13. Not a proper subject for a request and is not answered.
14 and 15. Affirmed.
16, 17 and 18. These requests state the facts correctly, and will be affirmed, but I am of the opinion that they are immaterial.
19 and 20. Affirmed.
21. Not answered. Matters of record need not be included in requests for findings.
23 and 24. Affirmed, but immaterial in view of the conclusions reached in the opinion.
25, 26 and 27. Affirmed.
28. Affirmed but modified by the finding that they were never sold after the execution of Exhibit 1 and consequently never sold 'by virtue of' Exhibit 1.
29 and 30. Affirmed.
31. Not answered as immaterial. This patent was specifically mentioned in Exhibit 2 and consequently it is immaterial whether or not it was an improvement.
32 and 33. Affirmed.
34 and 35. Affirmed, but immaterial.
36 to 40, inclusive. Immaterial and not answered.
41 and 42. Affirmed.
Conclusions of Law:
2. Modified to read as follows, and, as so modified, affirmed: 'Under the agreement Exhibit 1 Charles H. Haeseler granted no rights to the petitioner with respect to U.S. patent No. 1,372,348. The omission of any reference to the application for this patent from the first Whereas clause of the agreement, though the application was then on file, excludes it from the license granted to the petitioner by Paragraph 2 of the agreement under 'the aforesaid Letters Patent and applications.' This patent is not comprehended within Paragraph 10 of the agreement concerning improvements, because Paragraph 10 refers only to patents applied for and obtained subsequent to the execution of the agreement, whereas patent No. 1,372,348 was applied for more than two years prior thereto.'
3 to 9. Inclusive. Affirmed.
10 to 15, inclusive. Denied.
Findings of Fact:
1 to 15, inclusive. Affirmed.
16 to 17. Immaterial and not answered.
18 and 19. Affirmed.
20. Immaterial and not answered.
21 and 22. Denied.
23 to 31, inclusive. Affirmed.
32. Affirmed, with the modification that this was merely an intracompany transaction.
33. Affirmed. However, no price was proved nor was there any evidence that the transaction culminated in a completed sale.
34. Affirmed. However, far from indicating a completed sale there is no showing that there was ever an offer, the first requirement of a contract.
35 to 37, inclusive. Not answered as immaterial.
38 to 41, inclusive. Affirmed.
42. Not answered as immaterial.
45. Affirmed but immaterial because of the finding that this patent was intentionally excluded from Exhibit 2.
46. Affirmed when modified to read as follows: 'Charles H. Haeseler applied for and obtained Letters Patent No. 1,481,865 granted Jan. 29, 1924.' The balance of the request is immaterial in view of the fact that, as pointed out in the opinion, '865 was specifically licensed under Exhibit 2 by reference to its application mumber.
47 to 51, inclusive. Denied.
52. Not answered as immaterial.
54. Not answered as immaterial.
56. Affirmed but this is no indication that '780 was considered by the Tool Company to be an improvement on rock drills. It was concededly an improvement on the riveting hammer.
57. Affirmed, when the last clause is modified to read as follows: ' * * * under the provisions of the Belgian Law of May 24, 1853.' The Act of October 11, 1919 is inapplicable.
59. Affirmed, when modified to read as follows: 'The International Convention for the Protection of Industrial Property signed at the Hague in 1925, and proclaimed by the President of the United States in 1931, provides 'Nationals of each of of the contracting countries shall in all other countries of the Union, as regards the protection of industrial property, enjoy the advantages that their respective laws now grant, or may hereafter grant, to their own nationals, without any prejudice of the rights specially provided by the present convention."
Note: It is difficult to see the materiality of this Convention and its recognition by the United States Government. The condition of Sec. 14 of the Belgian Law of October 11, 1919 requires a royal decree published in the Moniteur Belge recognizing reciprocity. No such decree has been brought to the attention of the Court. The decree of 1921 relates particularly to the 'law adopted by the Congress of the United States of America on March 3, 1921.' the Nolan Act, 35 U.S.C.A. § 80-87, and obviously has nothing to do with the Convention of 1925. It would appear from the opinion of the Brussels Tribunal, Dec. 15, 1931, in the United States Hoffman Machinery Corporation case, that, up to that date, no decree satisfying the condition of Article 14 had been published in the Moniteur Belge.
61. Affirmed when modified to read as follows: 'Reciprocity in connection with the rights granted by the Nolan Act was previously established between the Law of Belgium and the Law of the United States by the Nolan Act of 1921 and a decree recognizing reciprocity published in the Moniteur of 1921.'
Note: See note to 62 below.
Note: The notice published by the Commissioner of Patents on Oct. 20, 1921 executed the condition of the decree in the Moniteur mentioned in request 61: 'This application is subject to the condition that Belgian subjects shall be granted the advantages of the law adopted by the Congress of the United States of America on March 3rd 1921, on the same matter.' The most important right in connection with which reciprocity was established by the Belgian decree and the Commissioner's notice of 1921 would seem to be in connection with extension of priority rights as established by Sec. 1 of the Nolan Act and Article 8 (and perhaps 10) of the Belgian Law of Oct. 11, 1919. It appears to me that the reciprocity contemplated by these laws as a condition of their applicability to citizens of foreign countries is not a general reciprocity, but rather the extension by the foreign country to citizens of the United States of particular rights substantially equivalent to the rights granted by the particular law. Thus the condition of the Nolan Act in this connection has been construed to mean that the privileges extended by the foreign country must be 'substantially reciprocal to the privileges granted by the Nolan Act.' Owen v. Heimann, 56 App.D.C. 232, 12 F.2d 173, 174. I know of no grant by the United States to its own citizens or any others of an extension of the duration of patents such as is the subject matter of Article 13 of the Belgian Law of October 11, 1919.
65. Immaterial and not answered.
66. Affirmed when modified to read as follows: 'The term of the contract from January 27, 1919 as supplemented by the agreement of January 27, 1921, expired January 29, 1941, and there is due to the respondent a minimum royalty of $ 10,000 for each and every year of the term of said contract as supplemented from May 1, 1936 to that date, with interest on each monthly installment of $ 833.34 from the date such installment became due.'
Conclusions of Law:
2. Not answered.
5 to 8, inclusive. Denied.
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