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CHAPTER II.

OF THE AMENDMENT OF LETTERS-PATENT.

§ 633. Patentee Bound by the Language of his Patent as Construed by the Courts, whether or not his Actual Invention is thereby Adequately Protected.

AN inventor who has complied with all the provisions of the law on his part is entitled to the complete protection of his invention. The protection actually afforded by his patent, however, is limited and defined by the language it employs for describing and claiming the invention, as such language is interpreted by the courts. From many causes it may happen that the patent, thus construed, fails to cover the invention really made and intended to be patented; and the inventor, being concluded by his patent, is in this manner, therefore, liable to be defeated in the endeavor to secure his rights. In the early history of Patent Law no method existed by which this evil could be remedied. Whatever might be the character or merit of the invention, the patentee must take his letters-patent as they were granted to him; and if they were inaccurate or incomplete the consequences of these defects were inevitable and must be endured. He was regarded as responsible for all discrepancies between the language of the patent and the invention it pretended to describe. If it attempted, in the opinion of the courts, to cover more than the true invention, it was considered as a fraud upon the public, inasmuch as it deprived them of the right to use what was already known. If it departed from the essential characteristics of the invention, it was condemned as a fraudulent concealment from the public of such information as the patentee was bound to disclose. Thus, whether it described and claimed too much, or described and claimed too little, or

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incorrectly stated what it did describe and claim, it was alike void and the patentee was left without redress.1

§ 634. Power to Amend the Defective Language of a Patent Necessary to the Protection of the Patentee.

With the amelioration of public sentiment toward inventors these burdens have been substantially removed. The custom of correcting defective patents by their surrender and the issue of amended patents was early established in this country, and received the sanction and approbation of the courts.1 This practice has been formally adopted by the acts of Congress and made a permanent feature of our Patent Law.2 Other statutes have provided simpler methods by which a mere redundancy of description or an excess of claim may be eliminated from the patent, while errors and mistakes which do not qualify the rights conferred by the patent are either wholly disregarded by the courts or may be amended by the Patent Office at the request of the inventor.

§ 635. The Power to Amend the Defective Language of a Patent does not Include the Power to Change the Nature of the Patented Invention or the Person of the Patentee. The concession to the inventor of this power to amend his patent has not, however, in any degree obliterated the distinction between a new patent and an amended patent. By no process of emendation can the grant of an exclusive privilege to one person for one invention be transformed into the grant of an exclusive privilege to a different person or for a different invention. A patent is the bestowal of the right to a specific art or instrument upon a specific patentee, and through all the variations which its language may assume its identity as a patent must remain unchanged. The scope of the

ante.

§ 633. 1 See §§ 14, 15, and notes, proper recognition of the principle here stated. A patent is the grant of a monopoly in an invention. This monop oly cannot be conferred except in an invention completely existing at the time of the grant, and upon an application for a patent for that invention by the inventor or his representatives; and

§ 634. 1 See Grant v. Raymond (1832), 6 Pet. 218; 1 Robb, 604.

2 Act of 1832, § 3.

§ 635. Nearly all the difficulties which have attended the subject of Reissue might have been avoided by a

amending power is limited to such alterations of description and assertion as do not affect the essential character of the invention or the person of the patentee. For a mistake in these the only remedy is by the issue of a new original patent upon an independent application.

§ 636. Defects and Modes of Amendment, each of Three Classes. Defects which fall within the scope of the amending power may be divided into three classes, as indicated by the methods now provided for their removal: (1) Clerical errors; (2) Errors consisting in an excess of claim; and (3) Errors of any kind, whether by excess or deficiency or misstatement, in any matter relating to the substance of the grant. The third

when conferred it is limited in scope to the invention for which the patent has been sought. Here are three inexorable rules which cannot be affected by the concession of the amending power: (1) That the invention must have existed at the issue of the original patent, clearly perceived as well as conceived by the inventor, and fully reduced to practice; (2) That in his application for the original patent the inventor must have attempted to describe and claim every attribute of the invention which he desired to bring within the monopoly created by that patent; (3) That the monopoly created by that patent must thenceforth be regarded as commensurate with the invention which the inventor then endeavored to protect, and if the language of the patent, either through deficiency or excess of statement, fails to correspond with the monopoly as thus created, amendments for the purpose of curing this defect must be permitted until the language of the patent and the scope of the monopoly exactly correspond. The first rule precludes the introduction into the amended patent of any patentable matter which was not clearly in the mind of the inventor or had not been reduced to practice at the date of the

