§ 581. Substituted Applications are Continuations of the Orig inal and Bear its Date. It is immaterial how many of these substituted applications may be filed, or for how long a period such efforts to obtain a patent may be continued. The patent, when granted, will rest on the original application, as represented in its various successors, unaffected by the intermediate conduct of third parties or the current of events, unless some legislative act, embracing it in its provisions, has been passed.' New applications, after rejection or withdrawal, may be made by the original applicant, or if he has meanwhile deceased, by his personal representatives.2 § 582. Allowance of Patent: Notice to Applicant. Whenever by the decision of the examiner, or on appeal, it appears that the applicant is entitled to a patent, a notice of its allowance is sent to him, calling for the payment of the final fee within the period of six months as required by the statute, and if the fee is paid within this period the patent is prepared for issue. Until such notice to the applicant the patent is not "allowed" within the meaning of the law, nor does the case pass beyond the examiner's control, nor does the six months' period begin.1 After notice is given of an allow by his acts, and whether the new application is substantially for the same invention which was originally claimed. If the two applications are found to be continuous, and it has been therefore proved that the delay in making the new application, after the rejection of the first, has not been unreasonable, under the circumstances of the case, and if the invention has not been abandoned to the public, the public use, in order to invalidate the patent, must be a use prior to the original and continuing application. Public or common use subsequent to the date of the original application, if that has been a continuing one, and the two petitions are 'parts of the same transaction,' will not avoid the patent." 2 Bann. & A. 364 (368). See also Bevin v. East Hampton Bell Co. (1871), 5 Fisher, 23; 9 Blatch. 50. § 581. That in a series of applications the first is the one on which the patent depends, see Pelton v. Waters (1874), 7 O. G. 425; 1 Bann. & A. 599. 2 That when an inventor dies pending an application, his administrator or executor may file a new one, if such course does not affect the rights of third parties, see Rice v. Burt (1879), 16 O. G. 1050. § 582. 1 That a patent is not " passed and allowed" until the applicant or his agent is so notified under Sec. 4885, and up to that date the case is still controlled by the examiner, see Ex parte Starr (1879), 15 O. G. 1053. That the formal judgment of the ex ance the case will not be withdrawn from issue except on the approval of the Commissioner, and if withdrawn for further action on the part of the Patent Office, and then allowed, a new notice of allowance must be given. After the final fee has been paid, and the case has received its date and number, it cannot be withdrawn for any purpose except on account of mistake on the part of the Office, or fraud or illegality in the application, or for interference proceedings. For these purposes the application is regarded as pending until the letterspatent are delivered.2 § 583. Allowance of Patent not Binding on Commissioner un til Letters-Patent are Issued: Mandamus. The allowance of an application by the examiner, or by the examiners-in-chief upon appeal, does not oblige the Commissioner to grant the patent for which it prays. The law empowers him to withhold a patent whenever in his judgment the invention is not patentable, or the issue of the patent is forbidden by the statutes, or the patent if granted would probably be held invalid by the courts.1 aminer is expressed by signing the filewrapper and sending it to the Issue Division, and until this is done the case is under his control, see Ex parte Buell (1884), 26 O. G. 437. That until the file-wrapper is signed and the application forwarded to the Issue Division the case is not decided by the examiner, whatever opinion he may have expressed or whatever advice his predecessor may have given, see Ex parte Fredericks (1887), 40 O. G. 691. 2 That an application is pending until the patent is actually delivered, see Ex parte Lawrence (1879), 16 O. G. 955. § 583. 