sioner, and the court having cognizance thereof, after due hearing according to the usual course of equity proceedings, may adjudge that the applicant is entitled to a patent for the whole invention claimed, or for some separable part of it, as the facts may appear. Such an adjudication will authorize decided. It also exists where, on an appeal to the Commissioner in an interference proceeding, the applicant has been defeated. The doctrine and notes of this paragraph, (§ 571) apply chiefly to the former case. The latter is considered in § 604 and notes, post. That under Sec. 4915 a bill in equity lies upon the refusal of a patent by the Commissioner or the Supreme Court of the District, see In re Squire (1877), 3 Bann. & A. 133. That the remedy in equity to obtain a patent under Sec. 4915, applies only where the Commissioner or Court decides to reject an application on the ground that the applicant is not, on the merits, entitled to it, see Butterworth v. Hoe (1884), 112 U. S. 50; 29 O. G. 615. That an applicant in an ex parte case is not entitled to a bill in equity until he has exhausted his remedies by appeal, see Kirk v. Commissioner (1886), 37 O. G. 451; 5 Mackay, 229. That where the Patent Office rejects an application the remedy is by bill in equity, not mandamus, see Hull v. Commissioner (1875), 7 O. G. 559; 2 MacArthur, 90. That where a patent is allowed by the Office, but the Commissioner, without denying the right of the applicant, refuses to issue it, mandamus will lie, see Butterworth v. Hoe (1884), 112 U. S. 50; 29 O. G. 615; and cases cited under § 583, note 3, post. That the power of the Circuit Court to grant a patent upon a petition is independent of the powers of the Patent Office, see Whipple v. Miner (1883), 15 Fed. Rep. 117; 23 O. G. 2236. It has been held that a bill in equity to obtain a patent could be brought in any circuit, and that the Commissioner might bind himself and his successors by appearing or accepting service. Vermont Farm Mach. Co. v. Marble 1884), 22 Blatch. 128; 27 O. G. 622; 20 Fed. Rep. 117. But the contrary has been decided by the Supreme Court of the United States in Butterworth v. Hill (1884), 114 U. S. 128; 31 O. G. 1043; where it is declared that the Commissioner's official residence is at Washington, that he can be sued only in the District of Columbia, and that he cannot waive the question of jurisdiction by appearance, consent, or default. Further, that a bill to obtain a patent must be brought in the Circuit Court for the District of Columbia, the courts of other districts having no power to enforce decrees against the Commissioner, see Prentiss v. Ellsworth (1846), 27 O. G. 623. 2 For the form of a bill to obtain a patent after rejection by the Patent Office, and other proceedings, see Ex parte Greely (1873), 6 Fisher, 575. That the Commissioner is not a necessary party to a bill in equity to obtain a patent, under Sec. 4915, where there is an opposing party, but a patentee who has transferred his interest must be made a party, see Graham v. Teter (1885), 25 Fed. Rep. 555. That in a bill in equity against the Commissioner the Secretary is not a party, see Kirk v. Commissioner (1886), 37 O. G. 451; 5 Mackay, 229. That a bill in equity to obtain a patent may be heard on any issues the Commissioner to issue a patent to the applicant, upon his filing in the Patent Office a copy of the judgment, and otherwise complying with the requirements of the law.3 572. Appeals in the Patent Office: their General Character and Effect. An appeal in the Patent Office is not like a writ of error, or a motion for a new trial, but resembles an appeal in equity or admiralty, and does not require for its justification that the judgment appealed from should contradict the evidence.1 Only questions that were properly within the jurisdiction of the inferior tribunal can be presented on appeal, and decisions affecting matters not within the cognizance of the Patent Office, such as matters of title, are not reviewable in any manner, but are simply void.2 No appeal lies from a judg ment wholly in favor of the appellant, nor from any judgment until it has been duly rendered in the required official form.3 The decisions of all inferior tribunals must be so ex and with any evidence, see Butler v. Shaw (1884), 21 Fed. Rep. 321. That equity will not aid the inventor in procuring a patent under Sec. 4915, in violation of his agreement with others, see Runstetler v. Atkinson (1883), 23 O. G. 940. That delay in suing in equity for a patent is delay in prosecuting an application, and the court may inquire into its reasonableness, see Gandy v. Marble (1887), 122 U. S. 432; 39 O. G. 1423. That a petitioner on a bill in equity to obtain a patent, after a delay of more than two years since the last action, must allege and prove that the delay was unavoidable, see Gandy v. Marble (1887), 122 U. S. 432; 39 O. G. 1423. 