to describe and claim in his original patent; (3) That this amendment cannot be allowed unless the imperfections in the original patent arose without fraud, and from inadvertence, accident, or mistake; (4) That when the amendment is allowable it can be made in any form and to any extent that may be necessary to render the patent effective for the protection of the original invention. The discussion of these propositions, and of the proceedings in obtaining a re-issue, will occupy the remainder of this section. § 660. First Proposition: Sole Purpose of a Re-issue is to so Amend an Imperfect Patent that it may Protect the Patentable Subject-Matter which the Original Patent Attempted to Secure to its Inventor. The truth of the first proposition, that the sole purpose of a re-issue is to amend an imperfect patent in order that it may disclose and protect the proper subject-matter of the original patent-is self-evident. Being the method of amending a patent it pre-supposes a patent to amend. A patent void ab initio from any cause, as where it issues on a false oath of citizenship, or to alleged joint-inventors for a sole invention, is not an existing patent nor capable of becoming one by any process of amendment.1 Whatever remedy there may be in such a case must be sought by an application for new letters-patent, not by a re-issue of the old. A perfect patent requires no re-issue. Changes in its language cannot § 660. 1 That a void patent cannot be re-issued, see Marsh v. Nichols (1883), 15 Fed. Rep. 914; 24 O. G. 901; Ex parte Benton (1882), 23 O. G. 341; Child v. Adams (1854), 1 Fisher, 189; 3 Wall. Jr. 20. That where the defect in the original consists in a false oath of citizenship, it is void and cannot be re-issued to cure the defect, see Child v. Adams (1854), 1 Fisher, 189; 3 Wall. Jr. 20. That a patent issued on an application signed and sworn to in blank, and afterwards filled out by the attorney, is void, and cannot be re-issued, see Ex parte Benton (1882), 23 O. G. 341. That a joint patent for a sole invention being invalid no re-issue of it can be granted, see Ex parte Benton (1882), 23 O. G. 341; Ex parte Boursaloux (1878), 14 O. G. 233. That if it appears on the face of the re-issue application that the original patent was void, the application will be dismissed, see Ex parte Benton (1882), 23 O. G. 341. That an expired patent cannot be reissued, see Ex parte Siemens (1877), 11 O. G. 1107; Ex parte Pulvermacher (1876), 10 O. G. 2. be amendments unless the language were before defective, and though the former patent may have been surrendered and a new one has been granted by the Patent Office, yet if the former needed no amendment, the two are in all respects substantially the same, and the last is a mere duplication of the other.2 An existing imperfect patent is thus the sole subject for a re-issue. The defects by which an existing patent can be rendered imperfect are specified by the statutes as any invalidity or inoperativeness arising from inexactness or incompleteness in the Description, or from inexactness, or 2 By a "perfect patent," as the phrase is here employed, is meant a patent which completely covers and protects the invention which the patentee endeavored to secure. As appears hereafter in this paragraph, a patent may be perfect in itself; i. e., it may cover patentable subject-matter and be free from all ambiguity, and thus be valid and operative when judged by the standard of such patentable subjectmatter, and yet be wholly invalid and inoperative when measured by the actual invention which it was intended to include. That in this case the patentee is entitled to a re-issue cannot now be doubted. See notes 5 and 6, post. Certain decisions, however, are reported in which the power of the Commissioner to re-issue a patent that is valid and operative in itself seems to be denied, and in some of these the courts are said to have authority to review the judgment of the Commissioner on this point, and, on finding the original patent perfect per se, to declare the re-issue void. See § 714 and note, post. Thus that no re-issue is proper unless the original is inoperative or invalid for a defective specification, or claims too much, and if the original shows on its face that this is not so, the reissue will be void, see James v. Campbell (1881), 104 U. S. 356; 21 O. G. 337; Flower v. Rayner (1881), 19 O. G. 425; 5 Fed. Rep. 793; Giant Powder Co. v. California Powder Works (1875), 3 Sawyer, 448; 2 Bann. & A. 131; Burr v. Duryee (1863), 1 Wall. 531. That where the original is valid and operative to the extent of its Claim, there is no reason for the re-issue and the re-issue is void, see