original papers, furnishing the applicant copies-if he desires them-at the usual

expense.

33. When a patent is granted it will be transmitted to the patentee, or to his agent having a full power of attorney authorizing him to receive it.

PROTESTS.

24. The office cannot stay the regular proceedings on applications for letters patent in consequence of protests founded upon mere ex parte statements; but where affidavits of disinterested persons are received, they will be considered and allowed such weight as they may seem entitled to.

OF WITHDRAWALS.

35. If an application filed prior to the 2d of March, 1861, be rejected, and the applicant shall relinquish his claim, in pursuance of the 7th section of the act of 1836, and the 12th section of the act of 1837, he must notify the Commissioner of the fact of such withdrawal, sending at the same time his receipt for two-thirds of the fee paid by him, which will be thereupon returned. The model and papers will be retained by the office. The applicant may, however, have the duplicate drawing if he desires it. But no money paid on any application filed subsequent to the second day of March, 1861, nor for a design, nor for a reissue, can be withdrawn.

RETAINING PATENTS IN THE SECRET ARCHIVES.

36. An application upon which a patent has been allowed may, at the request of the applicant or of his assignee, made before the patent has been recorded, be retained in the secret archives of the office for a period not exceeding six months from the date of the order to issue, without reference to the time of payment of the final fee.

OF APPEALS.

37. After an application for a patent has been twice rejected by the examiner having it in charge, it may, at the option of the applicant, be brought before the board of examiners-in-chief, on payment of a fee of ten dollars.

38. For this purpose a petition in writing must be filed, signed by the party or his authorized agent or attorney.

Form of appeal to the examiners-in-chief.

TO THE COMMISSIONER OF PATENTS:/

SIR: I hereby appeal to the examiners-in-chief from the decision of the principal examiner in the matter of my application for a patent for an improve

ment in

rejected a second time on Respectfully,

day of

A. B.

39. The examiners-in-chief will consider the case as it was when last passed upon by the primary examiner, merely revising his decisions so far as they were adverse to the applicant.

40. All cases which have been acted on by the board of examiners-in-chief may be brought before the Corimissioner in person, upon a written request to that effect, and upon the payment of the fee of twenty dollars required by law.(Second section, act of March 2, 1861) A decision deliberately made and ap

(

proved by one Commissioner will not be disturbed by his successor. The only remaining remedy will be by appeal in those cases allowed by law to the judges of the supreme court of the District of Columbia.

41. The mode of appeal from the decision of the office to the judges of the supreme court of the District of Columbia is by giving written notice thereof to the Commissioner, filing in the Patent Office, within such time as the Commissioner shall appoint, reasons of appeal, and paying to him the sum of twentyfive dollars (Act of 1839, section 11.) Printed forms of notice of appeal, of the reasons of appeal, of the petition, and copies of the rules of the supreme court of the District of Columbia, will be forwarded on request. The following rules have been adopted by the Supreme Court in appeals from the decisions of the Commissioner of Patents:

RULES.
1.

All appeals taken from the decisions of the Commissioner of Patents to the supreme court of the District of Columbia shall be entered in a docket to be kept for that purpose by the clerk of the court, and every rule, motion, or order made in every pending appeal, and the final decision made in each case, shall be recorded in the minutes of the court, to be kept by the clerk for the purpose.

2.

At each regular, term the court will designate one or more justices thereof to hear and determine all pending appeals from the decisions of the Commissioner of Patents.

3.

One or more of the justices will attend at the court-house in Washington, at 10 o'clock a. m., on the first Wednesday of every month, to hear appeals from the Commissioner of Paten's; and all pending appeals shall then and there be heard, unless postponed for cause, or for the opinion of the court in banc; and in postponed cases the Commissioner of Patents shall, by mail or otherwise, give the parties in interest notice of the said postponement, and of any new day which may be assigned for the hearing.

4.

