sent to the surrender. Story, 749. [Woodworth v. Stone, 3 32. The decision of the Commissioner of Patents, in respect to accepting a surrender of an old patent, and granting a new one, is not re-examinable elsewhere, unless it appear on the face of the patent that he has exceeded his authority. [Ibid. 33. Where more is claimed than is invented, a disclaimer must be made in a reasonable time. [Boyd v. M'Alpen, 3 M'Lean, 427. 34. The Commissioner of Patents can lawfully receive a surrender of letters patent for a defective specification, and issue new letters patent upon an amended specification, after the expiration of the term for which the original patent was granted, and pending the existence of an extended term of seven years. Such surrender and renewal may be made at any time during such extended term. [Wilson v. Rosseau, 4 Howard, 646. 35. If it be true that the patent is granted to the inventor in consideration of some benefit to be derived by the public from his disclosures, and that the re-issue is in consideration of some more full or more accurate disclosure than that which he had made in his original specification, or some renunciation on his part of an apparently secured right, it is for the public interest that the surrender and re-issue should be allowed to follow each other just as often as the patentee is content to be more specific or more modest in his claims. [French et al. v. Rogers et al., C. C. Penn'a., Grier and Kane, Jj., November, 1851. 36. It is hardly to be supposed that the merely clerical error of an engrossing subordinate, or the accidental inadvertence of the Commissioner himself, is not capable of being rectified or supplied now, just as it was before the passage of the act of 1836, sect. 13. And yet the construction which regards this section as superseding the implied power of the Commissioner, might lead to this, since the act makes no provision for correcting such mistakes on the part of the patent officers. [Ibid. 37. It must be conceded, that if the Commissioner's power to re-issue is so restricted by the act as to be exhausted by a single exercise, his power to accept the surrender must be equally restricted and equally transitory. And the argument then resolves itself only into another form of the question, whether the patent was, for any purpose, a valid one as it stood after the first re-issue; because, if the second re-issue was invalid, for want of authority to make it, the second, surrender was ineffective, for want of authority to accept it; and so the patent stands as if it had not been surrendered the second time. [Ibid. 38. The surrender and the re-issue, no matter how often they recur, are reciprocal, each in consideration of the other, and forming together but a single act between the parties. It would be unconscientious to retain the consideration, while denying the validity of the grant. [Ibid; Woodworth v. Hall, 1 Wood C. & M., 400. 89. It is not the meaning of the law, that the patentee who applies for a re-issue must, at his peril, describe and claim in his new specification, either in words or idea, just what was described and claimed in his old one. [French et al. v. Rogers et al., C. C. Pa., Grier and Kane, Jj., Nov., 1851. 40. His new specification must be of the same invention, and his claim cannot embrace a different subject-matter from that which he sought to patent originally. [Ibid. 41. But unless we narrow down the correction, which the statute contemplates, till it becomes a mere disclaimer, it is not possible in any case to frame a corrected specification which shall not be broader than the one originally filed. [Ibid. 42. To supply a defect, to repair an insufficiency, is to add, either directly, or by modifying, or striking out a limitation: in either form, the effect is to amplify the proposition: in the case of a specification under the patent laws, it is to amplify the description and enlarge the claim. [Ibid. 43. The court will hold the grant of the amended patent to be conclusive as to the existence of all the facts which by law are necessary to entitle the Commissioner to issue it at least, until it is apparent, on the face of the instrument itself, without any auxiliary evidence, that the Commissioner was guilty of an excess of authority, or that the patent was procured by a fraud between him and the patentee. [Ibid. VII. Extension of Letters Patent. 1. The 18th section of the patent act of 1836, authorizes the extension of a patent on the application of the executor or administrator of a deceased patentee. [Wilson v. Rosseau, 4 Howard, 646. 2. Such an extension does not inure to the benefit of assignees under the original patent, but to the benefit of the administrator (when granted to an administrator) in his capacity as such. [Ibid. 3. But those assignees who were in the use of the machine, as patented, at the time of the renewal have still a right to use it. [Ibid. 4. The extension could be applied for and obtained by the administrator, although the original patentee had, in his lifetime, disposed of all his interest in the then existing patent. Such sale did not carry anything beyond the term of the original patent. [Ibid. 5. A covenant by the patentee, made prior to the law authorizing extensions, that the covenantee should have the benefit of any improvement in the machinery, or alteration or renewal of the patent, did not include the extension, by an administrator, under the act of 1836. It must be construed to include only renewals obtained upon the surrender of a patent, on account of a defective specification. 6. Parties to contracts look to established and general laws, and not to the special acts of Congress. [Ibid. 7. The decision of the Board of Commissioners,* * to whom the question of renewal is referred by the act of 1836, is not conclusive upon the question of their jurisdiction to act in a given case. [Ibid. 8. The provisions of the 18th section of the act of July 4, 1836, relating to extensions, applies as well to patents granted before the passage of that act, as to those which have been granted since. [Wilson v. Turner, C. C. Md., Nov., 1844. 9. The benefits of an extension inure to the assignees of the patentee, as well as to the patentee himself. [Ibid. 10. After the extension of a patent, under the 18th section of the act of July 4, 1836, the original patent becomes virtually a patent for the term of twenty-one years; and then, on surrender and reissue, with an amended specification, the residue of the period unexpired, of the original patent, is the residue of this term. [Gibson v. Harris, C. C. N. J., Nelson, J., Nov., 1846. 11. The patent for twenty-one years is to be regarded as the "original patent," within the meaning of the 13th section of the act of July 4, 1836. [Ibid. 12. If a patent, extended by the Commissioner, Whose powers have been transferred to the Commissioner of Patents, act of 1848, sect. 1. |