The 12th section of the patent act of July 4, 1836 (5 Stat. 121), provides for the filing of a caveat in the confidential archives of the patent office, and that, if application shall be made by any other person within a year from the filing of the caveat, for a patent for an invention that shall interfere with the one described in the caveat, it shall be the duty of the commissioner to give notice of the application to the person filing the caveat, who shall, within three months, file his description, specification, drawings and model, and if, in the opinion of the commissioner, the specifications of claim interfere with each other, like proceedings shall be hád as in the case of interfering applications. The 15th section specifies, among other things, as a defence to an action for the infringement of a patent, that the plaintiff “had surreptitiously or unjustly obtained the patent for that which was in fact invented or discovered by another, who was using reasonable diligence in adapting and perfecting the same.” The instructions of the court to the jury turn on these two provisions of the law.
There is some difficulty in maintaining the power of the commissioner to issue the patent to the plaintiffs, within the terms of the 12th section, providing for the filing of a caveat, and in upholding such patent against the right of a party who has complied with the provisions of that section. The section directs that the commissioner shall, instead of issuing the patent, file the papers accompanying the subsequent application, pending the force of the caveat, and that if, in his opinion, there is an interference, then such proceedings shall be had as in the case of interfering applications. These proceedings will be found in the 8th section of the act. But we are of opinion, that the case falls within the scope and meaning of the de-fence prescribed in the 15th section, already referred to. It is true, there is nothing in the case implicating the good faith of Gamp or of his assignees, and hence the injustice relied on is rather injustice in. the abstract than injustice resulting from any intentional wrong. We are inclined, however, to think that the term was used and intended to be used in its broadest sense; and that the two provisions, the 12th and the 15th sections, taken together, were designed to protect the right of the first inventor, although he was not the first to adapt his invention to practical use, provided he has filed his caveat and has used reasonable diligence in perfecting his discovery. The purpose of the caveat is to save the discoverer from the effect of the rule of law which gives to the inventor who first adapts his invention to practical use the right to the grant of the patent; and, in case the commissioner complies with the terms of the 12th section, it does secure him against the effect of that rule. It is not surprising, in the multiplicity of applications before the commissioner, that he should accidentally overlook a caveat filed some time before the making of an application by another party, and, doubtless, that officer issued the second patent in this case, with the view that the patentee might have an opportunity of correcting the error. He should not be prejudiced by the accidental omission to give him the notice. A new trial must be denied.