§ 428. Patent Privilege Created at the Date of the Issue of the

Letters-Patent: Mode and Conditions of Issue.

The final action of the Patent Office in the granting of a patent is the issue of the letters-patent to the inventor. Then, and then alone, does his title to the patent privilege become complete. Neither the application, nor the admission of the novelty and utility of his invention by the examiners, nor the decision in his favor of any contest with rival claimants, establishes his rights as against the public. This can be done only by the actual issue of the letters-patent. The mode in which this issue shall take place, the form and contents of the instrument itself, the term which it shall specify as the duration of the monopoly, and the acts to be performed by the inventor on receiving notice of the grant, are all specifically prescribed by law.2

§ 429. Letters-Patent Grantable by Special Act of Congress.

In certain cases letters-patent may be granted without the intervention of the Patent Office. Instances arise where the merits of an inventor justly entitle him to the privileges of a patentee, although from peculiar circumstances his case is not within the jurisdiction conferred upon the Patent Office by the statutes. In such instances an application may be made directly to Congress itself, whose general powers under the Constitution enable it to secure to the inventor the exclusive use of his invention, in any manner and for any time which it may deem expedient. Patents thus granted fall under the general provisions of the law, except when otherwise specified in the act conferring them.'

§ 428. That no legal title to the patent exists until the patent issues, see Pontiac Knit Boot Co. v. Merino Shoe Co. (1887), 31 Fed. Rep. 286.

2 See §§ 617-632 and notes, post. § 429. The power of the Federal legislature, under the Constitution, to grant a monopoly to an inventor by special act has been repeatedly affirmed by the courts, and frequently exercised by Congress itself. The fact that the invention has already gone into ex

tensive public use, or that a long period
has elapsed since it was ready for be-
stowal on the public, or that an appli-
cation to the Patent Office for a patent
has been refused, may furnish a reason
why Congress should decline to show
this favor to the inventor, but in no
wise restricts its authority to do so,
should the measure seem expedient.
Existing monopolies cannot in this
manner be abrogated or curtailed; but
with this limitation the action of Con-

7

§ 430. Grant of Letters-Patent: Subordinate Topics: Order of

Discussion.

In considering the various rules relating to the grant of letters-patent, and the many subordinate and collateral topics which the general subject embraces, the following arrangement will be pursued:

I. Of Patent Attorneys, their Rights and Duties.

II. Of Caveats and the Procedure thereon.

III. Of the Form of the Application.

IV. Of the Subject-Matter of the Application.

V. Of the Description of the Invention.

VI. Of the Claim.

VII. Of the Drawings and Model.

VIII. Of the Filing of the Application and Payment of Fees.

IX. Of Procedure in Uncontested Cases.

X. Of Procedure in Interference Cases.

XI. Of the Form and Effect of Letters-Patent.

SECTION I.

OF ATTORNEYS.

§ 431. Relation of Patent Attorneys to the Patent Office.

An inventor may choose any person of intelligence and good moral character to act as his attorney in the prosecution of his application for a patent.1 Over all such attorneys the Commissioner of Patents has a certain authority and he may pass upon their appointments and dismissals; 2 but the Patent Office is not responsible for their conduct toward their clients, gress may be retrospective or prospective only, and may bestow on the monopoly such characteristics of duration and extent as the wisdom of the legislature may determine. See further on this subject §§46, 47, and notes, ante.

§ 431. That patent attorneys are not required to be learned lawyers, see Osgood v. Badger (1888), 44 O. G. 1065.

or capacity are requisite to patent attorneys, see Hoosier Drill Co. v. Ingels (1879), 15 O. G. 1013.

2 That the Commissioner may pass on powers and revocations of attor neys, see Ex parte Morley (1886), 37 O. G. 337; Ex parte Pitney (1880), 17 O. G. 447.

That patent attorneys are not agents of the Patent Office, see Hoosier Drill

That no qualifications of age, sex, Co. v. Ingels (1879), 15 O. G. 1013.

nor will it aid inventors in selecting them. Nor are special privileges permitted by the Office to any one attorney over another; nor has one any more facilities for procuring patents than another, except such as arise out of his own superior diligence and skill.

§ 432. Patent Attorneys Appointed only by a Written Power. An inventor can appoint an attorney only by a written power of attorney, and the Patent Office cannot recognize the attorney as such until the power of attorney has been duly filed in the department. This written power must be signed by the inventor or other proper applicant, and must name each and every person upon whom the attorneyship is to be conferred. A power of attorney given to a firm must thus specifically mention each member of the firm or it cannot be regarded as bestowing the required authority either upon the firm as a whole or upon any of the copartners. Any power of attorney may contain a written authorization, by virtue of which the original attorney may substitute another for himself, or may associate another with him; but such authorization will not empower the substitute or associate to delegate his authority to others. The rules requiring and governing the power of attorney are stringent and universal, not even a member of Congress being allowed to examine patent cases, nor act in them, without first filing such written power.