3 That a judgment in equity in a suit to obtain a patent binds only the parties and those who derive title from them, see Butler v. Shaw (1884), 21 Fed. Rep. 321. That where the Commissioner is the only defendant in a suit under Sec. 4915, the plaintiff pays the costs, but where there are contesting parties costs follow the usual rule, see Butler v. Shaw (1884), 21 Fed. Rep. 321. § 572. That an appeal in the Patent Office is not like a writ of error, but like an appeal in equity or admiralty, see Dickson v. Kinsman (1880), 18 O. G. 1225; Packard v. Sandford (1879), 16 O. G. 1182. That an appeal in the Patent Office is not like a motion for a new trial, and the judgment below need not contradict the evidence, see Dickson v. Kinsman (1880), 18 O. G. 1225. That the court below did not give due weight to evidence is ground of appeal, see Slade v. Blair (1879), 15 O. G. 830. 2 That no appeal lies from the refusal of the Commissioner to recognize an assignee as entitled to the patent, or on any other question of title, see Whitely v. Fisher (1870), 4 Fisher, 248. That no appeal lies from a judg plicit that the subject of the appeal can be clearly distinguished. The appeal is limited to the issues apparent on the record, and brings up only the particular adjudications of which complaint is made.5 An appeal raising no issue will be summarily dismissed. If evidence is admitted during an appeal to support the claims of the applicant against the references and objections of the examiner, or to vary in any manner the issues of fact concerning the patentability of the invention, the whole case must be remanded to the examiner that he may pass upon it in its new condition. In an appeal from the examiners-in-chief to the Commissioner, he acts only in a judicial capacity and as a court of appellate jurisdiction." Cases decided by him on appeal will not be re-opened except by himself, and those which have been determined by his predecessors will not be reviewed except in accordance with the rules governing the granting of new trials.8 Cases decided by the examiners-in-chief cannot be reheard by them, when no longer pending before them, without the written authority of the Commissioner.9 § 573. Interviews of Applicants with Examiners: Motions: Procedure. The rules of the Patent Office generally direct that the communications between the ment affirming patentability, see Barney v. Kellogg (1880), 17 O. G. 1096. That a judgment is not effective until put into the proper official form, see Ex parte Starr (1879), 15 O. G. 1053. That the judgment below must be explicit, see Jenkins v. Barney (1873), 3 O. G. 119. 5 That an appeal is limited to the issues apparent on the record, see Ex parte Jones (1874), 5 O. G. 585; Jenkins v. Barney (1873), 3 O. G. 119. That on an appeal the presumption is in favor of the decision appealed from, see Packard v. Sandford (1879), 16 O. G. 1182. That an appeal raising no issue will be dismissed, see Ex parte Evarts (1874), 5 O. G. 429. That on an appeal from the ex Office and applicants or their aminers-in-chief, the Commissioner acts only in a judicial capacity, and as an appellate tribunal, see Stone v. Greaves (1880), 17 O. G. 397. 8 That one Commissioner cannot rehear a case decided by his predecessor except on new facts, see Gill v. Scott (1884), 29 O. G. 949. 9 That the Commissioner has power to revise the decisions of the examiners on motions for rehearings, but is less inclined to interfere when a rehearing is granted than when it is denied, see Loring v. Hall (1879), 15 O. G. 471. That on a motion for rehearing the question is whether the former findings are unsupported by, or are in conflict with, the evidence, see Gardner v. Dudley (1880), 18 O. G. 683. attorneys should take place in writing. Interviews with examiners concerning applications and other pending matters may, however, be had at the examiner's rooms, during office hours, or at any other time and place specially authorized by the Commissioner, although no personal discussion of a pending application is allowed until after the first official action thereon. Motions proper to be made at all must be made and determined by the tribunal before which the case is pending at the time;1 cases being regarded as pending before a given tribunal until an appeal from its decision has been taken, or until the time for an appeal has expired. An appeal from an adverse decision on a motion must be taken to the