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250. Executors, administrators, and

assigns may procure reissues. 251. One of several executors may procure a reissue.

252. Rights of assignees in reissues.

253. The rights of grantees in reissues.

254. The legal effect of reissued patents.

§ 210. IN 1821 James Grant, of Providence, Rhode Island, received letters patent of the United States for an improved mode of manufacturing hat bodies. In 1825 he presented a petition to Henry Clay, Secretary of State, stating that the specification of his patent was defective, and praying that his patent might be cancelled, and a new and correct one granted, embracing the same improvements, so far as they were set forth in certain new specifications drawings and explanations which accompanied the petition. Though there was, at that time, no statute which authorized any such proceeding; yet, on the advice of William Wirt, the Attorney-General, and in the name of John Quincy Adams, the President of the United States, Mr. Clay cancelled the letters patent of Mr. Grant, and thereupon issued to him new letters patent, for the same invention, and for the residue of the term covered by the original document. Annexed to the new letters, and forming part thereof, were the new specifications, drawings and explanations, which had accompanied Mr. Grant's petition.

In the case of Grant v. Raymond' the validity of this proceeding was called in question in the Supreme Court; and was argued in the negative by Daniel Webster. The Supreme Court sustained the validity of the reissued patent, on the general spirit and object of the patent law; not on its letter. In delivering the opinion Chief Justice MARSHALL said: "If the mistake should be committed in the Department of State, no one would say that it ought not to be corrected. All would admit that a new patent, correcting the error, and which would secure to the patentee the benefits which the law intended to secure, ought to be issued. And yet the act does not in terms authorize a new

1 Grant v. Raymond, 6 Peters, 243, 1832.

patent, even in that case. Its emanation is not founded on the words of the law, but it is indispensably necessary to the faithful execution of the solemn promise made by the United States. Why should not the same step be taken for the same purpose, if the mistake has innocently been committed by the inventor himself?" And his Honor further said: “If, by an innocent mistake, the instrument introduced to secure his privilege fails in its object, the public ought not to avail itself of this mistake, and to appropriate the discovery without paying the stipulated consideration. The attempt would be disreputable in an individual, and a Court of Equity might interpose to restrain him.”

In pursuance of the doctrines of the first four sentences quoted above from Chief Justice MARSHALL, the Commissioner may cancel a patent and issue a corrected one in its stead, where the first one was caused, by an inadvertent error in the Patent Office, to grant less to the inventor than he had applied for and was entitled to receive, and where the inventor refuses to accept the patent thus limited.'

§ 211. In accordance with the spirit of the decision in Grant v. Raymond, and within a few months after that decision was made, Congress enacted a statute to regulate the granting of reissued letters patent. That statute provided, in effect, that whenever any patent should be invalid or inoperative, because the inventor, by inadvertence, accident or mistake, and without any fraudulent or deceptive intention, failed to conform his specification to the then existing statutory requirements; it should be lawful for the Secretary of State, upon the surrender to him of such patent, and the delivery to him of a sufficient statutory specification, to cause a new patent to be granted to the same inventor, for the same invention, and for the residue of the term of the original patent. That statute also provided that the right to receive a reissue, should extend to executors, administrators or assigns; and that the reissue patent

Railway Register Mfg. Co. v. Railroad Co. 23 Fed. Rep. 593, 1885.

2 4 Statutes at Large, Ch. 162, Section 3, p. 559.

should be liable to the same defences as the original; and that no public use of the invention, after the grant of the original patent, should prejudice the right of the patentee to recover for infringement of the reissue patent, committed after the grant thereof.

§ 212. The Patent Act of 1836' repealed all prior statutes relevant to patents, and provided a more elaborate system in place of the repealed laws. Section 13 of that Act referred to reissues, and provided, in effect, that whenever any patent should be inoperative or invalid because the inventor had, by inadvertence, accident, or mistake, and without any fraudulent or deceptive intention, made his description or specification defective or insufficient, or had claimed in his specification more than he had a right to claim as new; it should be lawful for the Commissioner of Patents, upon the surrender to him of such patent, to cause a new patent to be issued to the same inventor, for the same invention, in accordance with the inventor's corrected description and specification, and for the residue of the term of the original patent. This statute also provided that the right to receive a reissue should extend to executors, administrators and assigns, and that the reissued patent, together with the corrected description and specification, should have the same effect in law, on the trial of all actions thereafter commenced for causes subsequently accruing, as though the same had been originally filed in such corrected form before the issuing of the original patent.

