Effect: Such an amendment would throw upon the examiner of interferences authority to determine in the first instance which if any of the parties is entitled to a patent. This of course would enable any of the contestants to raise the question of the patentability of the issue, public use or sale, and other bars to the grant of a patent.

At first sight, this would seem to be revolutionary, and the general objection to such change is that it would greatly add to the burdens now placed upon the parties in interference proceedings. This, however, is by no means so serious as it at first appears. Under the practice as it now stands, theoretically we try out the question of priority of invention only, but the patentability of the issue, the right of the parties to make the claims, and public use and sale are tried as collateral matters. In fact, the question of the right of a party to make the claim, or at least some phases of this question, may be tried both by dissolution and as a priority question. When it is remembered that the interference proper may under the present practice be suspended, and is, in fact, very often suspended, to try out the question of the patentability of the issue, or of the right of one of the parties to make the claim, in a collateral proceeding, which has in fact nothing at all to do with the question of priority, it will be apparent that the proposed change is not so revolutionary as at first appears. And when it is remembered that the interference may be, and sometimes is, suspended to try out in a collateral way the question of the public use and sale against one and sometimes both of the parties, it is obvious that it would not add greatly, if at all, to the burdens of the proceedings to let these questions be tried out as a part of the main proceeding.

Thus we now suspend the main proceeding to entertain a motion to dissolve, which is heard by another official, with the right to appeal to the examiners-in-chief, and to the Commissioner in person. If it be held that the issue is patentable and that the parties can make the claims, the interference continues. But the question of right to make the claims, although urged as a basis for dissolution, can be and is constantly raised at final hearing, so that the motion to dissolve, so far as this question is concerned, is not in any sense conclusive.

It is true the examiner of interferences is not usually permitted to take up this question, except in the light of additional evidence; but nevertheless it does arise in one way or another more or less frequently.

Sec. 4915, R. S.: Of course, the mere change of Sec. 4904, R. S. in the manner proposed would not prevent retrying the questions of the patentability of the issue, public use and sale, etc., under Section 4915. Therefore it would seem advisable also to modify this section so as to restrict the cases which may be prosecuted thereunder to ex parte applications.

Priority: As illustrating the fact that the changes proposed would not be so fundamental as at first appears, it may be well to consider what matters may be tried out under the term "priority of invention." Fundamentally this of course means which of two parties first made the invention, but practically it means many other things; for instance, we may determine:

1. Priority of invention in its true sense; that is, which of the parties to the proceeding first produced the invention.

2. Originality; that is, which of two or more parties in fact produced the invention. This is not in its strict sense a priority question at all. And the examiner is permitted to determine only which of the parties was first in possession of the invention. It may be that either or both derived the invention from some third party, but this question can not be considered. (Foster v. Antisdel, 88 O. G., 1527; 14 App. D. C., 552; Prindle v. Brown, 112 O. G., 957; 24 App. D. C., 114.)

3. The right of one of the parties to make the claims. Under this heading we may determine numerous questions, such

as:

(a) The sufficiency of the disclosure of the application to support the issue.

(Podlesak and Podlesak v. McInnerney, 120 O. G., 2127; 26 App. D. C., 399.)

(b) The operativeness of the structure disclosed in the applications.

(Cosper v. Gold, 168 O. G., 787; 36 App. D. C., 302.)

(c) New matter in the application.

(d) In a reissue application the identity of the invention in the reissue with that claimed in the original.

(Nelson v. Felsing and Felsing v. Nelson, 142 O. G., 289; 32 App. D. C., 420.)

(e) The validity of the oath accompanying the application. (Dalton and Magnus v. Wilson, 224 O. G., 741; 44 App. D. C., 249.)

(f) Whether alterations have been made in the application after the same was sworn to.

4.

(Lindstrom v. Ames, 168 O. G., 250; 37 App. D. C., 365.)

Estoppel: Under this heading the parties may raise: (a) Res Adjudicata.

(b) Delay in making the claims.

(Rowntree v. Sloan, 227 O. G., 744; 45 App. D. C., 207.)

(c) Concealment after reduction to practice.

(Mason v. Hepburn, 84 O. G., 147; 13 App. D. C., 86.)

