§ 604. Interference Proceedings: Appeal from Judgment of Priority. Unless appealed from, the decision of the examiner of interferences is conclusive upon all the parties to the interference. Such an appeal will lie only on some question involved in the issue of priority, and is taken in the first instance to the examiners-in-chief and from their adverse judgment to the Commissioner in person.2 An appeal in a grave error; but this error would not be corrected by granting the motion now made by the applicant. Two wrongs would not make one right. If the Office has committed a blunder by illegally issuing one patent, it cannot now correct that blunder by illegally issuing another. The action now must have reference to the present condition of the two cases. The existing patent, though prematurely issued, is beyond the control of the Office, and cannot be recalled. Another patent cannot be legally issued for the same invention, except upon interference trial it be shown that the applicant is the prior inventor. The motion of the applicant must, therefore, be refused." § 604. That an interference must first be heard before the examiner of interferences, see Farnsworth v. Andrews (1875), 9 O. G. 195. That the decision of the examiner of interferences is conclusive unless appealed from, see Whitely v. McCormick (1876), 10 O. G. 826; Jenkins v. Barney (1873), 3 O. G. 119. 2 That the relation of the examiner of interferences and of the examinersin-chief to the Commissioner is the same as that of one court to another, see Berry v. Stockwell (1876), 9 O. G. 404. That the jurisdiction of an examiner terminates upon an appeal, see Ex parte Brunner (1872), 1 O. G. 303. That no appeal lies from the refusal of an examiner to dissolve the inter ference on the ground that the adverse applicant had no right to make the Claims, no party having any other rights against his adversary than the whole public has, and it being presumed that the Patent Office will protect these, see Faure v. Bradley (1887), 40 O. G. 243. That in an interference case a notice to the defeated party of the adverse decision, limiting the time for appeal to ten days, means ten days from the receipt of the notice, and is, therefore, uncertain, see Pearson v. Lister (1883), 24 O. G. 1175. That on an appeal to the Commissioner in an interference the applicant is entitled to have his case considered on the law and the evidence, see Sellers v. Walter (1886), 37 O. G. 1001. That if, pending an appeal to the Commissioner in an interference, he is notified that the applications should be rejected on the ground of public use, he should refer that question to the examiner, see Finch v. Bailey (1883), 25 O. G. 191. That where the Commissioner is ordered by mandamus to hear an interference in person the patent cannot issue until the mandamus has been obeyed, see Withington v. Locke (1878), 15 O. G. 426. That on an appeal the concurrent opinions of the examiner of interferences and the examiners-in-chief on a question of fact are of great weight, see Berry v. Stockwell (1876), 9 O. G. 404. an interference case must be accompanied by a brief statement of the reasons therefor, and is governed by the same. general rules that are applied to appeals in ex parte cases. From the decision of the Commissioner there is no appeal, and patents issue to successful applicants without further opposition on the part of rival claimants. But a defeated claimant still has a remedy for the assertion of his own rights by a bill in equity upon which all adverse parties, whether applicants or claimants, may be heard; and if he then obtains a judgment another patent will be issued in his favor.4 § 605. Interference Proceedings: Dissolution of the Interfer ence. If it becomes apparent during the course of an interference that its further prosecution would be useless, a motion to dissolve it may be made before the examiner of interferences, by whom the motion, with the files and papers, must be transmitted to the primary examiner for his decision on the points involved.1 This motion may be offered whenever the testi 8 That no appeal will lie to the Supreme Court of the District of Columbia from a decision of the Commissioner in an interference case, the only remedy being by bill in equity under Sec. 4915, see Kirk v. Commissioner (1886), 37 O. G. 451; 5 Mackay, 229; Butler v. Shaw (1884), 21 Fed. Rep. 321. That the Secretary of the Interior has no power to revise the decision of the Commissioner on the subject of priority, see Butterworth v. Hoe (1884), 112 U. S. 50; 29 O. G. 615; United States v. Butterworth (1884), 3 Mackay, 229; 27 O. G. 519. 