1 In Ex parte Hunt (1878), 13 O. G. 771, Schurz, Sec.: (771) "Until the seal is affixed the patent is not complete, and whether it shall be affixed or not in a given case, or in any case, where the merits of the application are directly brought to your attention, is a question which you must judicially This power is not to be exer determine in the discharge of your official duty. After a patent is regularly allowed and signed, however, this right to refuse the attaching of the seal, so as to give the patent validity, should not be exercised except in extreme cases, where to attach it would be manifestly a violation of your duty as a public officer; but where, as in this case, it appears that the patent, erroneously allowed by one of your subordinates, contains Claims which are neither novel nor meritorious and are manifestly old, although no fraud has been practised, I am of the opinion that it is your duty, although the patent may have been signed, to withhold the seal of your Office." In Hull v. Commissioner (1875), 7 O. G. 559, Wylie, J.: (559) "The first question for the court to determine in the present case is this: Whether, in an ex parte application for a patent, the Commissioner possesses any author cised unnecessarily, nor to delay the patent in order that some collateral controversy may be judicially determined. The remedy of the applicant against the Commissioner for an im ity, under the law, to withhold a patent in opposition to the report of a primary examiner, or the report of the Board of Examiners-in-Chief in its favor; in other words, whether, in such a case, the decision of the primary examiner, if favorable to the patent, is conclusive upon the Office, and if unfavorable, and the applicant has carried his case by appeal before the Board of Examiners-inChief, and there obtained a favorable decision, this latter decision is conclusive, so that nothing is left to the Commissioner except the ministerial act of countersigning and affixing the seal of the Office to the parchment. The petitioner for this writ claims that, according to the organization of the Patent Office, the question of the patentability of an alleged invention is to be referred for examination first to one of the primary or assistant examiners. If his decision be unfavorable, the applicant has the right to appeal to the examiners-inchief. If their decision should also be unfavorable, he has the right of appeal to the Commissioner; and should the Commissioner's decision be unfavorable, the right of still further appeal to this court. In all this the petitioner's views of the law are correct; but he also claims that because his application is ex parte, and no one can take the appeal but himself, and nobody will ever appeal from a decision in his own favor, that the first favorable decision he obtains at any stage of the proceedings must be conclusive on the Office, since the case can go no further except by appeal. This view of the law we think is not correct." 2 MacArthur, 90 (102). See also Opinion Atty. Gen. (1849), 5 Op. At. Gen. 220. That under Sec. 4885 the Commissioner alone is to award the patent, and he should withhold it even when the application has been allowed by the examiners if he considers its issue unlaw ful, see Ex parte Neale (1879), 15 O. G. 511; Smith v. Perry (1875), 9 O. G. 688. That the knowledge of the Commissioner that the patent ought not to issue must be legal knowledge derived from sources recognized as evidence by the courts, see Smith v. Perry (1875), 9 O. G. 688. That after the Commissioner has decided that an applicant is entitled to a patent he may reconsider his decision and withhold the patent for reasons satisfactory to himself, and no mandamus can then compel him to issue it, see United States v. Butterworth (1884), 3 Mackay, 229; 27 O. G. 519. 2 That the Commissioner should not withhold a patent after the application has been allowed by the examiner, unless he deems it necessary, see Disston v. Frank (1872), 1 O. G. 305. That an allowed application cannot be suspended by the Office unless some reference, publication, public use, or interference is alleged, see Ex parte Atwood (1888), 44 O. G. 341. That the Commissioner should not withhold a patent merely to allow other proceedings in court to be determined, see Ex parte Sargent (1877), 12 O. G. 475. That the relation between a process and its apparatus is not that of genus and species, and an application for the former cannot be suspended after allowance on the ground of an interference between an application for its apparatus and other apparatus, see Ex parte Atwood (1888), 44 O. G. 341. That a patent cannot be withheld on moral grounds, see Opinion Atty. Gen. (1812), 1 Op. At. Gen. 170. proper exercise of this power is by a writ of mandamus, directing the Commissioner to award the patent. A mandamus will not be granted to compel the Commissioner to perform. acts which the law leaves to his discretion. When granted it is conclusive only on the Patent Office and the public, not on other claimants of the invention.4 § 584. Application Forfeited by Failure of Applicant to Pay Final Fee: Application after Forfeiture. The failure of the applicant to pay the final fee within six months after the notice of allowance forfeits the application, That where the Commissioner refuses to issue a patent which he has once properly allowed, the remedy is by mandamus unless his refusal is based on a matter within his judicial discretion, see Butterworth v. Hoe (1884), 112 U. S. 50; 29 O. G. 615; Hull v. Commissioner, (1875), 7 O. G. 559; 2 MacArthur, 90. That a mandamus will not lie against the Commissioner when the matter is within his discretion, see United States v. Marble (1882), 22 O. G. 1365; Bigelow v. Commissioner (1875), 7 O, G. 603; 2 MacArthur, 24. That