original patent. The second rule for bids the insertion of any matter which the patentee did not endeavor to incorporate into the claims of his patent as originally granted, whether his purpose was to abandon the unclaimed matter to the public, or to reserve it for a future application. The third rule at once compels him and entitles him to change the terms in which his origi nal patent describes and claims the invention it attempted to protect, when ever he discovers that its present language is inadequate. These rules are recognized in many cases, especially in Parker & Whipple Co. v. Yale Clock Co. (1887), 123 U. S. 87; 41 O. G. 811; Powder Co. v. Powder Works (1878), 98 U. S. 126; 15 O. G. 289; etc., where it is held that a re-issue is valid whenever it is confined to the invention which the inventor intended to describe and claim in the original patent, unless meanwhile he has abandoned it to the public. The application of these rules in the Patent Office and in the courts in a few of the earlier cases would have simplified the whole matter, and probably have saved numerous and expensive contests in which the subject of amending patents seems only to become more difficult and obscure.

class includes the second, so far as the nature of the defects are concerned; but the second has a peculiar remedy in addition to that by which the other errors of the third class are corrected. Defects of the first class are amended by the action of the Patent Office at the suggestion of the patentee. Defects of the second class may be cured by Disclaimer. Defects of the third class are removed by a Re-issue. Each of these remedies, with the method of applying them, will now be examined.

SECTION I.

OF THE AMENDMENT OF LETTERS-PATENT: CLERICAL ERRORS.

§ 637. Clerical Errors Defined: How Corrected.

Under the head of clerical errors may be embraced all the mistakes in the patent which do not affect the substance of the grant, and which occur through the fault of the employees of the Patent Office. Upon his discovery of any such mistake after the delivery of the patent, the patentee or his assignee may make an application to the Commissioner for its correction, and if the error is clearly disclosed by the files or records of the Office, a certificate showing the fact and nature of the mistake will be signed by the Secretary of the Interior, countersigned by the Commissioner, sealed with the seal of the Patent Office, endorsed upon the patent, and duly recorded in the records of original patents as a part of that on which it is endorsed.2 A printed copy of this certificate will also be

§ 637.1 That an error in the number of a patent is a clerical error, see Reed v. Street (1884), 34 O. G. 339.

That a mistake in the Christian name of a patentee does not invalidate the patent, if he is otherwise so described as to be identified, see Northwestern Fire Extinguisher Co. v. Philadelphia Fire Extinguisher Co. (1874), 6 O. G. 34; 1 Bann. & A. 177; 10 Phila. 227.

That an error in one letter of the surname of a patentee may be of no consequence, see Bignall v. Harvey (1880),

18 O. G. 1275; 4 Fed. Rep. 334; 18 Blatch. 353.

That a mistake of the Patent Office in engrossing the specification is a clerical error, see In re Johnson's Patent (1877), L. R. 5 Ch. D. 503.

2 That clerical errors may be corrected, without surrender and re-issue, by the action of the Patent Office, see Reed v. Street (1884), 34 O. G. 339.

That a clerical error in a patent could be corrected, under the act of 1836, only by the Secretary of State,

attached to each printed copy of the specifications and drawings issued from the Office.

§ 638. Errors of Substance not Corrected as Clerical Errors. Errors affecting the substance of the grant cannot be corrected in this summary manner, although occurring through the fault of the employees of the Patent Office. Mistakes whose ordinary remedy is a re-issue can be removed only by that proceeding, from whatever cause they may arise; but when a re-issue becomes necessary through official negligence no fees are charged for its allowance, unless it operates as an amendment of other defects than those for which the Patent Office is responsible.

$639. Correction of Clerical Errors not to affect Intervening Rights.

The correction of a clerical error relates back to the date of the patent, and the amended instrument is thenceforth regarded as the original form of the grant. But such an amendment cannot affect intervening rights. While the patent remains uncorrected the public may safely act upon it as it stands, and the delay of the patentee in procuring its correction is regarded as an acquiescence in whatever rights or privileges others meanwhile may have lawfully acquired.1

SECTION II.

OF THE AMENDMENT OF LETTERS-PATENT: DISCLAIMER.

§ 640. Disclaimer: Its Twofold Purpose: To Amend Defective

Patent: To Save an Otherwise Lost Suit.

Errors consisting in an excess of claim, whereby the protection of the patent is extended to matters not embraced

though his signature was not necessary, see Woodworth v. Hall (1846), 1 W. & M. 389; 2 Robb, 517.

§ 639. 1 That the correction of a clerical error relates back to the date of the error unless intervening rights would be thereby affected, see Woodworth v. Hall (1846), 1 W. & M. 389; 2 Robb, 517.

That if the correction be material it can operate only on subsequent cases, see Woodworth v. Hall (1846), 1 W. & M. 248; 2 Robb, 495.

That the right to the correction of clerical errors may be lost by delay, see In re Blamoud's Patent (1860), 3 L. T. Rep. N. s. 800.

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