4 That a decision in interference is not final except in the Patent Office, and a bill in equity to annul the adverse patent will lie in favor of the defeated party, see Union Paper Bag Mach. Co. v. Crane (1874), 1 Bann. & A. 494; Holmes, 429; 6 O. G. 801. That the remedy in equity provided by Sec. 4915 applies to decisions in interference cases as well as all other decisions on the merits of an application, see Butterworth v. Hoe (1884), 112 U. S. 50; 29 O. G. 615. That the successful applicant cannot be enjoined from accepting his patent on the ground that the Commissioner was mistaken as to priority, see Whipple v. Miner (1883), 23 O. G. 2236; 15 Fed. Rep. 117. That the power of the Circuit Court to grant a patent is independent of the Patent Office, but the defeated party cannot decide when the court shall act bý injunction, see Whipple v. Miner (1883), 23 O. G. 2236; 15 Fed. Rep. 117. That the filing of a bill in equity to obtain a patent by the defeated party to an interference does not stay proceedings in the Patent Office nor justify the Commissioner in withholding a patent from the successful party, see Wells v. Boyle (1888), 43 O. G. 753. § 605.1 That an examiner of interferences cannot dissolve an interference mony introduced or the arguments urged or the concession of either of the parties renders it evident that the interference cannot lawfully proceed. The grounds on which it may be based are the non-patentability of the invention,3 the absence on ex parte affidavits alleging non-patentability, etc., though he may suspend and remand to the primary examiner, see Hedges v. Daniels (1880), 17 O. G. 152. That if a motion to dissolve an interference is based on want of patentability, etc., it must be sent to the primary examiner, see Green v. Hall (1886), 37 O. G. 1475. That when an interference is remanded to the primary examiner for want of patentability, etc., the interference is dissolved pro hac vice, the applications become ex parte, the original jurisdiction of the examiner at taches, and the right of appeal exists as in other ex parte cases, see Faure v. Bradley (1887), 40 O. G. 243. 2 That a motion to dissolve may be made at any time, see Banks v. Snediker (1879), 16 O. G. 1096. That if a motion to dissolve the interference is not filed within twenty days after the statement is approved the delay must be explained, or the examiner of interferences will not send the case to the primary examiner, though from his refusal to do so appeal lies to the Commissioner, see Green v. Hall (1886), 37 O. G. 1475. That a motion to dissolve an interference must state the reasons, and recite the grounds, and show all the facts on which the motion is based, see Green v. Hall (1886), 37 O. G. 1475. That adverse parties must be served with a notice of a motion to dissolve an interference and with the reasons therefor, and have an opportunity to be heard, see Green v. Hall (1886), 37 O. G. 1475. That an irregular motion to dissolve an interference will be dismissed on moVOL. II.-16 tion of the adverse party, see Green v. Hall (1886), 37 O. G. 1475. That if the later applicant disclaims the invention the interference will be dissolved, see Laverty v. Flagg (1879), 16 O. G. 1141. 3 That a motion to dissolve an interference must be based on the application alone, not on the preliminary statement or other outside matter, see Faure v. Bradley (1888), 44 O. G. 945. That an interference may be dissolved on the ground that the invention is not patentable, see Stone v. Greaves (1880), 17 O. G. 397; Hockhausen v. Weston (1880), 18 O. G. 857. That on proof of facts showing a bar to the patent, as distinguished from a mere want of title, the interference may be dissolved, see Hicks v. Keating (1887), 40 O. G. 343. That want of novelty is a ground for dissolution, see Ex parte Knox (1879), 16 O. G. 1048. That if only one of the inventions is useful and operative a dissolution will be ordered, see Fuller v. Brush (1879), 16 O. G. 1188. That where abandonment by public use is suspected the examiner of interferences may be ordered to investigate it, or the case may be remanded to the primary examiner, from whom an ap peal lies, see Ex parte Finch (1887), 40 O. G. 1027. That a motion to dissolve on the ground of non-patentability should be made at the outset, see Blinn v. Gale (1879), 16 O. G. 459. For the practice in cases where a statutory bar appears, see Hicks v. Keating (1887), 40 O. G. 343. of any real conflict between the Claims of the several contestants, the failure of either party to show that he is a true inventor of the invention claimed, or such irregularity in the institution of the interference as must render any judgment therein void. From the decision of the primary examiner upon this motion an appeal lies in the usual manner to the examiners-in-chief; but if no appeal is taken within the 4 That unless both devices are embraced in the interference it should be dissolved, see Smith v. Winchell (1878), 13 O. G. 1127. That if both parties do not claim the same subject-matter the interference will be dissolved, see Sawyer v. Edison (1883), 25 O. G. 597; Dod v. Cobb (1876), 10 O. G. 826. That where two machines in interference are different, and only one is operative, the difference will be treated as essential, see Bradford v. Imlay (1879), 16 O. G. 314. 