DIAMOND MATCH CO. v. ADIRONDACK MATCH CO. et al.

DIAMOND MATCH CO. v. ADIRONDACK MATCH CO. et al. (Circuit Court, D. Vermont. January 31, 1895.) Patents — Duration—Forf.ion Patents. Under Rev. St. § 4887, providing that, patents shall be so limited as to expire with any foreign patent for the same invention “having the shortest term,” the United States patent does not cease when a foreign patent ceases because of nonpayment of patent office fees for more than a part of the term for which the patent might, on payment of all the fees, remain in force. Buil by the Diamond Match Company against the Adirondack Match Company and others. J. W. Russell, for orator. Hamilton B. Peck, for defendants. [MAJORITY — WHEELER, District Judge.] WHEELER, District Judge. This bill is brought upon letters patent of tlie United ¡States, No. 313,004, dated March 3, 1885, and granted to Ezra B. Eddy, George H. Millin, and Edward Mousseau, of the dominion of Canada, for an improvement in apparatus for dipping matches. The defendant,s have pleaded section 19 of the Canadian statute of 40 Viet., of May 25,1883, which provides that: “The term limited for tlie duration of every patent of invention issued by the patent office shall be fifteen years, but at the time of the application therefor it shall be at the option of the applicant to pay the full fee required for •the term of fifteen years or tlie partial fee required for the term of five years or the partial fee required for the term of ton years. In case a partial fee only is paid, the proportion of the fee paid shall be stated in the patent and the patent shall notwithstanding anything therein or in this act contained cease at the end of the term for which the partial fee has been paid unless at or before the expiration of the said term the holder of the patent pays the fee required Cor the further term of five or ten years and takes out from the patent office a certificate of such jiayment (in the form which may be from time to time adopted) to be attached to and refer to the patent.” —That: letters patent, of. the dominion of Canada, No. 20,572, dated November 13, 1884, were granted to tlie same inventors for tlie same Invention under that statute, subject:,to the conditions of that act, and to the option of tlie applicants contained in the patent for' the payment of the full fee for the term of fifteen years, or a partial fee for a term of live or ten years, and that a partial fee for five years only lias ever been paid, wherefore the Canadian patent expired on November 13, 1889) and they say that for that cause the patent of the United Btates expired at the same time. This plea has now been argued, and Bate Refrigerating Co. v. Hammond Co., 129 U. S. 151, 9 Sup. Ct. 225, has been much relied upon in argument to support it. The patent in question there was issued in January, 1877, for five years, under, and conformed to, the Canadian statute of 35 Vict., of June 14, 1872, which provided: “(17) Patents oC invention issued by the patent office shall be valid for a period of live, ten, or fifteen years, at the option of the applicant, but at or before the expiraiion of the said five or ten years the holder thereof may obtain an extension thereof for another period of five years, and after those second five years may again obtain a further extension for another period of five years, not in any case to exceed a total period of fifteen years in all;” • — And was kept in force five years at a time for fifteen years. The United States patent was issued during tke first five years, and tfie question was whether it would expire at tke end of that five years. It was field not to fiave been extinguished by any expiration of tfie Canadian patent then, because that patent did not expire- then. Whether it would fiave expired if tfie Canadian patent had been left to expire then was not in question. This decision was explained in Pohl v. Brewing Co., 134 U. S. 381, 10 Sup. Ct. 577, by saying (page 386, 134 U. S., and page 579, 10 Sup. Ct.): “The ground of this conclusion was that the ‘term’ of the Canadian patent granted in January, 1877, was, by the Canadian statute, at all times a term of fifteen years’ duration, made continuous and uninterrupted by the action of the patentee, as a matter entirely of right, at his own option.” A French and a German patent were in question, each of which had been granted for 15 years, but might, and did, expire for nonpayment of annuities, or not being worked; and such expiration was held not to limit tfie United States patent for the same invention, granted afterwards, because tfie term of time of a foreign patent would be tfie same although it might be suffered to lapse or become forfeited. Tfie term of tfie foreign patent seems to be tfie space of time during which the monopoly is placed within the patentee’s control, without reference to whether fie sees fit to retain it for tfie whole time or not. Therefore tfie provision of section 4887 of the Revised Statutes that patents shall be so limited as to expire with any foreign patent for tfie same invention “having tfie shortest term,” seems to mean tfie expiration of such, term of the foreign monopoly as tfie patentee is by tfie grant of tfie foreign patent given power over and control of. By tfie Canadian statute now in force tfie term limited for tfie duration of this monopoly was 15 years, which has yet several years to run. Tfie patent in suit appears to fiave tfie same time to run. Plea overruled, tfie defendants to answer over by March rule day.