of the model was insufficient, and the other tribunals have agreed with him. We concur in this conclusion.

The chief controversy turns on the effect of Eottinger’s application for a patent in Germany. Germany, is one of the countries embraced in the treaties concerning patent applications. Section 4887, Revised Statutes, Comp. Stat. 1913, § 9431, reads as follows:

“An application for patent for an invention or discovery or for a design filed in this country by any person who has previously regularly filed an application for a patent for the same invention, discovery, or design in a foreign country which, by treaty, convention, or law affords similar privileges to citizens of the United States, shall have the same force and effect as the same application would have if filed in this country on the date on which the application for patent for the same invention, discovery, or design was first filed in such foreign country, provided the application in this country is filed within twelve months in cases within the provisions of section forty-eight hundred and eighty-six of the Revised Statutes and within four months in cases of designs, from the eaidiest date on which any such foreign application was filed. But no patent shall be granted on an application for patent for an invention or discovery or a design which had been patented or described in a printed publication in this or any foreign country more than two years before the date of the actual filing of the application in this country, or which had been in public use or on sale in this country, for more than two years prior to such filing.”

Eottinger filed an application in the German patent office June 18, 1905, which was less than a year from the time of filing his application in the United States Patent Office. No drawings of the invention were filed with this application, but it described the invention.

On' October 28, 1905, an amended application was filed accompanied with drawings, which is conceded to be a complete description of the invention of the issue. This amendment is not a departure from the original application, and the question is whether it may be taken as a constructive reduction to practice of the invention from the date of filing, having been followed by the necessary application within one year from the filing of the original application. The contention of Bis-sell is upon a strict construction of section 4887, Revised Statutes, limiting the effect of that law to the application as first filed. Ilis contention is that the application was wholly insufficient to show the invention.

The Examiner of Interferences said in his decision that since the amendment clearly discloses the issue, and has been embodied in the patent as issued in Germany, there seems to be no reason why Eottinger should not be given the benefit of the date of his amendment, that is, October 28, 1905, as the date of his constructive reduction to practice. This conclusion was adopted by the Examiners in Chief and the Commissioner of Patents on appeal to them respectively.

In the United States Patent Office an amendment specifically describing an invention disclosed in the original application would be allowed and would relate back to the date of filing the original.

We concur with the Patent Office tribunals that the construction of section 4887 contended for by Bissell is erroneous. The amendment clearly describes the invention of the issue, and has been embodied in the patent as issued in Germany, and we see no reason why Eottinger should not be given the benefit of the date of his amendment, that is, October 28, 1905, as the date of his constructive reduction to practice.

The decision is affirmed, and the clerk will certify this decision to the Commissioner of Patents as required by law.

Affirmed.