The party desiring to appeal from the decision of the Commissioner of Patents must give written notice thereof to the Commissioner, accompanied with his petition to the supreme court of the District of Columbia to grant him a hearing, and file the reasons of appeal, and pay the fee of twenty-five dollars, in conformity with the eleventh section of the act of 1839, chapter 88.

5.

The appellant, previous to any action on, and preparatory to the hearing of any appeal, must comply with the requisites of the law in the Patent Office, and his petition must state concisely--

1. The application for the patent;

2. Its nature, and, if a case of interference,

3. The residence of the party interested;
4. The Commissioner's refusal;

5. The prayer of appeal;

6. Notice thereof to the Commissioner,

7. The filing of the reasons of appeal in the Patent Office; and,

8. The payment into the office of the sum required by law.

To every petition must be annexed a certificate of the proper officer that the requisitions of the law have been complied with, or an affidavit of the truth of the facts stated in the petition.

No notice to the Commissioner will be issued until such certificate or affidavit be made or produced.

The appeal will be tried upon the evidence which was in the case and produced before the Commissioner.

6.

The appellant must file his argument, in writing, within five days after the Commissioner shall send in his report, and the papers, models, and drawings or specimens, or within five days after the day of hearing, which argument must state the facts and law relied on, together with the authorities in support of the

same.

7.

In contested cases the appellee shall file his argument, in writing, within ten days after the appellant shall have filed his argument. At the hearing, oral arguments may be made, not to occupy more than one hour for each counsel engaged, and not more than two counsel in each case will in any case be heard, and in no case will oral argument be heard unless the opposite party shall have reasonable notice thereof, through the mail or otherwise, from the party desiring to be heard orally; or where oral arguments are ordered by the court, the appellant shall give the notice; and whenever the term notice is used, in these rules, reasonable notice is understood.

8.

Oral arguments, without notice, will be heard in all appeals argued before the court in bane, and the justice hearing an appeal may, whenever in his discretion he deems it best for the ends of justice, refer the case to the court in banc for its opinion or decision.

9.

In no case will arguments before the court, or any single justice thereof, be heard, except made by the party in interest in person, a member of the bar of this court, the superior or supreme court of a State, Territory, or district of the United States, or a duly licensed solicitor of patents, in good standing before the Patent Office, and admitted to practice before this court as the appellate tribunal from the decisions of the Commissioner of Patents.

10.

The court, having fully heard the appeal, shall return all the papers to the Commissioner, with a certificate of its proceedings and decisions, which shall be entered of record in the Patent Office, and such decision, so certified, shall govern the further proceedings of the Commissioner in such case.

OF INTERFERENCES.

42. When each of two or more persons claims to be the first inventor of the same thing, an "interference" is declared between them, and a trial is had before the examiner. Nor does the fact that one of the parties has already obtained a patent prevent such an interference; for, although the Commissioner

PROCEEDINGS IN THE PATENT OFFICE.

17

has no power to cancel a patent already issued, he may, if he finds that another person was the prior inventor, give him also a patent, and thus place them on an equal footing before the courts and the public.-(Act of 1836, section S.) If an applicant for a reissue embraces in his amended specification any new or additional description of his invention, or enlarges his claim, or makes a new one, and thereby includes therein anything which has been claimed in any patent granted subsequent to the date of his original application, as the invention of another person, an interference will be declared between the application and any unexpired patent, or pending application, in which the same thing is claimed; but not where such pending application for reissue claims only what was granted in the original patent.

43. When an application is found to conflict with a caveat, the caveator is allowed a period of three months within which to present an application, when an interference may be declared.-(See act of 1836, section 12.)

44. In cases of interference patentees have the same remedies by appeal as applicants în pending applications.

45. In contested cases, whether of interference or of extension, parties may have access to the testimony on file, prior to the hearing, in presence of the officer in charge; or, when practicable, copies may be obtained by them at the usual charges.

