516
The Green Bag
the owner of the patent or those claiming under him or authorized by him, and also allege and prove that the application for said patent was filed in this country more than three years prior to the filing of such bill in equity, the court shall order the owner of the patent to grant a license to the applicant in such form and upon such terms as to the duration of the license, the amount of royalty, the security for payment thereof, and otherwise as the court, having re gard to the nature of the invention and the circumstances of the case, deems just: Provided, however, That nothing herein contained shall be construed to authorize the court to compel the granting of a license by the original inventor who has not obligated himself or empowered another person to suppress or withhold such invention. From the order of the district court granting or refusing such license, appeal may be taken by the party aggrieved to the circuit of appeals in the same manner and form as in other cases arising under the patent laws: Provided, That the provisions of this section shall not apply to any patent granted prior to the passage of this Act.
The provisions of the above are obvi ously repugnant to and inconsistent with the Constitutional Clause and are clearly inconsistent with the nature of a patent. The provision that the "party ag grieved" may appeal to the Circuit Court of Appeals from the order of the District Court granting or refusing to grant such a license is merely calculated to increase litigation and only further burden the poor inventor or manufac turer with the expense and annoyance of litigation. Section 2, of the Substitute Bill amends section 4899 of the Revised Statutes to read as follows : — Sec. 4899. Every person who purchases of the inventor or discoverer, or with his knowledge and consent, constructs any newly invented or discovered machine or other patentable article prior to the application by the inventor or dis coverer for a patent, or who sells or uses one so constructed, shall have the right to use, and vend to others to be used, the specific thing so made or purchased, without liability therefor. No purchaser, lessee, or licensee of a patented
article sold by the owner of the patent, or by the owner of any interest therein, or by any person having authority to sell the same, shall be liable to an action for infringement of the patent because of any breach of the contract of sale or of any provision thereof. No person who obtains a license of the owner of a patent, or of the owner of any interest therein, to use any art or process, or to make, use, and sell any article protected by such patent, shall be liable to an action for infringe ment of the patent because of a breach of such license or of any provision thereof.
The above provisions still further encourage the prevalent piracy of unpatented inventions, and the second and third paragraphs above quoted prevent the owner of the patent from protecting or enforcing his rights by reasonable conditions and stipulations in the sale or royalty contract. Sections 4 and 5 of the Substitute Bill read as follows : — Sec. 4. That no patent shall be used to re strain unreasonably or to monopolize or to attempt to monopolize any part of the trade or commerce among the several states or with foreign nations, except in such articles as and to the extent that they embody the invention or discovery so patented. No patent shall be used as a part of any combination in restraint of such trade or to monopolize or in any way attempt to monopolize the same. Any patent used in any manner prohibited by this Act may be condemned by like proceedings as are pro vided by law for the forfeiture, seizure, and condemnation of property imported into the United States contrary to law. Sec. 5. That whenever in any civil suit or proceeding brought under or involving the provisions of this Act approved July second, eighteen hundred and ninety, entitled "An Act to protect trade and commerce against unlawful restraints and monopolies," it shall appear that any combination was entered into, existed, or exists, which was or is in restraint of trade, and that any patent has been used to restrain, or in connection with the restraint of, such trade or commerce, such restraint shall be conclusively deemed to have been or to be unreasonable and to be in violation of the provisions of said Act as to any party thereto who, in carrying on any business to which such combination re lates or in connection therewith.
