application, therefore, can result in an abandonment of the invention only by the occurrence of circumstances, after it is filed and before the filing of a new one, which would have been fatal to any application had they transpired before it had been made; and the risk incurred by the inventor depends upon the fact that by the abandonment the date of the application on which his patent rests is transferred from the day on which the original application was filed to the day on which the new one was presented to the Patent Office. In the absence of such intervening circumstances, the trouble and expense of making the new application is the sole consequence of abandoning the former.

§ 575. Application Abandoned by Unreasonable Delay: Delay

of Two Years from "Last Action" Unreasonable.

Prior to the act of 1861 this question of the abandonment of the application by delay was determined upon general principles regarding diligence and good faith with the public. By that act, however, it was provided that all applications must be completed and prepared for examination within two years after the filing of the petition, and in default thereof should be considered as abandoned by the applicants, unless the Commissioner were satisfied that the delay was unavoidable. This provision was re-enacted in the act of 1870, and appears in the Revised Statutes, with the addition that a failure to prosecute the application within two years after any action thereon, of which notice has been given to the applicant, shall also work its abandonment.

8 If the doctrine of estoppel is to be applied to a negligent inventor, either in favor of the public or a rival inventor, under the circumstances discussed in §§ 346 note 1, 357 note 3, and 390 note 3, ante, any unreasonable delay in prosecuting a pending application, which can affect adverse interests, may properly be brought within the same rule, and forfeit his right to any further consideration of his claims.

§ 575. 1 In Goodyear v. Hills (1866), 3 Fisher, 134, Cartter, J.: (138) "Is

It is thus made the

it the law that because an inventor files his application, which is refused by the Office, he may sleep upon his rights indefinitely, and that at any period in his lifetime, or that of his representatives, the application may be revived against the public? I think not. Prima facie, I think he would have to show a reason why he should be so permitted. The judgment of condemnation by the Office advertises to the country, at least, that he stands in no better position than before the application was made. The

duty of the applicant to complete his application by the presentation of all its parts to the Patent Office, and to prepare it for examination within two years after he files his petition, and also to take some active steps in prosecuting it within two years after the last action of the Office concerning it of which he has notice, under pain of having his application treated as abandoned, unless he can affirmatively satisfy the Commissioner that the delay could not have been avoided." But this provision of the statutes does not confer upon the applicant a right to two years of inaction between each action of the Patent Office. Unreasonable delay for any period is still abandonment. These statutes merely declare that a delay of two years is prima facie unreasonable, and thus throw

country is advised, by the deliberation of the only tribunal provided by law for the ascertainment, at that stage of the invention, of his right, that he has none. More especially is he himself advised of that fact, for he is a party to the proceedings, and more immediately damnified by the rejection of the application. That rejection would at least be regarded, in the logic of equity, as a notice to him to proceed with diligence to traverse and reverse the judgment of the Office."

That under Sec. 4894 a failure to prosecute an application for two years abandons it, see Ex parte Klenha (1884), 28 O. G. 1272.

That under the provision in Sec. 35, act of 1870, allowing six months after the date of that act for the renewal of withdrawn or rejected applications, an application filed in 1845, withdrawn in 1847, and not subsequently acted on, became dead, see Ex parte Cryer (1880), 17 O. G. 452.

That this saving clause of the act of 1870 could be made available to the rejected applicant only by filing a formal renewal of the old application, see Ex parte Gordon (1874), 6 O. G. 543.

That the omission of Sec. 35, act of 1870, from the Revised Statutes did not

2 That under Sec. 4894 (Sec. 32, Act 1870), a rejected application is abandoned if not prosecuted within two years, but a new one may be filed which will stand alone, unaided by the other on questions of abandonment, see Lindsay v. Stein (1882), 20 Blatch. 370; 21 O. G. 1613; 10 Fed. Rep. 907.

That eight years' delay after the rejection of an application without renewing it, other patents for substantially the same invention being granted meanwhile, operates as an abandonment, see United States Rifle & Cartridge Co. v. Whitney Arms Co. (1886), 118 U. S. 22; 35 O. G. 873.

That a rejected application leaves the applicant where he was when the application was made, but notifies him to proceed with due diligence, see Goodyear v. Hills (1866), 3 Fisher, 134.

That an abandoned application is not further noticed by the Patent Office, see Ex parte Casilear (1875), 8 O. G. 474.

upon the applicant the burden of proving that in his particular case the delay was justified.3 In discussing them it will be sufficient to inquire what is meant by the "last action" of the Patent Office; what degree and duration of inactivity on the part of the applicant will abandon his application; and what reasons are sufficient to excuse delay. Whatever concerns the completion of the application and its preparation for examination has been already considered in its proper place.

