This case is before us upon a certificate made under the sixth section of the act of March 3, 1891 (26 Stat. 826, c. 517), providing that a circuit court of appeals may, in any case of which it has appellate jurisdiction, certify questions or propositions of law for the proper decision of which it desires the instruction of this court.
On the 1st day of December, 1876, John J. Bate made application to the United States for letters patent for an improvement in processes for preserving meats during storage and transportation.
Pending this application, two foreign patents were granted for the Bate invention.-one, for the term of 14 years, by the British government, to William Robert Blake, on a communication from Bate under date of January 29, 1877, which patent was sealed July 13, 1877, and the complete specifications of which were filed July 26, 1877; the other, for the term of 5 years, by the government of the dominion of Canada, to Bate himself, under date of January 9, 1877.
After these foreign patents were issued, namely, on the 20th day of November, 1877, Bate received a patent from the United States, expressed to be for the term of 17 years, and assigned it to the Bate Refrigerating Company, the plaintiff in this suit.
The present suit was brought by that company July 25, 1892, for an injunction against the infringement of the American patent, as well as for an accounting. It was heard in the circuit court on pleas to the bill, and a decree was passed dismissing the suit. From that decree an appeal was taken to the circuit court of appeals.
Both foreign patents for the Bate invention having expired before the expiration of the 17 years specified in the United States patent, the following questions arose in and have been certified by the circuit court of appeals: Whether the invention for which the patent from the United States was issued had been 'previously patented in a foreign country,' within the meaning of those words in section 4887 of the Revised Statutes; and whether the American patent expired, under the terms of that section, before the expiration of 17 years from its date.
The Revised Statutes of the United States provide that any person inventing or discovering any new and useful art, machine, manufacture, or composition of matter, or any new and useful improvement thereof, 'not known or used by others in this country, and not patented or described in any printed publication in this or any foreign country, before his invention or discovery thereof, and not in public use or on sale for more than two years prior to his application, unless the same is proved to have been abandoned,' may obtain a patent therefor, which shall contain a grant of the exclusive right for the term of 17 years to make, use, and vend such invent on or discovery throughout the United States and the territories thereof, and bear date as of a day not later than six months from the time at which it was passed and allowed, and notice thereof sent to the applicant or his agent. Sections 4884-4886.
By section 4887 it is provided that '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, unless the same has been introduced into public use in the United States more than two years prior to the application. But every patent granted for an invention which has been previously patented in a foreign country, shall be so limited as to 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, and in no case shall it be in force more than seventeen years.'
Other sections prescribe what the application for a patent shall contain, the nature of the oath or affirmation to be made by the applicant, and the time within which an application shall be completed and prepared for examination. Sections 4888, 4892, 4894.
The plaintiff insists that an invention patented or caused to be patented in a foreign country before being patented in this country should not be deemed to have been 'previously patented in a foreign country,' within the meaning of section 4887, unless the foreign patent was granted prior to the application for the American patent.
The defendants contend that the respective dates of the American and foreign patents, and not the date of the American application, determine the question whether an invention patented here has been 'previously patented in a foreign country.'