Giant Powder Co. v. California Vigorit Powder Co. (1880), 18 O. G. 1339; 4 Fed. Rep. 720; 6 Sawyer, 508. That where the only difference be tween the original and the re-issue is that the re-issue specification has the broader scope, the original would be valid if the re-issue is, and hence there was no reason for the re-issue and the re-issue will be void, see Giant Powder Co. v. California Vigorit Powder Co. (1880), 18 O. G. 1339; 4 Fed. Rep. 720; 6 Sawyer, 508. As shown in § 714 and note, these positions are not correct. A re-issue cannot be held void even on the ground that it apparently reproduces the original patent, the decision of the Commissioner on the necessity for a re-issue being final. And that the validity and operativeness of the original patent, with reference to one invention, constitute no bar to its re-issue whenever the monopoly which it defines is not coextensive with that which the patentee intended and attempted to secure, is evidenced by numerous decisions hereafter cited. See also Smith v. Merriam (1881), 6 Fed. Rep. 713; 19 O. G. 601. incompleteness, or excess in the Claim. By enumerating these the statutes exclude all others, and confine the remedy to these alone. "Invalidity" is any defect on account of which a patent might be declared invalid by the courts. It occurs whenever the Description is not sufficiently precise and complete to enable persons skilled in the art to practise the invention, or where the Claim is broader than the actual invention.4 "Inoperativeness" is any defect, by reason of which the patent fails to give to the invention the protection which it was intended to afford. This occurs whenever the Claim is so obscure or so restricted that the exact limits of the invention entitled to protection are not clearly and correctly defined. In judging as to the existence of these defects, the nature of the invention which the patent was intended to protect must be kept constantly in view. A patent may be valid and operative as to one invention and not as to another. Thus where an invention is reached by several steps, or is composed of several parts, each of which is a separate invention, either of these may be sufficiently described and claimed, and yet the patent be invalid and inoperative as to the principal invention which it was chiefly intended to secure. That a patent is valid and operative to the extent that it discloses and protects some patentable invention does not, therefore, render it a perfect patent. The object of the in defining the conditions under which a That where the Description is not 3 In Giant Powder Co. v. California Vigorit Powder Co. (1880), 6 Sawyer, 508, Field, J. (520) "As thus seen, a re-issue can only be had when the original patent is inoperative or invalid from one of two causes, either by reason of a defective or insufficient specification, or by reason of the patentee claiming as his own invention or discovery more than he had a right to claim as new. And even then the pat6 In Giant Powder Co. v. Safety entee can only obtain a re-issue where Nitro Powder Co. (1884), 10 Sawyer, the error has arisen from inadvertence, 23, Sawyer, J. (24) "A patent may accident, or mistake, and without any be inoperative in my judgment, when fraudulent or deceptive intention." 4 it is inoperative in part. I do not think Fed. Rep. 720 (723); 18 O. G. 1339 it must be absolutely inoperative in its (1340). entirety. If it is inoperative so far as That the provisions of the statute not to cover all that the party is entitled ventor in procuring it, and of the government in granting it, was to render accessible to the public, and for the time being to secure to the inventor, a specific invention or group of inventions, and if the patent, as it stands, does not accomplish this object it is invalid and inoperative within the meaning of the law, and may be amended by re-issue. § 661. Failure to Describe or Claim Matter outside the Invention not a Defect in the Patent. It is obvious that no patent can be invalid and inoperative by reason of its failure to describe and claim matter lying outside the limits of that invention which, having been conceived by the inventor and reduced to practice, the govern to claim, and what he is entitled to claim appears in the specifications, it being inoperative to that extent, I think it would be inoperative within the meaning of the provisions of the statute, and entitle the party to a re-issue covering his entire invention." 19 Fed. Rep. 509 (510); 27 O. G. 99 (100). In Wilson v. Coon (1880), 18 Blatch. 