Gramme Electrical Co. v. Arnoux & H. Electric Co.

• Decision Date: 29 August 1883
• Citation: 17 F. 838
• Parties: GRAMME ELECTRICAL CO. v. ARNOUX & HOCHHAUSEN ELECTRIC CO. and another.
• Court: U.S. District Court — Southern District of New York

17 F. 838

GRAMME ELECTRICAL CO. v. ARNOUX & HOCHHAUSEN ELECTRIC CO. and another.

United States Circuit Court, S.D. New York.

August 29, 1883

Solomon J. Gordon, for plaintiff.

Charles H. Knox and Henry E. Woodward, for defendant.

BLATCHFORD Justice.

This is a suit in equity, brought for an infringement of letters patent No. 120,057, granted to Zenobe Theophile Gramme and Eardley Louis Charles D'Ivernois, October 17, 1871, for 17 years from that day, for an 'improvement in magneto-electric machines.' It is set up as a defense, in the answer, that the patentees obtained a patent in Austria December 30, 1870, for the same invention as is covered by No. 120,057; that the Austrian patent has expired; and that therefore, No. 120,057 has expired. The Austrian patent, and sundry documents pertaining to it, and the Austrian statute are in evidence. The patentees took out a patent in France for the same invention, for 15 years, on the twenty-second of November, 1869. On the thirtieth of May, 1870, they made oath in Paris, France, to their application for No. 120,057. The application and the oath recited the date and the term of the French patent. The application was filed in the United States patent-office, August 17, 1870, with a specification drawings, and model, and the proper fee was paid. On the third of October, 1870, they filed in Austria an application, dated September 30, 1870, for a patent for the same invention for the period of one year. On the thirtieth of December, 1870, 'an exclusive patent' was issued to them in Austria 'for the duration of one year' for the invention, 'under all conditions and with all effects stated in the supreme patent law of August 15, 1852. ' An amended oath to the United States application was sworn to by the patentees at Paris, June 26, 1871, and filed in the patent-office July 12, 1871. It referred to the French patent, and stated its date and term, but it did not mention the Austrian patent. The final fee for No. 120,057 was paid October 2, 1871. The Austrian patent was extended nine times, year by year, each extension being for one year, and till December 30th in each year, and it finally expired December 30, 1880. The bill in this suit was filed in July, 1881. It is agreed that the Austrian patent applied for and granted was for the same invention that is claimed in No. 120,057.

The Austrian patent law of August 15, 1852, requires that the applicant for a patent shall state in his petition the number of years for which he demands a patent, which number cannot exceed 15, except by special grant of the crown. The tax must be paid in advance, and is in proportion to the duration of the privilege. The exclusive privilege secures to the patentee the exclusive use of his invention 'for the number of years mentioned in his privilege. ' A patentee whose privilege has been granted for a short period may claim its prolongation for one or more years during the fixed longest period, provided he demands such a prolongation before the privilege has become extinct, and pays in advance the tax for the required term of prolongation.

No. 120,057 was granted under the provisions of the act of July 8, 1870, (16 St.at Large, 198,) and its validity and duration must be tested by those provisions. By section 22 of that act (p. 201) every patent is to be granted for the term of 17 years. By section 25 (p. 201) it is provided as follows:

'No person shall be debarred from receiving a patent for his invention or discovery, nor shall any patent be declared invalid by reason of its having been first patented or caused to be patented in a foreign country: provided, the same shall not have been introduced into public use in the United States more than two years prior to the application, and that the patent shall 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.'

It is contended for the defendant that, under the foregoing provisions, No. 120,057 expired, either on December 30, 1871 or on December 30, 1880...