9. Representative of a patentee notified or stated in documents according to the first clause of Art. XVII.;

10. Name and address of the agent of a patentee having no domicile in the Empire;

11. In case of restrictions attached to the right of a patent, the fact and the extent of the restrictions;

12. In case of a patent of improvement, the serial number of the original patent, title of the original invention, and consent or non-consent of the original patentee;

13. In case of a supplementary patent, the serial number of the original patent, title of the original invention, and date of registration of the original patent;

14. In case of a patent granted according to Art. XXV. of the Patent Law, the date of registration of the original patent;

15. In case of amendment or division of a patent, the fact;

16. In case of demand for trial concerning a patent, or of conclusion of such trial, the fact and date;

17. In case of lapse of a patent, the fact and date;

18. In case of reissue of a patent, the fact and date;

19. In case of issue of a duplicate of a letters-patent, the fact, date, and name and address of the applicant;

20. In case of issue of a letters-patent under the second clause of Art. LXVII—3, the fact and date;

21. Date of registration.

Art. LXX. If the particulars entered in the Register of Patents undergo change or cease to exist, the fact shall be entered.

Art. LXXI.—When a judgment of nullification has become conclusive or a patent has lapsed, the owner of such letters-patent and that of its duplicate shall return them without delay.

Art. LXXII.-Patent fees shall be paid in revenue stamps.

Art. LXXIII.—When a patentee has paid patent fee, the Director shall give him a receipt.

Art. LXXIV.—If a letters-patent has been lost or damaged, the patentee or his assignee or successor, may explain the circumstances and apply for reissue of the letters-patent.

Art. LXXIV-2. A person who applies for a copy of drawing, shall furnish the Patent Office with a model, specimen, or sketch from which the drawing is to be made, unless such specimen, model, or drawing exist in the Office.

Art. LXXIV-3. A duplicate of a letters-patent and a letters-patent issued according to the second clause of Art. LXVII-3 or according to Art. LXXIV., shall contain the particulars mentioned in sub-headings 1 to 3 and 6, 11, 13, 15, 18, 19, or 20 of Art. LXIX., the kind and term of the patent, the restrictions, if any restrictions are attached to the patent in assigning, and the share in case of joint ownership, if the shares are definitely apportioned, and shall be accompanied by the specification and necessary drawings; in case of a patent of improvement, it shall also contain the number of the original patent and title of the original invention; and in case of a duplicate, the fact that it is such and the serial number.

SUPPLEMENTARY RULES.

This ordinance shall take effect from the first day of the 3rd month of the 38th year of Meiji (March 1, 1905).

Those who desire the return of models or specimens deposited, or any other articles produced as evidences before these Rules take effect, shall notify the Office of their desire within two months of the coming into force of this ordinance, and shall take steps to receive them within a period appointed by the Director or the Presiding Judge.

If any person neglect to make such notice, or to take steps to receive such articles, the Director of the Patent Office will dispose of them at his discretion.

Germany.

Process Patents for Apparatus.

By H. HEIMANN, Patent Attorney.

(Continued from page 1240, and concluded.)

One of the latest commentaries on the Law of Patents, that of Isay, which has found well deserved recognition on account of an abundance of new points of view and suggestions, discusses in a very meritorious manner also the drawing up of claims in the notes referring to paragraph 20 of the Law of Patents, on page 280 and on the following pages:

This author makes the following distinctions:

I. What is to be expressed?

II. How is it to be expressed?

Note 55 says appropriately:

A process must not be defined as an apparatus or product, nor a product or an apparatus as a process.

In notes 63 to 66 the following question is then discussed:

Is an invention patentable as an apparatus or as a process?

The view expressed in these words seems to be doubtful in more than one respect.

In note 63 Isay answers the question whether an invention involves an apparatus or a process, as follows:

The question to be determined is whether in the sum of the new characteristic points the concrete apparatus may or may not be a necessary char- · acteristic point.

If the apparatus is essential in its individuality, that is to say, if the process amounts to no more than the application of this concrete apparatus, then the spatially determined apparatus is included in the idea constituting the subject-matter of the invention; a purely verbal definition is, therefore, not applicable as precisely the idea of novelty can not be determined so as to have but one meaning by means of characteristic points the definition of which is purely temporal. Consequently a process can not be claimed, but only the apparatus. To act in a contrary manner would not only be impractical, but also inadmissible.

