Each of the contests thus instituted was decided in favor of Mr. Sargent, the latter on appeal to your predecessor in person, who, on April 11, 1876, decided that Mr. Sargent was the original inventor of the subject-matter of said interference, and entitled to a patent therefor. Subsequent to this decision interferences with Mr. Sargent's appli cation were declared upon three interfering applications, viz, those of Oliver I. Pillard, Lewis Lillie, and Samuel A. Little. Each of these interferences was in turn decided in favor of Mr. Sargent, the latter by you on the 9th of July, 1877. Prior to the latter decision, and on June 14, 1877, Mr. Burge, a former interfering applicant, filed a bill in equity in the supreme court of the District of Columbia, under section 4915, Revised Statutes, making Mr. Sargent a defendent, and reciting the proceedings had in your Office in the interference case between himself and Mr. Sargent, and the several decisions therein made, and praying that he might be adjudged, upon consideration of the evidence thereafter to be submitted, entitled to a patent for the invention which had been the subject-matter of the interference aforesaid.

After your decision of July 9, aforesaid, Mr. Burge filed an application in your Office requesting you to suspend the issue of a patent to Mr. Sargent until the final determination of the matters involved in the suit aforesaid pending in the supreme court of this District.

No fraud was alleged in said application in the adjudications and determinations of the rights of the respective parties in the contest theretofore had in your Office, nor were there any interfering applications then pending against Mr. Sargent's application.

Upon a full consideration of the application thus presented, and the matters therein contained, you decided on the 24th day of July last that you had a right, by virtue of the discretionary power vested in you as Commissioner of Patents, to suspend the issue of the patent to Mr. Sargent until the final determination of said suit, and thereupon, the premises being considered, ordered its suspension.

Mr. Sargent denies your right or authority to make the order of suspension, and alleges that it is in plain violation of the express provisions of the statute.

I have carefully considered the questions thus presented, together with the very able arguments of counsel made thereon.

The first question presented for my consideration is: Whether you have the right to make such an order, by virtue of the discretionary power vested in you as Commissioner of Patents, after final decision in a case, except where fraud or new matter is alleged. As an executive officer you have the authority to exercise such powers and functions as are conferred upon you by the statutes creating your Office and defining your duties, together with those which may be prescribed in the rules and regulations adopted to facilitate the business of your bureau, with the approval of the Secretary of the Interior. These duties are in

part quasi judicial, and in part administrative or ministerial and directory.

In the discharge of your judicial duties you hear and determine the rights of parties within the statute, governed by the same rules as a court. In the discharge of your administrative duties, whether of a ministerial or directory character, the law must be executed according to its letter and intent.

The rights which you are to determine are those which are granted by law, and are confined to a particular class. The mode of ascertaining and determining these rights, as well as their duration or continuance, is well defined by the statutes and the rules and regulations of your Office. These rights cannot be enlarged, abridged, or defeated, or at least should not, and will not be, if the law is properly administered. Letters patent for an invention are not to issue until the right thereto is clearly established in accordance with the law and the rules and reg. ulations of your Office; but when this is done, and all of the conditions and requirements of the law, as well as the rules and regulations of your Office have been fully complied with, they cannot be withheld. Sections 4888 to 4892, inclusive, of the Revised Statutes, define and prescribe what an inventor or discoverer must do before he shall receive a patent for his invention or discovery. Section 4893 defines your du ties upon an application being filed, and is as follows:

On the filing of any such application and the payment of the fees required by law the Commissioner of Patents shall cause an examination to be made of the alleged new invention or discovery, and if on such examination it shall appear that the claimant is justly entitled to a patent under the law, and the same is sufficiently useful and important, the Commissioner shall issue a patent therefor.

This language as to your duty is clear and explicit, and does not admit of doubt. If an applicant is adjudged to be entitled to a patent for the invention claimed, and has fully complied with the law and the rules and regulations of your Office, in the payment of fees, &c., he is entitled to demand that the patent shall issue to him, and there is no right, legal or otherwise, which will justify withholding it.

If a "legal bar" be interposed to the applicant's right to a patent, then he is not "justly entitled" to it, and it should be withheld, but in the absence of such bar the patent must issue unless an appeal be taken in cases where an appeal is provided by law.