§ 213. The Patent Act of 1837' made some additions to the statute of 1836, relevant to reissues. Section 5 recognized a right in a patentee to demand and receive several reissued patents for distinct parts of the subject-matter of his surrendered patent. And Section 8 provided, that whenever a patent should be returned for reissue, the claims thereof should be subject to revision and restriction, in the same manner as were original applications for pat

15 Statutes at Large, Ch. 357, p. 117.

25 Statutes at Large, Ch. 45, p. 191.

ents; and that the Commissioner should not grant any reissue, until the applicant should have entered a disclaimer, or altered his claim, in accordance with the decision of the Commissioner; and that the applicant, if dissatisfied with such decision, should have the same remedy by way of appeal, that the law provided in cases of original applications.

§ 214. The Patent Act of 1870' substantially re-enacted the law of reissues as it had been embodied, for more than thirty years, in the statutes of 1836, and 1837; but re-enacted that law with a few modifications and additions. Where the old law used the phrase "defective or insufficient description or specification," the new law used the words "defective or insufficient specification." Where the old statute made it lawful for the Commissioner to reissue a patent, the new statute made it obligatory upon him to do so. Where the old law recognized a right in a patentee to demand and receive several reissue patents in the place of one surrendered patent, the new law provided that the Commissioner might, in his discretion, cause several such patents to be issued upon the demand of the applicant. The provision of the old statute, that the applicant, if dissatisfied with the decision of the Commissioner, should have the same remedy and be entitled to the same privileges and proceedings, as were provided by law in the case of original applications for patents, was omitted in the new statute; but its effect was retained, by expressly mentioning reissues in those sections of the new statute, which provided for that remedy, and for those privileges and proceedings. Section 33 of the new statute provided further, that where a patent was to be reissued to an assignee of the inventor, the application should be made, and the specification be sworn to, by the inventor, if he be living. The Patent Act of March 3, 1871, prescribed, that the provision of Section 33, just mentioned, should not be construed to apply to any patent, is

116 Statutes at Large, Ch. 230, p.

198.

216 Statutes at Large, Ch. 230,

Sections 46 to 52, p. 204.

316 Statutes at Large, Ch. 132, p. 583.

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sued and assigned before July 8, 1870: the date of the proval of the Act of which that section formed a part. Another new provision of the Statute of 1870, was as follows: "No new matter shall be introduced into the specification, nor in case of a machine patent shall the model or drawings be amended, except by each other; but where there is neither model nor drawing, amendments may be made upon proof satisfactory to the Commissioner that such new matter or amendment was a part of the original invention, and was omitted from the specification by inadvertence, accident, or mistake, as aforesaid."

1

$215. Section 4916 of the Revised Statutes is substantially a copy of Section 53 of the Statute of 1870. Section 4895 of the Revised Statutes, re-enacted the provision above cited from Section 33 of the Act of 1870, coupled with the statutory construction of that provision, which was contained in the Patent Act of 1871, and which was above explained. Sections 46 to 52 of the Act of 1870, were re-enacted as Sections 4909 to 4915 of the Revised Statutes. Thus the law of reissues underwent no change when the Revised Statutes were approved. The reissue provisions which were embodied in the Act of 1870, are still the statutes which govern the subject.

The meritorious ground for reissues, as stated by the Supreme Court in Grant v. Raymond, has now been set forth; and the subsequently enacted and gradually developed statutory law on the subject has been explained. To explore the great mass of relevant adjudicated cases, and to extract from those cases the detailed doctrines of the law of reissues, is the engaging work upon which it is now in order to enter.

2

§ 216. To be the lawful subject of a reissue, a patent must be invalid, or it must be at least inoperative. All patents that are invalid, are also inoperative. If the two words had,

16 Statutes at Large, Ch. 132, Section 53, p. 206.

2 Act of 1832, Section 3; Act of

1836, Section 13; Act of 1870, Section 53; Revised Statutes, Section 4916.

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