Commissioner if the motion involves only matters of form, but to the examiners-in-chief if it relates to matters of substance. A motion once made and determined without appeal cannot be renewed on the same facts.2 The conduct of each case is governed by the rules in force at its inception, unless new rules are adopted which can be followed without prejudice to the applicant, in which event the latter rules prevail.3 Changes in the nature or jurisdiction of any of the tribunals in the Patent Office do not interrupt the progress of pending applications, though the mode of their procedure may, to some extent, be changed.4 § 574. Abandonment of Application: not Abandonment of the Invention. The law requires the applicant to prosecute his application with reasonable diligence. After completing the invention he may delay the filing of his application at his pleasure; § 573. 1 That a motion based on a statutory bar to the granting of a patent may be made to the tribunal having charge of the application, when no other mode for taking the objection has been provided, see Barney v. Kellogg (1880), 17 O. G. 1096. cannot be repeated without leave, see Clemson v. Fowler (1886), 37 0. G. 671. 8 That where a rule is changed pending an application, the proceedings will be governed by the new rule unless the applicant would be injured thereby, see Fowler v. Benton (1880), 17 O. G. 266. 2 That a motion once decided without appeal cannot be renewed on the 4 That a change in the jurisdiction same facts, see Little v. Lillie (1876), of a tribunal does not necessitate a be10 O. G. 543. ginning de novo, see Colt v. Young That a motion once absolutely denied (1852), 2 Blatch. 471. but having filed it he cannot suffer it to lie indefinitely in the Patent Office, unacted on, without abandoning it. This abandonment of the application is not, however, an abandonment of the invention. By an abandonment of the invention the inventor loses all right to apply for and obtain a patent to protect it. By the abandonment of the application the inventor is placed in the same situation as if he had never filed one; and while he may again apply, his later application may be subject to objections which could not have been urged against the former, and in this manner indirectly his right to a patent may be lost. Thus a public use or sale, which would not have defeated the prior application, because not preceding it at least two years, may on account of the greater lapse of time become a bar to the latter; or a claim of want of novelty or of inventive skill, which could not have been sustained by the state of the art when the first application was filed, may be made good by the advanced state of the art at the date of the new application." The abandonment of an § 574. That an abandonment of the application does not ipso facto abandon the invention, see Lindsay v. Stein (1882), 20 Blatch. 370; 10 Fed. Rep. 907; 21 O. G. 1613; Ex parte Livingston (1881), 20 O. G. 1747; Clark v. Scott (1872), 2 O. G. 4; 9 Blatch. 301; 5 Fisher, 245; Bevin v. East Hampton Bell Co. (1871), 9 Blatch. 50'; 5 Fisher, 23; also § 353 and notes,ante. That Sec. 4894 does not apply to the same cases as Sec. 4897, the former relating only to the abandonment of the application, see Ex parte Golding (1875), 8 O. G. 141; Ex parte McCully (1874), 6 O. G. 153. That Congress can authorize the revival of an old application long after it is abandoned and a patent may then be granted thereon, the invention being examined in view of the state of the art when the application was originally filed, see Graham v. Johnston (1884), 21 Fed. Rep. 40. That a delay in prosecuting an application, after it was erroneously reVOL. II.-13 jected, was not abandonment of the invention before the act of 1870, see Ex parte Stewart (1873), 4 O. G. 665. 2 That an application, filed after the abandonment of a prior one, is open to all objections arising since the prior application was filed, see Ex parte Livingston (1881), 20 O. G. 1747. The effect of changes in the state of the art between the filing of the original and the renewed application is, of course, important only while the date of the application is regarded as the date of the applicant's inventive act. If publications, patents, or inventions, which have come into existence since his former application was filed, are cited against him, he may carry the date of his inventive act back of such advances in the art by extraneous proof, and thus maintain the patentability of his invention, so far as its novelty is concerned. The objection of an intermediate public use or sale cannot, however, be thus obviated, and may prove fatal to his claims. |