These arguments can not be approved of. According to the impression which they produce it should be supposed that a process which is dependent upon a certain apparatus can not be patented, even though it should possess the attributes of novelty and peculiarity in a sufficient degree. The following objections may be made against these arguments:

Numerous cases occur where an invention has for its object to use a certain well-known machine or apparatus in a different manner in order to bring about a

result which must be considered peculiar and important as compared with the results hitherto obtained. The succession of the functions or their connection with each other in the machine may perhaps be changed in such a manner that the ratchet gears, with which the machine is necessarily provided, are adjusted in a different way, or the like.

The machine in question is, therefore, old, however the performance of the new process can not be conceived without this machine; or, at least, no other apparatus is known for obtaining the same result. There can be no doubt that the new mode of operating the machine may be the subject of a process patent and, as the machine has been known, a patent can, of course, only be obtained for a process. However, in case the machine would, likewise, have to be first invented, so that the inventor would be compelled to display more inventive activity, then Isay is of the opinion that, in such a case, only the apparatus or the machine might be made the proper subject of a patent, but not the process, it being impossible to conceive the process as constituting a rule when it is separated from the concrete apparatus. Or, is a distinction to be made with regard to the question whether the concrete apparatus allows but one single specified process to be carried into effect, or also other processes? This would mean that a new and exceedingly thankless task is imposed on the preliminary Examining Division of the Patent Office as the latter would then have to determine whether the apparatus or machine may perhaps be capable of working also in a different, possibly in an entirely impractical, manner. In support of his rule Isay adds also that it is evidenced by the following consideration:

If the patentee would be free to claim in these cases a process, then the paragraph II, supplement 1, of the Law of Patents would be illusory for all apparatus (machines, etc.); applicant would be allowed to neglect, with impunity, their construction in the home country and to import them exclusively from foreign countries on the ground that his patent covers solely the process and that the latter is applied in the home country.

This appears to be a superficial argument which can not be offered as a valid reason for or against the interpretation to be given to the Patent Laws from different points of view. Moreover it is not true that, by means of protecting in such cases the process, the paragraph II, supplement 1, of the Law of Patents is rendered illusory as regards all apparatus, machines, etc.; on the contrary, this argument holds good only in case of those which are distinguished by a new function. that is to say, by a new process of patentable features, and these are, by no means, all, as has been shown heretofore. However the fact that a process patent is much more advantageous for its owner, as regards the rules governing the working of inventions, than a patent for an apparatus, is only a reason why in all those cases where it is practicable efforts should be made to obtain process patents, as it is rendered difficult enough for an inventor to obtain and uphold and frequently also to enforce a patent.

Strictly speaking, Isay, himself, again deserts his strict point of view when he says thereupon:

However if applicant has further considered the invention and if he has found the working process to be independent of the concrete apparatus, then the process will constitute the subject-matter of the invention.

The question to be determined should, therefore, no longer be whether the working operation is actually dependent upon some distinct apparatus, but what conception the inventor has in this respect; whether he is able to eliminate from the process, so to say, all material features. Nor does this subjective view appear to be fully adapted for offering a secure basis for the text of the claims. In this

case the opinion prevails also that a further thorough examination of an invention is required in order to pick out the new working process from the concrete apparatus. However, this is rather the rarer occurrence; an important reason which proves, precisely, that the merit of patentability should be adjudged to the process and not to the apparatus is that, in most cases, the process constitutes the real substance and nucleus of the invention, that the process allows the idea representing an invention to stand out prominently, while the apparatus is subsequently developed in order to carry the process invention into effect. The consideration of the question of the conception applicant has of his invention, whether or not he may have found out the working process to be independent from the concrete apparatus, will only be of secondary importance.

However, if Isay's opinion in this respect were correct, then it is adapted to show, in its true light, how important it is that applicant be advised, for, in reality, it will be, mostly, not the province of an inventor, but that of his attorney, to fully consider an invention in every respect, or, if necessary, to recognize also the working process as being independent from the concrete apparatus and to change the invention of an apparatus into that of a process.

