§ 283. Mr. Justice Story has held that the statutes which authorize the reissue of a patent because of a defective or reof itself to assume to decide many matters of fact as to the specification and the combination of machinery in both patents, without any adequate means of knowledge or of guarding itself from gross error. For the purpose of the injunction, if for nothing else, I must take the invention to be the same in both patents, after the Commissioner of Patents has so decided, by granting the new patent."

In Allen v. Blunt, 3 Story's R. 742, 743, which was an action at law, the same Judge observed: "The thirteenth section of the Patent Act of 1836, ch. 357, enacts, that whenever any patent shall be inoperative or invalid, by reason of a defective or insufficient description or specification, or by reason of the patentee claiming in his specification, as his own invention, more than he had, or shall have a right to claim as new, if the error has or shall have arisen by inadvertency, accident, or mistake, and without any fraudulent or deceptive intention, it shall be lawful for the commissioner, upon the surrender to him of such patent, and the payment of the further duty of fifteen dollars, to cause a new patent to be issued for the same invention for the residue of the term then unexpired, for which the original patent was granted, in accordance with the patentee's corrected description and specification. Now, the specification may be defective or insufficient, either by a mistake of law, as to what is required to be stated therein in respect to the claim of the inventor, or by a mistake of fact, in omitting things which are indispensable to the completeness and exactness of the description of the invention, or of the mode of constructing, or making, or using the same. Whether the invention claimed in the original patent, and that claimed in the new amended patent, is substantially the same, is and must be in many cases a matter of great nicety and difficulty to decide. It may involve consideration of fact as well as of law. Who is to decide the question? The true answer is, the Commissioner of Patents; for the law intrusts him with the authority, not only to accept the surrender, but to grant the new amended patent. He is bound, therefore, by the very nature of his duties to inquire into and ascertain whether the specification is sufficient or insufficient, in point of law or fact, and whether the inventor has claimed more than he has invented, and in such case, whether the error has arisen from inadvertency, accident, or mistake, or with a fraudulent or deceptive intention. No one can well doubt, that in the first instance, therefore, he is bound to decide the whole law and facts arising under the application for the new patent. Primâ facie, therefore, it must be presumed that the new amended patent has been properly and rightfully granted by him. I very much doubt whether his decision is or can be re-examinable in any other place, or in any other tribunal, at least, unless his decision is impeached on account of gross fraud or connivance between him and the patentee; or unless his excess of authority is manifest upon the very face of the papers; as, for example, if the original patent were for a chemical combination, and the new amended patent were for a machine. In other cases, it seems to me, that the law, having entrusted him with authority to ascertain the facts, and to grant the patent, his decision, bonâ fide made, is conclusive. It is like many other cases, where the law has referred the decision of a matter to the sound discretion of a public officer, whose adjudication becomes conclusive. Suppose the Secretary of the Treasury should remit a penalty or forfeiture incurred

dundant specification, without fraud or for the purpose of adding thereto an improvement, do not require the patentee to claim in his renewed patent all things which were claimed in his original patent, but give him the privilege of retaining whatever he deems proper.1

by a breach of the laws of the United States, would his decision be re-examinable in any court of law upon a suit for the penalty or forfeiture? The President of the United States is by law invested with authority to call forth the militia to suppress insurrections, to repel invasions, and to execute the laws of the Union; and it has been held by the Supreme Court of the United States, that his decision as to the occurrence of the exigency is conclusive. Martin v. Mott, 12 Wheat. R. 19. In short, it may be laid down as a general rule, that, where a particular authority is confided to a public officer, to be exercised by him in his discretion upon the examination of facts, of which he is made the appropriate judge, his decision upon these facts is, in the absence of any controlling provisions, absolutely conclusive as to the existence of those facts. My opinion, therefore, is, that the grant of the present amended patent by the Commissioner of Patents is conclusive as to the existence of all the facts, which were by law necessary to entitle him to issue it; at least, unless it was apparent on the very face of the patent itself, without any auxiliary evidence, that he was guilty of a clear excess of authority, or that the patent was procured by a fraud between him and the patentee, which is not pretended in the present case."