If there be an interfering claim, then it cannot be said that he is "justly entitled" until the issue thus made is determined in accordance with the law and the regulations governing your Office, although he may have made an important invention and discovery, and would otherwise be entitled; but if after a fair consideration of such interfering claim it be decided that he is entitled to a patent, his right is unchanged, and he may demand that the patent issue.

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Reference is made in your decision to the words may issue" in section 4904, Revised Statutes, which prescribes the course of procedure

whenever an interfering application is filed. The section reads as follows:

Whenever an application is made for a patent, which, in the opinion of the Commissioner, would interfere with any pending application, or with any unexpired patent, he shall give notice thereof to the applicants, or applicant and patentee, as the case may be, and shall direct the Primary Examiner to proceed to determine the question of priority of invention. And the Commissioner may issue a patent to the party who is adjudged the prior inventor, unless the adverse party appeals from the decision of the Primary Examiner, or of the Board of Examiners-in-Chief, as the case may be, within such time, not less than twenty days, as the Commissioner shall prescribe.

In relation to the words "may issue," you state :

The discretion reposed by "may issue" is, to my mind, a real one, and becomes imperative only after a thorough search and general review has been had, "and if (section 4-93) on such examination it shall appear that the claimant is justly entitled to a patent under the law." The supreme court of the District in the case of Hull vs. The Commissioner of Patents, 7 OFFICIAL GAZETTE, 559, and 8 OFFICIAL GAZETTE, 46, expressly confirmed the Commissioner in his right to withhold the issue of a patent under the authority of the section just above quoted. I find nothing inconsistent with this right in the language of section 4904 respecting interferences; but, on the contrary, a very scrupulous regard for it by the employment of apt terms which shall not conflict with its exercise. Since, then, there is nothing compulsory resting upon me in the present instance, there remains for me simply to decide whether it is fair to all parties that I should suspend the issue of the patent as prayed for.

In deciding that the words "may issue" give you a discretion in the issuance of a patent, I think you erred. I am of opinion that the word "may," in that section, should be read "shall," the same as in section 4893. In Mason vs. Pearson, 9 Howard, 260, the Supreme Court say: Whenever it is provided that a corporation, or officer, "may" act in a certain way, or it "shall" be lawful for them to act in a certain way, it may be insisted on as a duty for them to act so, if the matter, as here, is devolved on a public officer, and relates to the public, or third persons. Thus in Rex and Regina vs. Barlow, 2 Salkeld, 609, where the statute directs the doing of a thing for the sake of justice, or the public good, the word "may" is the same as the word "shall." Thus 23 Hen. VI. says, "the sheriff may take bail." This is construed, he shall, for he is compellable so to do"" Carthew, 293.

Numerous cases might be cited showing this to be the well-settled construction of that word in similar statutes.

From the decision of the Commissioner of Patents in an interference case no appeal lies to any other tribunal. (Revised Statutes, sec. 4911; Edison et al. vs. Edison et al., 9 OFFICIAL GAZETTE, p. 403.) In other words, your decision in such cases upon the merits is final. It is contended, however, that by virtue of the provision in section 4915, Revised Statutes, providing a remedy for the defeated applicant by bill in equity to establish his right to a patent for the invention claimed, a decision final in its character in one of the Departments of the Government should be held in abeyance to await the determination of the same question in a co-ordinate Department of the Government. This view of the case was adopted by you, and, as I think, erroneously.

If such was the intention of the law-maker he has failed to express it.

The proceeding in the court of equity is a proceeding de novo, and I am unable to conclude that Congress intended that a party who has submitted his claim to a right to a tribunal clothed with powers of final adjudication thereon should be deprived of that right when the adjudi. cation is in his favor until another tribunal, not appellate or supervisory, has examined and determined the same question. The proceeding in equity is in no sense an appeal from your decision, nor does it, or can it, have the effect to supersede it.