§ 433. Authority of Attorney Revocable or Irrevocable: How

Revoked.

A power of attorney may be either irrevocable or revocable. Where it constitutes part of a contract, in the fulfilment of which the attorney has a beneficial interest, it is irrevocable; although even in such cases the attorney is still, so far as the § 432. 1 That an associate attorney see Ex parte Ranks (1887), 38 O. G. cannot be appointed by the applicant without the consent of the regular attorney, see Ex parte Ranks (1887), 38 O. G. 329.

That an associate attorney should be appointed by the regular attorney upon the written authority of his client,

329.

That where an applicant appoints two or more attorneys he must designate with which the Office shall hold correspondence, otherwise it will recognize only the resident attorney, see Ex parte Jewett (1887), 38 O. G. 781.

application for a patent is concerned, the mere agent of his principal. Unless the authority is thus irrevocable, it may be terminated by the client at his pleasure. In order to do this, he should give written notice of such revocation to the Patent Office; whereupon the Office will immediately notify the attorney, and thenceforth deal personally with the client, or with such other attorney as he may lawfully appoint. This notice puts an end to the authority of the attorney; and neither the Patent Office nor any contesting party to whom the notice of the revocation may be given is at liberty thereafter to recognize him as representing his former principal.2 The death of the principal also terminates a revocable power of attorney; and where an applicant dies pending his application, his personal representatives must re-appoint the attorney, or ratify his former appointment, before he can be allowed to act for them. But the assignment, by an applicant, of an undivided interest in the invention will not revoke a previous power of attorney nor authorize the assignee to revoke it; though where a power of attorney is conferred before the application, and subsequently, but still before the application, the entire interest in the invention is assigned, the authority of the attorney of the assignor expires, and a new appoint

§ 433. 1 That when a power of attorney is part of a contract which creates a beneficial interest in the attorney, it is irrevocable, see Ex parte Harrison (1878), 13 O. G. 547.

That an attorney holding an irrevocable power is still the mere agent of his principal, see Ex parte Cox (1872), 2 O. G. 491.

That a power of attorney not coupled with an interest is revocable at will, see Ex parte Morley (1886), 37 O. G. 337.

2 That an applicant can discharge his attorney on giving notice to the Patent Office without leave of the Commissioner, see Hoosier Drill Co. v. Ingels (1879), 15 O. G. 1013.

That notice to the Patent Office of revocation terminates the authority of the attorney and the right of the Office to deal with him as such, see Ex parte VOL. II. -2

Morley (1886), 37 O. G. 337; Hoosier Drill Co. v. Ingels (1879), 15 O. G. 1013.

That notice to the adverse parties of such revocation deprives them of the right to recognize him as attorney, see Hoosier Drill Co. v. Ingels (1879), 15 O. G. 1013.

3 That the death of an applicant revokes his power of attorney, see Eagleton Mfg. Co. v. West, Bradley, & Cary Mfg. Co. (1880), 18 Blatch. 218; 2 Fed. Rep. 774; 17 O. G. 1504.

That the former attorney of a deceased applicant has no power to amend the application after his death without the oath of the representative, see Eagleton Mfg. Co. v. West, Bradley, & Cary Mfg. Co. (1880), 18 Blatch. 218; 2 Fed. Rep. 774; 17 O. G. 1504. Affirmed s. c. (1883) 111 U. S. 490.

ment, or the ratification of the previous one, by the assignee is necessary.

§ 434. Authority of Attorney Limited to the Application Accompanying the Power.

The relation created between the inventor and his attorney by the filing of the written power of attorney is neither permanent nor universal, but has reference only to the particular proceedings of which the power of attorney forms a part, and ends when that proceeding is concluded. If several applications are instituted concurrently by the same inventor, a separate power of attorney must be filed in each, although in all the person of the attorney may be the same. For purposes of notice in certain cases, however, the Patent Office continues to recognize an attorney as a medium of communication with his client after the business for which he was appointed is completed.

§ 435. Authorized Attorney the Sole Medium of Communication between Patent Office and Inventor: his Rights and Duties.

After the filing of the written power of attorney in the Patent Office, all its correspondence with the inventor takes place through his attorney. The attorney has a right to inspect the papers in his case while in the custody of the Office, and is allowed to consult with the examiners and their assistants in regard to questions which arise concerning it in their departments. In all his dealings with the Patent Office he is required to conduct himself with courtesy and decorum ; and written applications, arguments or other documents, containing anything in violation of this requirement, will ordinarily be returned to him without action. In his dealings with his client he is subject to the general rules of

4 That when an entire invention is assigned before application, and the attorney has received his power from the inventor alone, the power must be ratified by the assignee or a new attor ney appointed, see Ex parte Ackerman (1880), 17 O. G. 1036.

§ 434. That the authority of an attorney is not continuous, but ends when the application ends, see Hoosier Drill Co. v. Ingels (1879), 15 O. G. 1013.