16 F. 543 (W.D.Va. 1883), Fire Extinguisher Mfg. Co. v. Graham

Citation:16 F. 543
Case Date:May 09, 1883
Court:United States Courts of Appeals, Court of Appeals for the Fourth Circuit

Page 543

16 F. 543 (W.D.Va. 1883)



GRAHAM, Adm'r. (In Equity.)

GRAHAM, Adm'r,



United States Circuit Court, W.D. Virginia.

May 9, 1883

Dr. William A. Graham, who died in 1857, was the inventor or discoverer of a method of extinguishing fires by means of throwing upon burning substances a stream of liquid combined of carbonic acid gas and water, highly condensed. He made reapplication for a patent for this discovery at the patent-office of the United States, in Washington, in November, 1837. His invention is now conceded to have been original, novel, and valuable. His application was examined and was refused on the twenty-fifth of November, 1837. It was re-examined, at his solicitation, and a second time refused, on the sixteenth of December, 1837. He then made out a new and more formal specification, which he filed on the twenty-ninth of December, 1837, in which he claimed the invention, not only of the liquid he described, but also of the apparatus by which to apply it to the extinguishing of fires. This second renewal and amended form of the application was not acted upon at the time, or for 14 years afterwards, by the commissioner of patents, action having been suspended at the request

Page 544

of Dr. Graham, made in writing on the thirteenth of July, 1838. It seems that sickness and want of means compelled him to leave Washington in January, 1837, and that an accident and poverty prevented his return there until 1851. On the thirteenth of December, 1851, he renewed his application by letter. In reply he was again informed by letters of the department dated on the twenty-third of December, 1851, and on the nineteenth of January, 1852, that his application could not be reconsidered or acted upon. On the thirteenth of January, 1852, he had executed to Augustus W. Burton an assignment, by which, referring to his 'new' and useful improvement in extinguishing fires, for which he had 'made application for letters patent of the United States, (he) assigned to Burton one quarter of the full and exclusive right to all the improvements made by (him) as fully set forth and described in the specifications which (he) had prepared and executed preparatory to obtaining letters patent therefor; to be held and enjoyed by the said Augustus W. Burton, etc., to the full end of the term for which said letters patent are or may be granted. ' Both Burton and Dr. Graham were residents, at the time, of North Carolina, and this assignment was executed at Washington, where they both were, for the purpose of obtaining this patent. Dr. Graham was a native of Virginia, but lived for many years and died in North Carolina. Both Dr. Graham and Burton seemed to have regarded and accepted as final the letter of the department dated the nineteenth of January, 1852, before alluded to, refusing to reconsider the application for the patent which had been pending or suspended since December 23, 1837. There is no evidence that either of them took another step in furtherance of the application. The assignment of a part interest by Graham to Burton was made to obtain the means of defraying the expenses of this visit to Washington, and of prosecuting the application. There can be no doubt that the assignment of Graham was intended to transfer a fourth interest to Burton of this identical invention, for which he then had an application before the department, and which was finally rejected six days after the date of the assignment. During the years 1851 and 1852, and, probably, during the whole or greater part of the period which had intervened since 1837, it was a rule of practice in the department of the commissioner of patents to hold that, after a second rejection, a case was not entitled to any further examination, unless under peculiar circumstances. It was also the practice of the department during the same period to hold that no deliberate decision by one commissioner of patents should be revised by a subsequent one. See

Page 545

Patent-office Report for 1851-2, House Doc. 65, 32d Congress, 2d Sess. p. 456.

The several laws limiting the time for applying or renewing applications for patents affecting the case at bar are as follows:

Section 12 of the patent laws of 1861, (12 St.at Large, 248,) among other things, provided 'that all applications for patents shall be completed and prepared for examination within two years of the filing the petition; and, in default thereof, they shall be regarded as abandoned by the parties thereto, unless it be shown to the satisfaction of the commissioner of patents that such delay was unavoidable; and all applications now pending shall be treated as if filed after the passage of this act.'

