and an unexpired patent. Where patents already granted conflict with one another, the Patent Office has no authority over them, and the rival patentees must seek the solution of their difficulties in the courts. Where a patent has expired the patentee has no longer any right requiring protection or which he can be called upon to vindicate as against later applications.2 Forfeited and abandoned applications have no standing in the Patent Office as the basis of any claim or the allegation of any right on the part of their applicants, and are not noticed in the examination of other applications. The jurisdiction of the Patent Office extends to applications alone, and to those only while actually pending before it. Its judgment upon an interference can affect only the applicant to whom it refuses or allows a patent, a rival claimant who has previously obtained a patent continuing to hold it until it is declared invalid by the courts although the later applicant has proved his own priority before the interference tribunal and received his patent.5

§ 588. 1 That an interference between two or more patents cannot be adjudicated in the Patent Office, see Nicholson v. Bennett (1879), 16 O. G. 631; Wilson v. Yakel (1876), 10 O. G. 944.

2 That an interference cannot be declared against an expired patent, see Ex parte Mason (1876), 9 O. G. 1196.

8 That no interference can be declared with forfeited or abandoned applications, see Starr v. Farmer (1883), 23 O. G. 2325; Opinion of Acting-Com. (1877), 12 O. G. 979; Ex parte Spear (1874), 5 O. G. 201.

4 That an interference is declared whenever the Claims of a pending application conflict with those of another application or an unexpired patent, see Sawyer v. Edison (1883), 25 O. G. 597; Western Electric Light Co. v. Chicago Electric Light Mfg. Co. (1882), 11 Bissell, 427; 14 Fed. Rep. 691; Little v. Lillie (1876), 10 O. G. 543.

an interference with an unexpired domestic patent till he has been rejected thereon, see Ex parte Massicks (1887), 38 O. G. 1489.

That an interference should be declared between an application and an unexpired patent, although the applicant's foreign patents are older than the conflicting patent, see Ex parte Bland (1879), 16 O. G. 47.

That in an interference it is no advantage to have a patent unless the patentee is the original inventor, see Ex parte Russell (1874), 5 O. G. 149.

That an interference becomes necessary because the dates of conflicting applications are not conclusive on the question of priority, see Thomas v. Reese (1880), 17 O. G. 195.

That a judgment against a patent, in an interference case, does not annul the patent, but simply awards a patent to the rival, see C. A. Yale Cigar Mfg. That an applicant is not entitled to Co. v. Yale (1884), 30 O. G. 1183.

§ 589. Interference Proceedings Instituted only between Conflicting Applications, or between an Application and a Conflicting Patent.

An application does not conflict with another application, or an unexpired patent, unless the invention covered by each specification is substantially the same. Similarity or diversity in name and appearance are of no consequence.2 Every invention occupies toward every other the relation either of identity or of equivalence or of specific difference or of generic difference. Applications for identical or equivalent inventions are applications for the same invention. Applications for of an interference until after the conflict appears specifically in the Claims. The foregoing cases, and also the following, should be read in view of this change in the rule.

§ 589. 1 That patents or applications conflict only when they claim, in whole or in part, the same invention, see Ex parte Lasscell (1881), 28 O. G. 1274; Sawyer v. Edison (1883), 25 O. G. 597; Drawbaugh v. Blake (1883), 23 O. G. 1221; Gold & Silver Ore Separating Co. . U. S. Disintegrating Ore Co. (1869), 3 Fisher, 489; 6 Blatch. 307; Marvin v. Lillie (1867), 27 O. G. 299.

That on an interference the Claims actually made are considered, but the examiner must have regard to the whole specification and to the Claims which might be made, see Ex parte Wheeler (1883), 23 O. G. 1031.

That the rules governing interferences should be liberally construed, so that patents may be restricted to such inventions as the patentees can justly claim, see Drawbaugh v. Blake (1883), 23 O. G. 1221.

