Van Der Horst Corp. of America v. Chromium Corp. of America, 198 F.2d 748 (2d Cir. 1952)

The only question which seems to us to require discussion is whether we were wrong in saying that the doctrine of Alexander Milburn Co. v. Davis-Bournonville Co., 270 U.S. 390, 46 S. Ct. 324, 70 L. Ed. 651, applies to an application for the same invention filed in a foreign country. We failed to take into consideration § 72 of Title 35, U.S.C.A. which provided that it should not "void" a patent that "the invention or discovery" had been previously "known or used in a foreign country, * * * if it had not been patented or described in a printed publication." It is reasonable to assume that Holmes, J., had § 72 in mind in Alexander Milburn Co. v. Davis-Bournonville Co., supra, 270 U.S. at page 402, 46 S. Ct. 324, 325, when he said that "The policy of the statute as to foreign inventions obviously stands on its own footing and cannot be applied to domestic affairs." It is not evident as an original proposition why, although an earlier application, viewed as anticipation, must appear in a printed publication, it need not so appear, viewed as evidence that the patentee is not the first inventor, but may be proved by an "unpublished" application for a patent upon it. We had attempted to distinguish the two situations by saying that the "invention" lay in the claims, and that the earlier applicant was not "an original and first inventor or discoverer," unless he had claimed what the patentee claimed. This the Supreme Court rejected, treating the application as an invention of all claims that could be drawn upon the disclosure. Section 72, Title 35, U.S.C.A. provides that use or knowledge of the invention in a foreign country shall not invalidate a patent; and obviously the invention is "known" to the applicant. Thus the question appears to come down to whether "known" in § 72 is to be interpreted as including the foreign applicant and such officials as receive the application; or whether it only means "known" to outsiders.

It is not necessary to decide the point and we leave it open, because we remain of opinion that any new elements Van der Horst may have disclosed were not enough to support a patent in the face of what was concededly old in the art, and of the short period between his earliest date and May, 1939, when Stokes's patent was accepted, and June, 1939, when Granger and Cleveland appeared.

Petition denied.