In the patent laws of July 8, 1870, (16 St.at Large, 202,) this section 12 of the law of 1861 is repeated by section 32, except that the later law left no discretion to the commissioner to reinstate a lapsed application. And section 35 of the law of 1870, (Id. 202,) provided that--

'Where an application for a patent has been rejected or withdrawn prior to the passage of this act, the applicant shall have six months from the date of such passage to renew his application, or to file a new one, and if he omits to do either, his application shall be held to have been abandoned. Upon the hearing of such new application, abandonment shall be considered as a question of fact.'

This act of congress, and of course this section of it, were in force until the passage of the Revised Statutes of the United States the twentieth of June, 1874. No advantage of the six-months' provision of the law of 1870 was taken by Graham, who was dead, nor by Graham's administrator, under section 34 of the act of 1870, now section 4896 of the Revised Statutes, nor by Burton, who lived until 1877, nor by any one for either of them, to revive the application for the extinguisher which had been finally rejected on the nineteenth of January, 1852.

The Revised Statutes, in section 4894, in force since 1874, provide that 'all applications for patents shall be completed and prepared for examination within two years after the filing of the application, and in default thereof, or upon failure of applicant to prosecute the same within two years after any action therein, of which notice shall have been given to the applicant, they shall be regarded as abandoned by the parties thereto, unless it be shown to the satisfaction of the commissioner of patents that such delay was unavoidable;' a provision

Page 546

which substantially revived the like one in the law of 1861, supra.

No one of these saving clauses was ever availed of by Dr. Graham, who died in 1857, or by Burton, who lived until 1877, or by any one for them. Burton had power to act in his own interest as fully as Dr. Graham; for section 4898 of the Revised Statutes, repeating section 11 of the patent law of 1836 and section 36 of the law of 1870, provides that 'every patent or any interest therein shall be assignable in law by an instrument in writing;' a provision which has been frequently held to apply to inventions for which patents have not yet issued. And section 4895, repeating section 6 of the patent law of March 3, 1837, (5 St.at Large, 193,) provides that patents may be granted and issued or reissued to the assignee of the inventor or discoverer. No steps whatever seem to have been taken by Burton to secure the benefit of his assignment from Dr. Graham of a fourth interest, by following up and prosecuting their application for letters patent for the Graham extinguisher.

It is the policy of congress, after the death of inventors and original owners of patent-rights, to secure the benefits of them to heirs or devisees rather than to personal distributees. These rights are expressly vested by law in personal representatives in trust for heirs or devisees; and patent-rights are thus made to partake somewhat of the character of real estate. Section 10 of the patent act of 1836, section 34 of the act of 1870, and section 4896 of the Revised Statutes, provide that 'when any person having made any new invention or discovery for which a patent might have been granted, dies before a patent is granted, the right of applying for and obtaining the patent shall devolve on his executor or administrator, in trust for the heirs at law of the deceased, in case he shall have died intestate; or, if he shall have left a will disposing of the same, then in trust for his devisee.'

Notwithstanding the summary rejection of the application of Dr. Graham twice in 1837, and twice again in 1851 and 1852, the commissioner of patents awarded to W. H. Phillips, an English subject, in 1860, a patent for a similar invention. In 1869 this officer granted a patent to Carlier & Vignon, of Paris, France, a patent for an extinguisher almost if not quite identical with that refused to Dr. Graham in 1837 and in 1851. Also, in June, 1871, a patent for an extinguisher which would probably be an infringement upon Graham's, was granted to David M. Ford of Chicago, Illinois.

Page 547

As before stated, Dr. William A. Graham died in 1857. He was unmarried and left no descendants. His brother, Dr. Archibald Graham of Lexington, Rockbridge county, Virginia, qualified as his administrator, before the proper court of Rockbridge county, on the second of January, 1872.

In 1877 Dr. Archibald Graham went before congress in behalf of the heirs of William A. Graham, of whom he was one, seeking to obtain a reparation of the injustice which his brother had sustained from the action of the commissioner of patents. By an act approved June 11, 1878, congress, as if desiring to requite in some degree this injustice to a...

To continue reading