Potter et al. v. Holland. "The power and duty of granting a new patent for the original invention, when a lawful surrender of the old patent has been made, are by law expressly confided to the commissioner. The decision made by him in this case is that the reissued patents are for the same invention originally discovered and intended by the patentee to be secured by the original patent. That decision the law has confided to his judgment. The court must take that decision as a lawful exercise of his authority. It is not re-examinable here, unless it is apparent upon the face of the patent that the commissioner has exceeded his authority, or unless there is a clear repugnancy between the old and the new patents, or unless the new one has been obtained by collusion between the commissioner and the patentee. Woodworth v. Stone, 3 Story, 749. It is not apparent upon the face of either of the reissued patents that the commissioner, in granting the same, has exceeded his authority; neither does there appear to be any clear repugnancy between the old and the new patents; nor is there any satisfactory evidence to show that either of the new patents was obtained by collusion between the commissioner and patentee. The exception, therefore, taken by the defendant, that the invention secured by the reissued patents was not the invention of the patentee when the original patent was granted, and was not intended by him to be secured by that patent, must fail." MS.

1 Carver v. The Braintree Manuf. Co. 2 Story, 438. "The next objection is, that the patentee has omitted some things in his renewed patent which he claimed in his original patent as a part of his invention, viz., the knob, the ridge, and the flaring of the lateral surface of the rib above the saw, and that he claims in his renewed patent the combination of the thickness and the slope of the front

§ 284. When a patent is thus reissued, it is granted for the unexpired term, commencing from the date of the original patent, and back surfaces of the rib. Now by § 13 of act 1836, ch. 357, it is provided, that whenever any patent which is granted 'shall be inoperative or invalid by reason of a defective or insufficient description or specification, or by reason of the patentee claiming in his specification, as his own invention, more than he had or shall have a right to claim as new, if the error shall have arisen by inadvertency, mistake, or accident, and without any fraudulent or deceptive intention, it shall be lawful for the commissioner, upon the surrender to him of such patent, and the payment of the further sum of fifteen dollars, to cause a new patent to be issued to the inventor for the same invention for the residue of the period then unexpired for which the original patent was granted, in accordance with the patentee's corrected description and specification.' And it is afterwards. added, that,' whenever the original patentee shall be desirous of adding the description of any new improvement of the original invention or discovery which shall have been invented or discovered by him subsequent to the date of his patent, he may, like proceedings being had in all respects as in the case of original applications, and on the payment of fifteen dollars, as herein before provided, have the same annexed to the original description and specification.' Abrogated by act 1861, ch. 88, § 9. The act of 1837, ch. 45, § 8, further provides, 'that whenever any application shall be made to the commissioner for any addition of a newly discovered improvement to be made to an existing patent, or whenever a patent shall be returned for correction and reissue, the specification annexed to every such patent shall be subject to revision and restriction in the same manner as original applications for patents; the commissioner shall not add any such improvements to the patent in the one case, nor grant the reissue in the other case, until the applicant shall have entered a disclaimer, or altered his specification of claim, in accordance with the decision of the commissioner. Act 1836, ch. 357, § 15.

"Now I see nothing in these provisions which, upon a reissue of a patent, requires the patentee to claim all things in the renewed patent which were claimed as his original invention or part of his invention in his original patent. On the contrary, if his original patent claimed too much, or if the commissioner deemed it right to restrict the specification, and the patentee acquiesced therein, it seems to me that in each case the renewed patent, if it claimed less than the original, would be equally valid. A specification may be invalid and unmaintainable under the Patent Act, as well by an excess of claim as by a defect in the mode of stating it. How can the court, in this case, judicially know whether the patentee left out the knob and ridge and flaring of the lateral surface of the rib, in the renewed patent, because he thought they might have a tendency to mislead the public by introducing what, upon further reflection, he deemed immaterial or unessential, and that the patent would thus contain more than was necessary to produce the described effect, and be open to an objection which might be fatal to his right, if it was done to deceive the public. Act 1836, ch. 357, § 15. Or, how can the court judicially know that the commissioner did not positively require this very omission? It is certain that he might have given it his sanction. But I incline very strongly to hold a much broader opinion; and that is, that an in

which is surrendered. Consequently, it operates from the commencement of the original, and will enure to the benefit of assignees who became such before the reissue, although no assignment is made to them after the reissue.1

ventor is always at liberty in a renewed patent to omit a part of his original invention, if he deems it expedient, and to retain that part only of his original invention which he deems fit to retain. No harm is done to the public by giving up a part of what he has actually invented, for the public may then use it; and there is nothing in the policy or terms of the Patent Act which prohibits such a restriction.

"The other part of the objection seems to me equally untenable. If the description of the combination of the thickness and the slope of the front and back surfaces of the rib were a part of the plaintiff's original invention (as the objection itself supposes), and were not fully stated in the original specification, that is exactly such a defect as the Patent Acts allow to be remedied. A specification may be defective, not only in omitting to give a full description of the mode of constructing a machine, but also in omitting to describe fully in the claim the nature and extent and character of the invention itself. Indeed, this latter is the common defect, for which most renewed patents are granted."