That if an applicant claims anything covered by a prior patent the patentee must be notified, and have a chance to contest it, see Marvin v. Lillie (1867), 27 O. G. 299.

Under former rules of the Patent Office, an interference was declared where applications might be amended so as to inelude conflicting Claims, though the conflicting matter were not claimed in the application at the time the interference was instituted. At present the rules forbid the declaration

2 That an interference should be declared when the inventions conflict though the Claims do not, see Drawbaugh v. Blake (1885), 30 O. G. 259.

That immaterial differences in the Claims of conflicting applications will be disregarded, and an interference declared, if the matter claimed is substantially the same, see Drawbaugh v. Blake (1883), 23 O. G. 1221.

That the subjects of an interference are things not words, see Ex parte Upton (1884), 27 O. G. 99; Greenough v. Drummond (1879), 16 O. G. 586; Nicholson v. Bennett (1879), 16 O. G. 631; Drummond v. Greenough (1879), 16 O. G. 959.

That an interference may exist though the inventions have different names, see Hoe v. Scott (1878), 14 O. G. 447.

That inventions interfere if they are equivalents for each other, though they differ in appearance, see Withington v. Locke (1877), 11 O. G. 417.

That an application for a design may interfere with one for a mechanical invention, if both claim the same subjectmatter, see Collender v. Griffith (1873), 30. G. 91.

inventions generically different are wholly distinct and independent of each other. Applications for inventions specifically different are distinct and independent, unless the inventor of one species also claims the genus to which both belong and the inventor of the other species fails to disclaim it in his application. An interference can, therefore, be properly declared only when the inventions, as described and claimed in the applications or the patent, are identical or equivalent, or where being specifically different they do involve, or may involve, a claim to the generic invention in which both are embraced. It is not, however, necessary that the scope of the Description or the subject-matter of the Claims, as presented in each patent or each application, should be the same. If that which is described in one is contained within the Description of the other, or if the Claims of one could by amendment be lawfully incorporated in the other, the inventions are sufficiently identical to warrant this proceeding.5

8 In Banks v. Snediker (1880), 17 O. G. 508, Paine, Com. : (510) "The relation of two interfering inventions to each other must, in contemplation of law, always be either that of (1) iden. tity, or (2) equivalence, or (3) specific difference, or (4) generic difference. In the first two classes of cases the earlier is absolutely fatal to the later invention; in the fourth, it presents no obstacle to the patentability of the later invention; in the third, the prior invention is no bar to a specific patent for the later invention, subject to a generic patent covering both species.”

That no interference should be declared unless an applicant claims what has been granted to or applied for by another, see Ex parte Platts (1879), 15 O. G. 827.

That where one application claims the genus and another the species, they will interfere unless the latter disclaims the genus, see Ex parte Gardner (1880), 17 O. G. 626.

That a patent with a Claim for a species will not be granted while an ap

plication claiming the genus is pending, unless after an interference hearing, see Ex parte Upton (1884), 27 O. G. 99; Ex parte Holt (1884), 29 O. G. 171.

That where one Claim includes the other an interference should be declared, see Ex parte Upton (1884), 27 O. G. 99.

That if a narrow Claim be included in a broad Claim an interference is the proper method of determining who is entitled to the broad Claim, see Ex parte Upton (1884), 27 O. G. 99.

That Claims for inventions which are mere double uses interfere, see Drawbaugh v. Blake (1883), 23 O. G. 1221.

That a Claim for carrying an invention into use in a specific way does not interfere with a Claim for the invention itself, see Drawbaugh v. Blake (1883), 23 O. G. 1221.

That a single Claim in one application may interfere with several Claims collectively in another, see Drawbaugh v. Blake (1883), 23 O. G. 1221.

That applications conflict with each

§ 590. Interference Proceedings Instituted only when the Later Applicant Claims Priority of Inventive Act.

