other works in which he has been anticipated; or with other sufficient information." He may examine (or cause to be examined) the references in the office; or, if he prefers, he will be furnished at a distance with copies or extracts, on payment of the legal fee. "If he is not satisfied upon an examination of the references, he may, upon submitting his views, in answer to them, have a reexamination. He may also, if he desires, have an interview with the Examiner, for the purpose of farther explanation.

5. "After a second rejection, the case is not entitled to any farther examination," and will not receive one, unless "under peculiar circumstances." When it has twice been deliberately pronounced upon, these circumstances must be strong to warrant additional consideration of a claim; and then the Commissioner gives to it his attention in perThe decision of one Commissioner is rarely reversed by his successor in office.

son.

6. "If the applicant esteems the claim, as modified by the decision of the Commissioner, so valuable as to warrant his taking out a patent, he must amend his specification and claim pursuant to the instructions given to him." [Rules of the Patent Office.

7. The law provides what other action shall be taken. "On the filing of any such application, description, and specification, [or petition, drawings, or model,] and the payment of the duty hereinafter provided, the Commissioner shall

make, or cause to be made, an examination of the alleged new invention or discovery; and if, on any such examination, it shall not appear to the Commissioner that the same had been invented or discovered by any other person in this country, prior to the alleged invention or discovery thereof by the applicant, or that it had been patented or described in any printed publication in this or any foreign country, or had been in public use or on sale, with the applicant's consent or allowance, prior to the application, if the Commissioner shall deem it to be sufficiently useful and important, it shall be his duty to issue a patent therefor. But whenever, on such examination, it shall appear to the Commissioner that the applicant was not the original and first inventor or discoverer thereof, or that any part of that which is claimed as new had before been invented, or discovered, or patented, or described in any printed publication in this or any foreign country, as aforesaid, or that the description is defective and insufficient, he shall notify the applicant thereof, giving him briefly such information and references as may be useful in judging of the propriety of renewing his application, or of altering his specification to embrace only that part of the invention or discovery which is new. In every such case, if the applicant shall elect to withdraw his application, relinquishing his claim to the model, he shall be entitled to receive back twenty dollars, [see "Withdrawals," marked XV., page 79, and "Form of Withdrawals,”

marked XVI., page 80,] part of the duty required by this act, on filing a notice in writing of such election in the Patent Office, a copy of which, certified by the Commissioner, shall be a sufficient warrant to the Treasurer for paying back to the said applicant the said sum of twenty dollars. But if the applicant in such case shall persist in his claims for a patent, with or without any alteration of his specification, he shall be required to make oath or affirmation anew, in manner as aforesaid; and if the specification and claim shall not have been so modified as, in the opinion of the Commissioner, shall entitle the applicant to a patent, he [the applicant] may "appeal to the Chief Justice of the District Court of the United States for the District of Columbia, by giving notice thereof [in writing] to the Commissioner, and filing in the Patent Office, within such time as the Commissioner shall appoint, his reasons of appeal, and specifically set forth in writing, and also paying into the Patent Office, to the credit of the Patent Fund, the sum of twenty-five dollars. And it shall be the duty of said Chief Justice, on petition, to hear and determine all such appeals, and to revise such decisions [of the Commissioner] in a summary way, on the evidence produced before the Commissioner, at such early and convenient time as he may appoint, first notifying the Commissioner of the time and place of hearing, whose duty it shall be to give notice thereof to all parties who appear to be interested therein, in such man

ner as said Judge shall prescribe. The Commissioner shall also lay before the said Judge all the original papers and evidence in the case, together with the grounds of his decision, fully set forth in writing, touching all the points involved by the reasons of appeal, to which the revision shall be confined. And at the request of any party interested, or at the desire of the Judge, the Commissioner and the Examiners in the Patent Office may be examined, under oath, in explanation of the principles of the machine, or other thing for which a patent in such case is prayed for. And it shall be the duty of the said Judge, after a hearing of any such case, to return all the papers to the Commissioner, with a certificate of his proceedings and decision, which shall be entered of record in the Patent Office; and such decision, so certified, shall govern the farther proceedings of the Commissioner in such case; provided, however, That no opinion or decision of the Judge, in any such case, shall preclude any person interested in favour or against the validity of any patent which has been, or may hereafter be, granted, from the right to contest the same in any judicial court, in any action in which its validity may come in question." [Sect. 7, act July, 1836; sect. 11, act March, 1839.] (See "Orders in Appeals," &c., marked XIX., page 88.)

8

XVIII. Remedy in Equity for Patents.

1. "Whenever there shall be two interfering patents, or whenever a patent or application shall have been refused on an adverse decision of" the Commissioner of Patents, "on the ground that the patent applied for would interfere with an unexpired patent previously granted, [or for any cause whatever,] any person interested in any such patent, either by assignment or otherwise in the one case, and any such applicant in the other case, may have remedy by bill in equity [either against the decision of the Commissioner, or that of the Chief Justice of the United States District Court for the District of Columbia;] and the Court having cognizance thereof, on notice to adverse parties, [and when there are no adverse parties, a copy of the bill shall be served on the Commissioner,] and other due proceedings had, may adjudge and declare either [of] the patents void in the whole or in part, or inoperative and invalid in any particular part or portion of the United States, according to the interest which the parties to such suit may possess in the patent, or the inventions patented; and may also adjudge that such applicant is entitled, according to the principles and provisions of this act, to have and receive a patent for his invention, as specified in his claim, or for any part thereof, as the fact of priority of right or invention shall, in any such case, be made to appear. And such adjudication, if it be in favour of the right of such applicant, shall authorize the Com