In the matter of the application of Seth C. Ellis for the extension of letters-patent for a Machine For Cutting Tenons On Blind-slats, granted to him February 3,1857.
Upon the order of the Acting Commissioner, as provided in section 10 of the patent law, this case was heard by the examiners-in-chief, who reported upon the application as follows:
"No question is made as to the utility and novelty of the invention. The papers filed at first by the applicant contained no statement of its ascertained value, and this defect was properly objected to by the principal examiner. He has since put in a supplementary affidavit in which he makes an estimate of the value of the invention upon grounds which seem to be just. From this the annual value may be fairly set down at $2,250 per year. The affidavits of several well-informed witnesses fully sustain this estimate. The applicant acknowledges having received $9,875 60 on account of the invention, and charges against this $8,763 for time and expenses attendant upon elaborating and patenting it, and introducing it into use. The balance, $1,112 60, it must be conceded, falls short of being an adequate remuneration for what he has done, if these are all the circumstances to be considered.
"A strenuous opposition was made to the extension by R. Ball & Co., who are large manufacturers of numerous machines for working in wood. In order to determine how much weight is due to their objections, it is advisable to give a brief sketch of the applicant's proceedings under his patent.
"He found himself too poor, when he had obtained it, to undertake the manufacture of his machines to any extent. As means of bringing them before the public, he gave R. Ball & Co. a license to make twelve of them for $15 royalty on each. They not only made the twelve, but quite a number more from time to time---how many cannot be ascertained. Whether they were authorized to make more than the first twelve is a disputed point. The applicant was sorely pressed for want of means, and under the circumstances ultimately settled with them for a sum which the evidence shows was less than was justly due him, and upon a statement of accounts presented by them which did not give credit for all the machines they had made. He also endeavored to sell them his interest in the patent, but they declined to purchase and insisted that they were entitled to manufacture. He then sold it for $3,500 to J. A. Fay & Co., who subsequently brought a suit against R. Ball & Co., and compelled them to account for all the machines they made after the assignment. They set up in defense their license, or authority, from the patentee; but it was held that, if there was one of the character claimed, it should have been recorded; and not having been, it could not prevail against J. A. Fay & Co.
"The remonstrants object to the extension of the patent upon the ground that the machine was of no value as described in it. This is founded upon the want of any sufficient provision for regulating the position of the saws, or feeders, so as to vary the diameters of the tenons and to compensate for the wear of the cutters, or saws. They assert that they themselves introduced such improvements in the machine as overcame this difficulty and rendered it practicable; and that the estimate of its value is predicated entirely upon the improved apparatus. There is no evidence of their having originated the alterations in question, and they do not appear to have made any claim to them during their controversy with J. A..Fay & Co. It is more probable from the evidence that they were such merely mechanical improvements as experience would suggest, and that they were due to the applicant alone. We see no force in the objection.
"It is also urged that the applicant owes his want of success to his improvident sale of his patent; that had he adhered to his arrangement with R. Ball & Co., the royalties he would have received from them would have furnished him an abundant compensation, since they had been enabled at length to introduce the machine into such extensive use, that a fair demand for them had been created. It is plain, however, that they took such advantage of his embarrassed circumstances, and his inability to enforce his rights, that he had no reason to expect from them the support he needed. He was fairly driven to the step he took in order to supply his wants. The price he obtained forms no criterion, therefore, of the value of his invention; neither can he be fairly charged with having failed, through his own fault, of reaping a just remuneration for his invention.
"Some criticisms have been made upon the account, the charges in which are not specific and in detail, as they should be. The testimony of the applicant is that they are materially less than the truth would justify; that of the witnesses corroborates him. He has charged for his time apparently $2,900. Strike out this sum from the debit side and add it to the balance allowed by him as stated above, $1,112 60, and he has then received only $4,012 60 above his expenses. These will bear a large reduction and still leave the applicant without the reward he has fairly earned. Indeed all his receipts, without any deduction, do not pay for the time, ingenuity, and labor he has given to the work of elaborating the invention and introducing it to the world.
"We recommend the extension of the patent."
DECISION. Duncan, Acting Commissioner:
Upon the favorable recommendation of the examiners-in-chief, by whom this case has been heard, the same having been referred to them under the provision of section 10 of the patent law, the extension asked for will be granted.