532, Blatchford, J.: (536) “A patent may be inoperative from a defective or insufficient description, because it fails to claim as much as was really invented, and yet the Claim may be a valid Claim, sustainable in law, and there may be a description valid and sufficient to support such Claim. In one sense such patent is operative and is not inoperative; yet it is inoperative to extend to or claim the real invention, and the description may be defective or insufficient to support a Claim to the real invention, although the drawings and model show the things in respect to which the defect or insufficiency of description exists, and show enough to warrant a new Claim to the real invention. It can never be held, as it never has been held in a case where the point arose for decision, that a patent cannot be re-issued where a suit could be sustained on the specifica tion and Claim as they were." 6 Fed. Rep. 611 (615); 19 O. G. 482 (483). See also Hartshorn v. Eagle Shade Roller Co. (1883), 18 Fed. Rep. 90; 25 O. G. 1191. That "not fully operative" is "inoperative," see Hartshorn v. Eagle Shade Roller Co. (1883), 25 O. G. 1191; 18 Fed. Rep. 90. That a specification may be inoperative as to some parts of the invention and not as to others, and its inoperativeness as to the others may not have been discovered until long after its issue, see Thomson v. Wooster (1885), 114 U. S. 104; 31 O. G. 913. That where the original patent is ambiguous and on that account inoperative, it may be explained by a re-issue if the Commissioner is satisfied that the inventions are the same, see Ex parte Gottstein (1877), 11 O. G. 1061. 6 That where the Claims of the original patent were unnecessarily restricted, the re-issue may correct them and cover the whole invention, see Schuessler v. Davis (1878), 13 O. G. 1011. That a re-issue is proper when the specification is imperfect, though the drawings and model are perfect, see Wilson v. Coon (1880), 6 Fed. Rep. 611; 18 Blatch. 532; 19 O. G. 482. ment, by issuing that patent, originally endeavored to protect. If the idea of means had possibilities of further development or application, which the inventor did not then perceive, these did not enter into his actual invention. If his idea, as already conceived and apprehended, was divisible into other ideas of means, only a part of which had been reduced to practice, the latter alone could have constituted his invention. If his idea presented different aspects, capable of embodiment in essentially distinct inventions, each of which would have formed matter for an independent patent, the one selected by him as the subject of the patent whose amendment is in question is the sole invention which that patent could, if perfect, have secured. The limits of this invention thus exclude all new developments of the idea of means which have taken place since the original patent issued, all ideas which were not reduced to practice before the application for the original patent, and all distinct and independent parts or forms of the invention which were not embraced within the subject-matter of the patent already issued; and therefore no defect or insufficiency of statement concerning these can render the original patent inoperative or invalid, or furnish an occasion for its amendment. All that it can be made to cover, by any degree or species of correction is that completely conceived, perceived, and practically operative means for which the inventor then sought and the government then bestowed protection.1 Intervening inventions, whether wholly distinct § 661. 1 In Manufacturing Co. v. Ladd (1880), 102 U. S. 408, Bradley, J.: (413) "A re-issue can only be granted for the same invention which was originally patented. If it were otherwise, a door would be opened to the admission of the greatest frauds. Claims and pretensions shown to be unfounded at the time might, after the lapse of a few years, a change of officers in the Patent Office, the death of witnesses, and the dispersion of documents, be set up anew, and a reversal of the first decision obtained without an appeal, and without any knowledge of the previous investigations on the subject. New light breaking in upon the patentee as the progress of improvement goes on, and as other inventors enter the field, and his monopoly becomes less and less necessary to the public, might easily generate in his mind an idea that his invention was really more broad and comprehensive than had been set forth in the specification of his patent. It is easy to see how such new light would naturally be reflected in a re-issue of the patent, and how unjust it might be to third parties who had kept pace with the march of improvement. Hence there is no safe or just rule but that which confines a re-issued patent to the |