Such also appears to be the opinion of the counsel for Mr. Burge, for on page 6 of his brief he says:

Second. If in the course of the equity proceeding Sargent should show to the satisfaction of the Commissioner that Burge was not prosecuting his suit bona fide, but, on the contrary, was simply compassing delay and vexation to Sargent under color of law, no doubt the Commissioner would issue the patent to Sargent.

If, then, the proceeding by bill in equity does not operate as an appeal, nor to supersede the decision made in your Office, can the withholding of a patent from Mr. Sargent be justified by what is termed discretionary power, in view of the statute which says that the patent shall issue? I think not. It cannot be fairly presumed, or at least it should not be presumed by you, that any different conclusion can or will be arrived at in that court than has already been made. If a reasonable doubt existed as to the correctness of the conclusion arrived at in your Office, then the proper proceeding would have been an application for a reconsideration of the former decision in the case upon the merits; but independent of such a doubt the issue of a patent should not and cannot be stayed.

The case of Hull vs. The Commissioner of Patents, 2 MacAllister, p. 90, is quite different from this. There the Commissioner evidently did doubt the right of Mr. Hull to a patent, although a subordinate tribunal in his Office had decided that he was entitled to it, and for this reason he withheld it. Had the Commissioner of Patents in person decided that Mr. Hull was entitled to the patent, could he then reasonably or legally have withheld it? The court even in that case would have been powerless to grant the writ of mandamus, because another remedy is provided by law, but the Commissioner's supervisory power would have been wanting because the reason for its exercise would have ceased to exist.

In this case your predecessor in person decided that the patent should issue to Mr. Sargent. The correctness of that decision has not been successfully assailed before you, nor attempted, except by interfering applications, which have all been decided in Mr. Sargent's favor.

I am, therefore, brought to the conclusion that at the time of making the order of suspension there was no legal reason why the patent should not have been issued, and that there was no duty to be performed by you except the ministerial duty of preparing and issuing the patent, and that in the performance of those duties the statute is mandatory.

The second question presented for my consideration is: "Have I the legal right to direct you now to issue a patent to Mr. Sargent? This right is denied by Mr. Burge's counsel. If there were any questions affecting the merits of Mr. Sargent's application still pending before you, there could be but one answer to this question, viz, that I have not that right. Such, however, is not the attitude of this case. All of the merits of the case have been determined in your Office, and Mr. Sargent has been decided entitled to a patent for the invention claimed. Nothing remains to be done but the ministerial duty of issuing it to him. In this view of the case, it becomes important to know what my duties are in the premises.

By section 441, Revised Statutes, the Secretary of the Interior is charged with the supervision of certain branches of the public business, among which is "patents for inventions." By section 481 it is provided that the Commissioner of Patents, under the direction of the Secretary of the Interior, "shall superintend or perform all duties respecting the granting and issuing of patents directed by law." Section 4883 provides that "all patents shall be issued in the name of the United States of America, under the seal of the Patent Office, and shall be signed by the Secretary of the Interior, and countersigned by the Commissioner of Patents," &c.

I think it is quite clear that the supervision and direction with which the Secretary of the Interior is charged means something more than an approval of the act of the Commissioner of Patents. The responsibility of seeing that the work is properly done by the Commissioner of Patents is with the Secretary of the Interior. This includes negative as well as affirmative acts.

The Commissioner of Patents is to "superintend or perform all duties respecting the granting and issuing of patents," but these duties are to be performed "under the direction of the Secretary of the Interior."

If the Commissioner neglects or refuses to perform any duty required by law to be performed by him under the direction of the Secretary of the Interior, or performs a ministerial or administrative duty improperly, I am of the opinion that the Secretary of the Interior, by virtue of his supervisory power, may direct him in its performance. To be charged with the responsibility of the supervision and direction of any kind of work or business, by law, and not be able to require that it shall be in accordance with the law, would be anomalous indeed.

But it is said that if the Commissioner of Patents neglects or refuses to perform any duty required of him by law, the court will compel him by mandamus to perform it. Supposing this to be so, does that lessen the obligation and responsibility on my part in such a case, if I am called upon to see to it that the law be executed? The fact that a court which is charged with the duty of protecting all persons in their rights will, when the facts are presented to it, grant such a writ, in no way relieves me of the duty of making a proper order for the performance of