5 That if the contestants appear to be joint inventors dissolution will be ordered, see Taylor v. Martin (1879), 16 O. G. 138. That if a motion to dissolve is made on the ground that the adverse party is not an original inventor, the allegation must be conclusively proved, see Hockhausen v. Weston (1880), 18 O. G. 857. That if it appears that the patentees in a joint conflicting patent were not joint inventors, the interference will be dissolved, see Walton v. Dennis (1879), 16 O. G. 959. 6 That a motion to dissolve on account of non-interference or irregularity in the proceedings will be heard by the tribunal before which the case is pending, see Barney v. Kellogg (1880), 17 O. G. 1096. That no motion to dissolve an interference should be sent to the primary examiner unless it alleges either that there is no interference in fact, or that the interference has been so irregularly declared that no judgment can be ren dered, or that the invention is not patentable, or that the applicant has no right to claim it, see Edison v. Phelps (1887), 38 O. G. 539. That on hearing a motion to dissolve an interference nothing will be consid ered but what appears on the face of the motion, and the papers filed, see Green v. Hall (1886), 37 O. G. 1475. That on a motion to dissolve an interference counter affidavits may be filed at the time named for the hearing and without notice, and if the adverse party be taken by surprise, a continuance may be granted, see Green v. Hall (1886), 37 O. G. 1475. That on a motion to dissolve an interference affidavits of the adverse party, filed without leave, will not be noticed, see Green v. Hall (1886), 37 O. G. 1475. 7 That where a primary examiner overrules a motion to dissolve, and affirms his previous finding of patentability, the mover may make protest to the Commissioner against the issue of the patent, see Fowler v. Benton (1880), 17 O. G. 266. That no appeal lies from a decision affirming "the right of the applicant to make the Claims," and so overruling a motion to dissolve, see Faure v. Bradley (1888), 44 O. G. 945. That an appeal from the order to dissolve for want of patentability lies to the examiners-in-chief, see Fuller v. Brush (1879), 16 O. G. 1188. That if an interference is dissolved, and both applications are rejected, and one party appeals to the Supreme Court of the District, the other by two years time limited for that purpose, or if the right to an appeal is expressly waived by the party entitled to it, the examiner returns the files and papers, with his own judgment upon the matters embraced in the motion, to the examiner of interferences, who dissolves or continues the interference in accordance with the facts found by the primary examiner. Two motions to dissolve on the same ground are not permitted, the remedy of the party claiming it being exhausted by one motion with the privilege of an appeal.8 § 606. Interference Proceedings: Suspension of the Interference. Whenever the examiner of interferences or the examinersin-chief upon appeal discover any fact not bearing on the question of priority, but showing that no conflict actually exists between the inventions of the several claimants, or that the invention is not patentable to either party, or that the interference was irregularly declared, it is their duty to suggest it to the Commissioner, in order that he may suspend the interference and remand the case to the primary examiner for his consideration of the matters thus discovered.1. failure to prosecute his application may abandon it, see Cruikshank v. Strong (1880), 17 O. G. 511. 8 That two motions to dissolve cannot be entertained on the same ground; one motion only with an appeal or rehearing being allowed, see Banks v. Snediker (1880), 17 O. G. 508. § 606. That the examiner of interferences has no jurisdiction over questions of patentability, see Little v. Lillie (1876), 10 O. G. 543. That when, on an interference, the patentability of the invention seems doubtful, the interference should be suspended and the question referred to the examiner for decision, see Lynch v. Dryden (1873), 3 O. G. 407; Wood t. Morris (1873), 4 O. G. 131; Ex parte Neuboeker (1873), 4 O. G. 319. That if the invention is claimed to have been abandoned by public use, a suspension will be ordered and the case sent to the examiner, see Hedges v. Daniels (1880), 17 O. G. 152. That an interference will not be arrested by the Commissioner before an appeal and referred to the examiner on a question of public use, unless the proof is clear, see Finch v. Bailey (1883), 25 O. G. 191. That an examiner of interferences cannot consider affidavits as to public use, and on that ground reject an application and dissolve the interference, see Hedges v. Daniels (1880), 17 O. G. 152. That an examiner of interferences may be directed to investigate a question of public use, see Ex parte Finch (1887), 40 O. G. 1027. That the examiner of interferences, by order of the Commissioner, may fix times for taking evidence on the question of public use, see In re Alteneck (1883), 23 O. G. 2233. |