if the Commissioner having decided to issue a patent does not change his decision, and still unreasonably delays to issue the patent, a mandamus will lie, see United States v. Butterworth (1884), 3 Mackay, 229; 27 O. G. 519. That the delay of the Commissioner to let the opinion of the Secretary of the Interior be taken is not an act of discretion but of deference, and a manda. mus will lie, see United States v. Butterworth (1884), 3 Mackay, 229; 27 0. G. 519. That a Commissioner, having made return to a mandamus that he withholds the patent merely to await the action of the Secretary of the Interior, cannot afterwards claim that he desires to rehear the case himself, see Gill v. Scott (1884), 23 0. G. 949. the Commissioner unless he refuses to issue the patent after the Secretary of the Interior has signed it, see Whitely v. Fisher (1870), 4 Fisher, 248. That a mandamus against the Commissioner pending in the Supreme Court of the District, to which the Commissioner has duly made his return, is not affected by the laches of the petitioner, see Withington v. Locke (1878), 15 0. G. 426. That the resignation of the Commissioner, after a return made on the mandamus, will abate it, see Withington v. Locke (1878), 15 O. G. 426. That the refusal of the Commissioner to award a patent, on grounds within his discretion, may be reviewed by a bill in equity, see Hull v. Commissioner (1875), 7 O. G. 559; 2 MacArthur, 90. That on a bill in equity the courts may authorize but cannot compel the Commissioner to issue a patent, see Vermont Farm Machine Co. v. Marble (1884), 20 Fed. Rep. 117; 22 Blatch. 128; 27 O. G. 622. That a bill in equity to obtain a patent is not a substitute for a mandamus, see United States v. Butterworth (1884), 3 Mackay, 229; 27 O. G. 519. 4 That where the court orders the Commissioner to issue a patent the order is conclusive only against the public, not against other applicants, see Cruikshank v. Strong (1880), 17 O. G. That proceedings will not lie against 511. and no patent can be issued thereon. At any time, however, within two years after the notice of allowance has been given, the applicant, or any other person interested in the invention as its inventor or assignee, may file a new application for the same invention, using the original oath, petition, specification, drawing and model, if he pleases, but paying a new fee.1 This second application is not considered as a continuation of the former, but will bear date from the time of the renewal, and will be examined and passed upon like an original application.2 In its examination the novelty of the invention will be determined by the state of the art when the original was filed, not by its present state as in the case of an application wholly new, and the question of abandonment will be investigated and de § 584. 1 That where a patent has been forfeited for non-payment of the final fee, a renewal application may be filed within two years, but not afterward, see Ex parte Hardy (1877), 12 O. G. 1075; Ex parte McCully (1874), 6 O. G. 153. That failure to pay the final fee is an incurable forfeiture, though unavoid able, see Ex parte Barnitz (1887), 41 O. G. 575. That notwithstanding Ex parte Barnitz (41 O. G. 575), a new original application may be filed after two years, see Ex parte Barnitz (1888), 42 O. G. See also Thomson v. Waterhouse (1884), 30 O. G. 177. 1061. That after two years' delay there can be no renewal application, see Thomson v. Waterhouse (1884), 30 O. G. 177. That a renewal application is like a motion to revive a judgment, see Thomson v. Waterhouse (1884), 30 O. G. 177. That an assignee of the invention before patent has a right to renew an application after a former one by the inventor has been forfeited, see Ex parte Eveleigh (1872), 1 O. G. 303. That an assignee may make and swear to a renewal application, see Thomson v. Waterhouse (1884), 30 O. G. 177. That the renewal of an application by a person not the attorney of record, without the knowledge of the applicant, is void, see Consolidated Fruit Jar Co. v. Bellaire Stamping Co. (1886), 27 Fed. Rep. 377; 35 O. G. 627. That the ratification of an unauthorized act of an attorney in renewing an application cannot affect intervening rights, see Consolidated Fruit Jar Co. v. Bellaire Stamping Co. (1886), 27 Fed. Rep. 377; 35 O. G. 627. That there is no rule or statute which authorizes an applicant to forfeit an allowed application, file a renewal within six months, and pay the application fee, as if a forfeiture had already oc curred, see Ex parte Manny (1888), 44 O. G. 700. 2 That a renewal application within two years in lieu of a forfeited one, under Sec. 4897, is for some purposes a continuation of the other and relates back to it, taking its date, see Thomson v. Waterhouse (1884), 30 O. G. 177. That where an application was allowed Dec. 22, 1877, and forfeited for non-payment, but renewed Feb. 4, 1879, the renewal was regarded as a new application and stood on its own date, as to two years' public use, see Weir v. Morden (1884), 29 O. G. 83. |