1 Woodworth v. Stone, 3 Story, 749; Woodworth v. Hall, 1 Woodb. & Minot, 248. Both of these cases related to the same patent. In the first, Mr. Justice Story said: "If the present case had stood merely upon the original bill, it appears to me clear, that the motion to dissolve the injunction granted upon that bill, ought to prevail, because, by the surrender of the patent, upon which that bill is founded, the right to maintain the same would be entirely gone. I agree that it is not in the power of the patentee, by a surrender of his patent, to affect the rights of third persons, to whom he has previously, by assignment, passed his interest in the whole or a part of the patent, without the consent of such assignees. But here the supplemental bill admits that the assignees, who are parties to the original and supplemental bill, have consented to such a surrender. They have, therefore, adopted it; and it became theirs in the same manner as if it had been their personal act, and done by their authority.

"The question, then, is precisely the same as if the suit were now solely in behalf of the patentee. In order to understand with clearness and accuracy some of the objections to the continuance of the injunction, it may be necessary to state, that the original patent to William Woodworth (the inventor), who is since deceased, was granted on the 27th of December, 1828. Subsequently, under the eighteenth section of the act of 1836, ch. 357, the Commissioner of Patents, on the 16th of November, 1842, recorded the patent in favor of William W. Woodworth, the administrator of William Woodworth (the inventor), for seven years, from the 27th of December, 1842. Congress, by an act passed at the last session (act of 26th of February, ch. 27), extended the time of the patent for seven years, from and after the 27th of December, 1849 (to which time the renewed patent extended); and the Commissioner of Patents was directed to make a certificate of such extension in the name of the administrator of William Woodworth (the inventor), and to append an authenticated copy thereof to the original letters-patent, when

When a patentee is about to apply for a renewal of his patent, and agrees with another person that, in case of success, he will ever the same shall be requested by the said administrator or his assigns. The Commissioner of Patents, accordingly, on the 3d of March, 1845, at the request of the administrator, made such certificate on the original patent. On the 8th day of July, 1845, the administrator surrendered the renewed patent granted to him, 'on account of a defect in the specification.' The surrender was accepted, and a new patent was granted on the same day to the administrator, reciting the preceding facts, and that the surrender was on account of a defective specification,' and declaring that the new patent was extended for fourteen years, from the 27th December, 1828, in trust for the heirs at law of the said W. Woodworth (the inventor), their heirs, administrators, or assigns.'

“Now, one of the objections taken to the new patent is, that it is for the term of fourteen years, and not for the term of seven years, or for two successive terms of seven years. But it appears to me that this objection is not well founded, and stands inter Apices juris; for the new patent should be granted for the whole term of fourteen years, from the 27th of December, and the legal effect is the same as it would be if the patent was specifically renewed for two successive terms of seven years. The new patent is granted for the unexpired term only, from the date of the grant, viz., for the unexpired period existing on the 8th of July, 1845, by reference to the original grant in December, 1828. It is also suggested, that the patent ought not to have been in trust for the heirs at law of the said W. Woodworth, their heirs, administrators, or assigns. But this is, at most, a mere verbal error, if indeed it has any validity whatsoever; for the new patent will, by operation of law, enure to the sole benefit of the parties in whose favor the law designed it should operate, and not otherwise. It seems to me that the case is directly within the purview of the tenth and thirteenth sections of the act of 1836, ch. 357, taking into consideration their true intent and objects.

"Another objection urged against the continuation of the injunction is, that the breach of the patent assigned in the original bill can have no application to the new patent, and there is no ground to suggest, that, since the injunction was granted, there has been any new breach of the old patent, or any breach of the new patent. But it is by no means necessary that any such new breach should exist. The case is not like that of an action at law for the breach of a patent, to support which it is indispensable to establish a breach before the suit was brought. But in a suit in equity the doctrine is far otherwise. A bill will lie for an injunction, if the patent right is admitted, or has been established upon well-grounded proof of an apprehended intention of the defendant to violate the patent right. A bill, quia timet, is an ordinary remedial process in equity. Now, the injunction already granted (supposing both patents to be for the same invention) is primâ facie evidence of an intended violation, if not of an actual violation."

In the last case, Mr. Justice Woodbury said: "The original patent for fourteen years, given in December, 1828, expired in 1842, and though it was extended by the board for seven years more, which would last till 1849, and by Congress for seven more, which would not expire till 1856, yet all of these patents were surrendered July 8th, 1845, and a new one taken out for the whole twenty-eight years from December, 1828. This was done, also, with some small amendments