379. OATH BY AN APPLICANT FOR A REISSUE, (INVENTOR.) STATE OF PENNSYLVANIA, City and County of Philadelphia, } 88. Thaddeus Tompkins, the above-named petitioner, being duly sworn, (or affirmed,) deposes and says that he verily believes that, by reason of an insufficient and defective specification, his aforesaid letters patent are inoperative and invalid; that the said error has arisen from inadvertence, accident, or mistake, and without any fraudulent or deceptive intention, to the best of his knowledge or belief; that he is the sole owner of said letters patent, [or, "that Henry Bates is the sole owner of said letters patent, and that this application is made on the behalf and with the consent of said Bates;"] and that he verily believes himself to be the first and original inventor of the improvement set forth in this amended specification. THADDEUS TOMPKINS. Sworn to and subscribed before me this 26th day of July, 1869. CHARLES CANDID, [NOTARIAL SEAL.] Notary Public. 380. OATH BY AN APPLICANT FOR A REISSUE, (ASSIGNEE.) [To be used only when the inventor is dead.] STATE OF VIRGINIA, 88 } City of Richmond. Martin Halstead and Norris Brown, the above-named petitioners, being duly sworn, (or affirmed,) depose and say they verily believe that, by reason of an insufficient and defective specification, the aforesaid letters patent granted to Amos Mygatt are inoperative and invalid; that the said error has arisen from inadvertence, accident, or mistake, and without any fraudulent or deceptive intention, to the best of their knowledge and belief; that the entire title to said letters patent is vested in them; and that they verily believe the said Amos Mygatt to be the first and original inventor of the invention set forth and claimed in the foregoing amended specification; and that the said Amos Mygatt is now deceased. MARTIN HALSTEAD. Sworn to and subscribed before me this 14th day of November, 1869. MORRISON WHITE, Alderman and Justice of the Peace ex officio. 384. When application may be filed 400. Granting the extended term. by attorney. 385. When application must be filed. 388. Reference to examiner. 389. Opposition. 390. Testimony in contested cases. 391. Service of notice to take testi mony. 392. Hearing. 401. Effect of extension. 402. Action of Commissioner. 403. Rights of assignees. 404. Extension by special act of 405. Rights of assignees. 407. Petition by administrator. 393. Applicant to furnish statement 410. Oath by executor. under oath. 394. Divisions of a reissue. 411. Reasons for opposing exten. sion. 395. Questions considered and proof 412. Reasons by a corporation. required. 396. As to novelty. 413. Oath to loss of letters patent. 414. Certificate of extension. 381. RÉSUMÉ OF THE LAW.-The Secretary of State, Commissioner of Patents, and Solicitor of the Treasury Department were, by the act of July 4, 1836, § 18, constituted a board of commissioners to hear evidence for and against the extension of patents, and to decide whether, having due regard for the public interest therein, it is just and proper that the term of the patent should be extended because the patentee has failed to obtain a reasonable remuneration. The commissioners being satisfied that the patent ought to be renewed, it was made the duty of the Commissioner of Patents to make a certificate on the original patent, showing that it extended for a further term of seven years from the expiration of the first term. By the act of 1848, § 1, this power was vested solely in the Commissioner of Patents, who was thereby required to refer the application to the principal examiner having charge of the class of inventions to which the case belongs; and, upon his report, to grant or refuse the patent, upon the same principles and rules that had governed the board provided by the former act. The act of March 2, 1861, § 16, enacted that "all patents hereafter granted shall remain in force for the term of seventeen years from the date of issue, and all extension of such patents is hereby prohibited;" and the act of July 8, 1870, contains substantially the same provision; consequently, all patents granted after the passage of the act of 1861 are incapable of being extended, but patents granted before that date may still be extended on application. (Curtis on Patents, 285.) 382. DUTY OF APPLICANT.-Where the patentee of any invention or discovery, the patent for which was granted prior to the second day of March, 1861, shall desire an extension of his patent beyond the original term of its limitation, he shall make application therefor, in writing, to the Commissioner, setting forth the reasons why such extension should be granted; and he shall also furnish a written statement under oath of the ascertained value of the invention or discovery, and of his receipts and expenditures on account thereof, sufficiently in detail to exhibit a true and faithful account of the loss and profit in any manner accruing to him by reason of said invention or discovery. (Act of July 8, 1870, § 63.) 383. ASSIGNEE CANNOT APPLY.-Although the invention was sold and assigned before the patent was obtained, and the extended term was sold to the same man, the application for extension should be made in the name of the patentee. (Van Vliet ex parte, Commissioners' Decisione, 1869, p. 93.) 384. WHEN APPLICATION MAY BE FILED BY ATTORNEY.— In the matter of the application of Henry Voelter for extension, Acting Commissioner Duncan says: "Question arises in this case as to the sufficiency of the proceedings under which the application was filed. "The law requires that a patentee who is desirous of extending his patent beyond the term of its limitation shall make application in writing, &c., and that such application shall be filed at least ninety days before the expiration of the patent. "Under this ninety days' limitation Voelter's application should have been in the Patent Office as early as June 1. In point of fact, the petition which bears his own signature was not received until July 2; but on the twenty-third day of May a duplicate of this petition was filed in the office by the inventor's retained counsel, the inventor's name being signed by such counsel in his character of attorney or agent. "The requisite extension fee was paid on the same day, and the petition was accompanied with an affidavit by the party filing it, in which he set forth his relations to the case, and alleged that he had prepared and seasonably forwarded the original petition to the inventor's residence, in Germany, for his proper signature, but that, from recent telegraphic correspondence with him, it was feared that this would not be received back in time to meet the requirement of the statute if dependence were to be placed upon it alone. "No serious question can be made as to the imperative character of the provision of law which fixes a limit of time for filing the petition. It is not an enactment addressed to the discretion of the Commissioner, but it is mandatory upon him; and he is as much required to insist upon a literal compliance with it as with those provisions of law which make it obligatory upon an applicant for a patent to take and subscribe the oath of invention, to complete the application within two years after filing the petition, or to pay the final fee within six months after notice of allowance. Passing this point, then, we come to the inquiry whether the filing an application for an extension is an act that must be done by the patentee in propria persona, or one that may also be performed by his duly authorized agent. "For obvious reasons the law requires that the specification of a patent be signed by the inventor himself, if living. The oath, too, in original applications for patents, if not also in applications for extensions, is a personal matter, and must be made by the applicant himself. "But the petition stands on a different basis. This is a matter of form merely. Its object in an extension case is simply to notify the office that the petitioner enters suit for an extension of the patent; and the object of the requirement that such notice be filed ninety days before the expiration of the original term is to enable the office to give the necessary publicity to the application by publishing it in the mode prescribed for sixty days prior to the day of hearing. Manifestly this can be done equally well whether the original notice comes from the hand of the party in interest or from his recognized agent. There |