It is worthy of notice, too, that Kohler takes also a similar view to Isay. In a treatise, entitled "Studies on the Law of Industrial Property" contained in the "Zeitschrift für gewerblichen Rechtsschutz" (Journal for the Protection of Industrial Property), 1892, he says on page 128, at the bottom of column 2:

Upon the principle of conception is also based the difference between machine inventions and process inventions. Every machine invention can branch out into a process invention, provided the inventor is able to develop the idea showing his invention so far that he can describe and classify every function of the machine in its ultimate kinematic essence, so that every machine function is traced back to its principles and separated from the special mode of realization. The essence of a machine consists in the combination of elements, or rather of couples of elements, which are directly connected with each other, so that the movement emanating from one element is compelled to pass over a certain course, i. e., to communicate its force in a certain direction, while the detrimental unsuitable portion of its force is covered or moved aside. If the inventor succeeds in determining the essence of these elements in such a manner that in each one the motive force and the antagonistic or resisting force which influences such motive force and frustrates the detrimental portion of the force, is recognized, then the machine becomes thus a process operating with instrumentalities which exert force and resistance, and there results that the inventor has disclosed, by his activity, the wide field where also the same functions of force can be performed in the same succession and co-operation with instrumental means of an essentially different character. This fact causes the invention to be carried beyond the realm of machinery. Every machine with the same functions is now covered by the patent, even though the functions are carried into effect with the aid of force-exerting agents of an entirely different nature; even a manual process intended to perform all the functions by the co-operation of human power, would also be included in the patent. However, notwithstanding all these facts, an abundance of patents for improvements and additions is, of course, always possible.

In his "Handbuch des deutschen Patentrechts" (Manual of the German Patent Law), 1900, Kohler says that a "process" can be claimed when the action of a physical agent, which constitutes the subject-matter of an invention, is produced either exclusively by means of human influence or with the aid of auxiliary

means of a concrete character. On page 118 three reasons are given by him to show why an inventor may apply only for a machine patent:

1. The process is free or some other person has already a right to it, or 2. The inventor of a machine has not comprehended the process as he has not penetrated, mentally, far enough to be able to comprehend the function of the machine in its co-operation, in its kinematic importance, or

3. It is not to his interest to extend his right so as to cover the province of a process and he considers himself sufficiently protected by the machine patent.

The author proceeds then to say:

In order to determine the question whether some process patent may not be indirectly included in the machine patent, so that the machine and the process carried out with the latter's functions are protected, the peculiarities of each case must be considered. It is the duty of the Patent Office to take care that no ambiguity may arise in this respect and to attend, above all, to it that the process is defined verbally and the machine substantively and that such verbal definition of the process and substantive definition of the machine, shall extend clearness; if it should be necessary to cover the process and machine, a double definition must be furnished with double claim.

Experience proves that the Imperial Patent Office is, by no means, upon sure ground as regards this question. The various primary examiners and Examining Divisions do not proceed uniformly, a fact which shows that the mode of treating this question is not based upon principles which are free from all objections. In this connection, too, the opinion is again expressed that process inventions can not be recognized as a distinct apparatus is required for carrying the process into effect. To illustrate this fact, the following examples may be cited:

An invention relating to the linoleum industry had for its object the manufacture of inlaid linoleum with the use of stencils having a reciprocating motion. As has even been admitted by the Patent Office, the essentially new feature consists here in the relations between the movements and the intermissions of movement of the canvas-backing and the stencils. However, the principal claim covered a machine which was characterized by its mode of operation; Examining Division VII declined to consider a motion made to the effect that a process claim be allowed. The following reasons were given by the Division for such action:

The claim characterizes a machine in the most general form by the way it works, and the invention described in the filed papers is, without doubt, a new construction of a machine for manufacturing inlaid linoleum, the novel result of which depends solely upon the special arrangement and function of its constituent parts.

This view must be opposed, for the new result depends, of course, upon the novel arrangement and function of the constituent parts which have been intended and designed to such purpose; however, owing to the different performances, this case involves, nevertheless, a new process which is patentable by itself. In a decision handed down by the Appellate Division it was held that:

In the course of oral proceedings the fact was established that the subject-matter does not constitute a process, but that it has to be characterized as an apparatus, for the action exerted by the air under pressure upon the individual valves and structural parts can not be characterized as constituting a process, but as a function connected with a certain apparatus and, therefore, a claim can only be allowed for an apparatus.