An interference cannot be instituted between conflicting applications, or between an application and a conflicting patent, unless the later applicant claims that his own inventive act preceded that of the former applicant or patentee.1 Where a conflicting patent has been issued before the filing of the rival application this claim to priority must be explicitly stated. The grant of letters-patent raises a presumption of priority in favor of the patentee against all future applicants, and their applications are, therefore, rejected by the Patent Office on a reference to a prior patent, unless the applicant avers upon his oath that his inventive act anticipated the filing of the application upon which the patent was allowed. This presumption extends to every application for re-issue based

other when anything that is shown in one is claimed in the other, see Bell v. Gray (1879), 15 O. G. 776.

That an application conflicts with a patent when it claims anything shown by the patent, see Bell v. Gray (1879), 15 O. G. 776; Marvin v. Lillie (1867), 27 O. G. 299.

That two applications for combinations, one wanting an element of the other but otherwise identical in operation and effect, interfere, since the lesser anticipates the larger, and the interference can be prevented or dissolved only when the applicant for the lesser disclaims the larger, see Banks v. Snediker (1880), 17 O. G. 508.

That where a design can be produced only by a certain device, an application for the latter conflicts with a patent for the former and an interference should be declared, see Collender v. Griffith (1873), 3 O. G. 91.

That no interference will be declared with an improper divisional application, see Ex parte Holt (1884), 29 O. G.

171.

§ 590. 1 That an interference will not be declared between pending applica

tions, or an application and an unexpired patent, unless the later applicant claims priority under oath, see Thomas v. Reese (1880), 17 O. G. 195; Ex parte Nagel (1880), 17 O. G. 198.

That where the record conclusively establishes priority no interference should be declared, see Ex parte Nagel (1880), 17 O. G. 198.

That the application-oath has nothing to do with priority, see Sellon v. Hochhausen (1885), 33 O. G. 995.

That in order to obtain an interference with a patent, an applicant must make oath that he completed his invention before the patentee's application was filed, and must state the facts which prove it, and not merely aver that he invented before the patent issued, see Ex parte Graydon (1883), 25 O. G. 192.

2 That in a conflict between an ap plication and a patent, the patent makes a prima facie case for the patentee, see Paul v. Dorland (1873), 4 O. G. 552.

That an applicant in conflict with a prior patent must show that he was the first to conceive and used reasonable diligence in reducing to practice, see Hammond v. Laird (1874), 7 O. G.170.

upon such prior patent, which must prevail over all other applications, whether original or based on later patents, unless the later applicant alleges and proves his own priority. No such presumption, however, exists in favor of one pending original application against another, or of a patent granted after the filing of its rival application, or of a re-issue application based upon a patent issued after the antagonistic application had been filed. Each of such conflicting applications is regarded as hostile to the others, and so asserting a priority in favor of its own individual applicant against all the rest.

§ 591. Interference Proceedings Instituted in Nine Special

Cases.

In accordance with these principles an interference can be instituted in the following cases: (1) Between two or more original conflicting applications; (2) Between an original application and an unexpired patent granted during the pendency of such original application; (3) Between an original application and an application for the re-issue of a patent granted during the pendency of such original application; (4) Between two or more applications for the re-issue of patents granted on applications pending at the same time; (5) Between an original application and an unexpired patent, granted before such application had been filed, provided the applicant, after the rejection of his application upon reference to the patent, avers on oath that he made the invention before the original application of the patentee was filed; (6) Between an original application and an application for the re-issue of a patent granted before such original application was filed, provided the applicant avers on oath that he made the invention

8 That an interference is declared whenever the oath and application of one claimant is neutralized by the oath and application of another, see Little v. Lillie (1876), 10 O. G. 543.

4 That where one of two contesting applicants has obtained a patent an interference may be declared nunc pro tunc, see Ex parte Marston (1882), 21 Q. G. 633.

That an "unexpired patent" means one granted before the conflicting appli cation was filed, see Ex parte Marston (1882), 21 O. G. 633.

That conflicting applications are hos tile, whenever filed, and the premature issue of a patent to one does not affect the rights of the other, see Ex parte Marston, (1882), 21 O. G. 633.