The last action," from which the period of two years dates, is the last interlocutory action of the Patent Office

affecting the progress of the application, followed by the mailing of a notice of such action to the applicant. Such mere ministerial acts as sending a letter in reply to a request for information, or for the return of papers or a model, do not constitute the action mentioned in the statute.2 Every application pending in the Patent Office is presumed to be awaiting some act, either on the part of the Office or of the applicant, which will advance it to the next stage of the proceedings; and the action performed by the Office in its turn, and rendering it necessary for the applicant to act in order that further progress may be made, is the “last action" from which the period of his delay must be computed. A "suspension of action" by the Office implies further action, and does not constitute the "last action" here described.3

§ 577. "Inaction" of Applicant Defined.

The "inaction" of the applicant is, correspondingly, his failure to perform the act devolving upon him in order to advance his case. Whatever else he may do is of no consequence in reference to this question. Letters of general inquiry, the presentation of unimportant amendments, and other similar acts do not prevent the two years from running against his application.1 His action must be one which renders it incumbent on the Office to take action in its turn, or

§ 576. 1 That in a rejected applica tion the "last action" of the Patent Office is the mailing of the last letter of rejection to the applicant, and unless he takes further action, within two years from that date, the application is abandoned, see Ex parte Blake (1873), 3 O. G. 2.

2 That "last action" is some action affecting the merits of the case, not mere ninisterial action, see Ex parte Graham (1873), 3 O. G. 211.

That an answer to a request to return a model is not "last action," see Ex parte Lee (1874), 5 O. G. 58.

That "suspension of action" implies further action, see Ex parte Hull (1875), 9 O. G. 1.

§ 577. That after final rejection, without appeal, unimportant amendments will not keep the application alive in the Patent Office, see Ex parte Jenks (1878), 14 O. G. 747.

That irregular and illegal modes of procedure do not keep an application alive and prevent its abandonment, see Kirk v. Commissioner (1886), 37 O. G. 451; 5 Mackay, 229.

That the suspension of an application at the request of the applicant, and at his option to proceed with it, is "inac tion," and unless taken up within two years it is abandoned, see Ex parte Norton (1888), 42 O. G. 296.

the delay is clearly imputable to him and he must bear the loss which it entails.2 In computing the two years of his inactivity, the day on which the "last action" of the Patent Office was performed is excluded.3

§ 578. Unavoidable Delay not Unreasonable.

The inaction of the applicant, however protracted, cannot prejudice his application if the delay was unavoidable. Of this the Commissioner is made the final judge, though the question as to an abandonment of the invention itself by an unreasonable delay of the application in the Patent Office may always be raised and adjudicated in the courts. No applicant can justly be regarded as responsible for a delay which he could not avoid. If he is urging his application as rapidly as under all the circumstances he is able to do, he cannot be considered as abandoning it.2 Thus poverty or sickness, or

2 That a bill in equity to obtain a patent, though not a technical appeal from the Patent Office but a true suit in equity, is still a part of the application for a patent, see Gandy v. Marble (1887), 122 U. S. 432; 39 O. G. 1423.

That delay in filing a bill in equity to obtain a patent for more than two years since the last action must be shown to be unavoidable, or it will work an abandonment, see Gandy r. Marble (1887), 122 U. S. 432; 39 O. G. 1423.

3 That in computing the two years the day of "last action" is excluded, see Ex parte Musser (1879), 16 O. G.

858.

§ 578.1 That the decision of the Commissioner, that delay in prosecuting an application was unavoidable, is final, see U. S. Rifle & Cartridge Co. v. Whitney Arms Co. (1877), 14 Blatch. 94; 11 O. G. 373; 2 Bann. & A. 493; McMillin v. Barclay (1871), 5 Fisher, 189; 4 Brews. (Pa.) 275.

That under Sec. 4894 the Commissioner's discretion is judicial, not a mere whim, and the evidence must show that the delay was unavoidable,

see Ex parte Chapman (1884), 29 O. G. 950.

That "unavoidable delay" must be clearly proved, see Ex parte Klenha (1884), 28 O. G. 1272.

That under Sec. 4894 the evidence is to be heard by the Commissioner in person, see Smith v. Dimond (1881), 20 O. G. 742.

That too great leniency to delaying applicants, to the prejudice of the public, must not be allowed, see Ex parte Klenha (1884), 28 O. G. 1272.

That the decision of the Commissioner, that the invention has not been abandoned by delays in the application, is not conclusive on the courts, see Planing Mach. Co. v. Keith (1879), 101 U. S. 479; 17 O. G. 1031; U. S. Rifle & Cartridge Co. v. Whitney Arms Co. (1877), 14 Blatch. 94; 11 O. G. 373; 2 Bann. & A. 493.

2 That if the applicant is prosecuting his case as rapidly as he is able, no delay will abandon it, see Ex parte Barnitz (1887), 41 O. G. 575; Goodyear Dental Vulcanite Co. v. Smith (1874), 5 O. G. 585; Holmes, 354;