(d) Election to use the invention secretly instead of applying for a patent.

5.

6.

7.

(Macbeth-Evans Glass Co. v. General Electric Co., 6th Circuit, decided Nov. 6, 1917, 246 F. R., 695; 248 O. G., 501.)

Disclaimer of the invention (Rule 107).

Abandonment of the invention (Rule 125).

Concession of priority to the other party (Rule 125).

8. Joint Inventorship. (Lemp v. Randall and Bates, 146 O. G., 255; 33 App. D. C., 430.)

When we consider the number and variety of questions. which may be and are continually raised under the term "priority" of invention; and then remember that nonpatentability is considered by motion to dissolve, with a line of appeals provided; and that public use may likewise be considered under certain circumstances; and, further, that any of these various matters may be raised de novo by bill under Sec. 4915, R. S., it is apparent that it would not be so long a step after all simply to amend the statute so as to give the examiner of interferences the power to decide all of these questions once for all, with a proper appeal to some superior tribunal.

It may be urged that one man could not supervise the work. This is not material; for if one can not, two or more should be provided. In fact, as the situation now is two law examiners are constantly engaged on preliminary interference matters in addition to the examiner of interferences himself. The question of force should not control. It is a simpler and more direct practice that is needed, and this the proposed change would provide.

Enlarged Authority: The constant shifting of the case, and the number of appeals allowed, are unnecessarily wasteful of the time of the officials of the Office. In a

suit brought for the infringement of a patent, only one appeal is allowed; why should there be more in an interference case? While the changes suggested above would greatly simplify the procedure, the practice would still not be the best that is possible. An even better way would be for the examiner of interferences to have the powers of an assistant commissioner; that is, for the Commissioner himself to take direct charge of these cases, and conduct them with the aid of one or more assistants. He could then decide all questions involved, both direct and collateral, with an appeal on the whole case to the Court of Appeals of the District of Columbia. This would require the appointment of one or more additional assistant commissioners. But this again is largely only a question of salaries. As it is now, fully one-third, and perhaps more, of the time of the Commissioner and his assistants is devoted to interference cases. This work would then be applied directly, rather than by review. All decisions on preliminary and interlocutory matters would be final and conclusive, and the large number of appeals, with the necessary suspensions, would be avoided. In other words, the examiner, Commissioner, or whatever his designation, would be able to decide the questions presented once for all without continual review.

Preliminary Work: The preliminary work now done by one of the law examiners is well worth the time put upon it. But this work could be extended to great advantage. The patentability of the issue and the right of the parties to make the claims should both be very carefully investigated before the interference is declared. Work put upon the cases at this point, would save much time, labor, and expense later.

NOTICE TO SUBSCRIBERS.

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REPORT OF THE ALIEN PROPERTY CUSTODIAN.

Note: The following matter extracted from the recently issued report of the Alien Property Custodian, Senate Document #435, and relating to his handling of foreign owned patents and alien controlled corporations owning patent rights, it is thought will prove of interest.

The character of the business administered is matters relating to patents, also trademarks, prints, labels, and copyrights, all of which are to be understood as included under the general term "patents" wherever that term is employed herein.

No issue has been raised in instances where American users of patents are operating under contracts with or from enemy owners of United States patents as to whether such contracts are valid or were suspended or absolutely terminated or lapsed after war was declared by the United States. The policy has been to demand all royalties accumulated and accruing from time to time until license was obtained by such users from the War Trade Board or the Federal Trade Commission. As to the best measure of the value of the use of the patent there has been taken the arrangements made before the war and when conditions were normal between the user and the owner as to royalties or consideration.

Reports monthly, quarterly, semiannually, or annually, depending upon the nature of the case and the convenience of the user of the patent and of this division, have been required on special form in the nature of a questionnaire eliciting the source of the royalty, method of its measurement, selling price of the commodity, its general character, and cost of production. This is subscribed under oath and is comprehensive in character and embraces questions bringing out full information in the manner desired by the division.

Prior to the revocation by the President, on April 11, 1918, of the power enabling persons in this country to communicate with enemies, as provided for in the act regarding patents, no money belonging to enemy representatives or correspondents of American attorneys in patent matters was demanded. Since such revocation, however, such money has been demanded.