46. In cases of interference the party who first made oath to the invention will be deemed the first inventor in the absence of all proof to the contrary. A time will be assigned in which the other party shall complete his direct testimony, and a further time in which the adverse party shall complete the testimony on his side; and a still further time in which the first party shall close his rebutting testimony, but shall take no other. If there are more than two parties, the times for taking testimony shall be so arranged that each shall have a like opportunity in his turn, each being held to go forward and prove his case against those who made oath to their applications before him.

47. If either party wishes the time for taking his testimony, or for the hearing, postponed, he must make application for such postponement, and must show sufficient reason for it by affidavit filed before the time previously appointed has elapsed, if practicable; and must also furnish his opponent with copies of his affidavits and with seasonable notice of the time of hearing his application.-(See rule 107, paragraph 6.)

48. When an interference has been declared, and a new application claiming the invention in controversy comes into the office before the final determination of such interference, the new application will be included in the case, and the proper means will be taken to allow all the parties a fair hearing. The testimony taken by the original parties will be retained in the case, provided that due opportunity can be given the new applicant to cross-examine the witnesses. If, however, on the original inte ference, an appeal has been taken to the examiners in chief, before the new aj plication is filed, such new application will be suspended until the decision in the original case, after which a new interference may be declared with the successful party.

49. After an interference has been declared, another interference will not be declared upon a new application filed by either party unless it is shown to the satisfaction of the office that such party has new testimony which he could not have procured in time for the hearing, and which might change the decision.

50. When an application is adjudged to interfere with a part only of another pending application, the interfering parties will be permitted to see or obtain copies of so much only of the specifications as refers to the interfering claims. And either party may, if he so elect, withdraw from his application the claims adjudged not to interfere, and file a new application therefor. In such case, the new application will be examined without reference to the interference from which it was withdrawn.

2

OF REISSUES.

51. A reissue is granted to the original patentee, his heirs, or the assignees of the entire interest, when by reason of an insufficient or defective specification the original patent is invalid, provided the error has arisen from inadvertence, accident, or mistake, without any fraudulent or deceptive intention.-(Act of 1863, section 13.)

52. The petition for a reissue must show that all parties owning any undivided or territorial interest in the patent (irrespective of licenses) concur in the surrender. And a certified statement of the title of the party surrendering must be filed with the application.

53. The general rule is, that whatever is really embraced in the original invention, and so described or shown that it might have been embraced in the original patent, may be the subject of a reissue, but an applicant will not be allowed the benefit of proof that there was more in his invention than is shown in his original application, model, or specimens.

54. Reissued patents expire at the same time that the original patent would have done. For this reason applications for reissue will be acted upon immediately after they are completed.

55. A patentee may, at his option, have in his reissue a separate patent for each distinct part of the invention comprehended in his original application, by paying the required fee in each case, and complying with the other requirements of the law, as in original applications.-(Act of 1837, section 5.) Each division of a reissue constitutes the subject of a separate specification descriptive of the part or parts of the invention claimed in such division; and the drawing may represent only such part or parts.

56. One or more divisions of a reissue may be granted, though other divisions shall have been postponed or rejected.

57. In all cases of applications for reissues the original claim is subject to re-examination, and may be revised and restricted in the same manner as in original applications.-(Act of 1837, section 8.)

58. The following are appropriate forms of application for reissue:

Surrender of a patent for reissue.

To THE COMMISSIONER OF PATENTS:

The petition of Samuel Morey, of Philadelphia, in the county of Philadelphia, and State of Pennsylvania,

RESPECTFULLY REPRESENTS:

That he did obtain letters patent of the United States for an improvement in the boilers of steam-engines, which letters patent are dated on the first day of March, 1850; that he now believes that the same are inoperative and invalid by reason of a defective specification, which defect has arisen from inadvertence and mistake. He therefore prays that he may be allowed to surrender the same, and requests that new letters patent may issue to him, for the same invention, for the residue of the period for which the original patent was granted, under the amended specification herewith presented, he having paid thirty dollars into the treasury of the United States, agreeably to the requirements of the act of Congress in that case made and provided.

SAMUEL MOREY