close and to appropriate in his original patent. Where the re-issued patent will bear no construction which confines its subject-matter to this invention, its Claims are necessarily invalid.

§ 664. Nature and Scope of the Invention which the Inventor Attempted to Describe and Claim in his Original Patent, how Determined.

The act of

The act of

By what method the Patent Office or the courts shall ascertain the limits of the invention which the patentee originally endeavored to describe and claim, the statutes do not particularly prescribe. The act of 1832 simply required that the re-issue should be for the same invention. 1836 followed in this respect the act of 1832. 1870 further provided that "no new matter shall be introduced into the specification, nor in case of a machine-patent shall the model or drawings be amended except each by the other; but when there is neither model nor drawing, amendments may be made upon proof satisfactory to the Commissioner that such new matter or amendment was part of the original invention and was omitted from the specification by inadvertence, accident, or mistake." The Revised Statutes reproduce these provisions of the act of 1870. Under these, it will be noticed that no limitation is placed to the amendment of the original specification except the prohibition of new matter, and no test is given by which the Office or the courts are to determine what it attempted to describe and

Marsh v. Seymour (1877), 97 U. S. 348; 13 O. G. 723; Vogler v. Semple (1877), 7 Bissell, 382; 11 O. G. 923; 2 Bann. & A. 556; Russell v. Dodge (1876), 93 U. S. 460; 11 O. G. 151; Tucker v. Tucker Mfg. Co. (1876), 4 Clifford, 397; 10 O. G. 464; 2 Bann. & A. 401; Collar Co. v. Van Deusen (1874), 23 Wall. 530; 7 O. G. 919; Gill v. Wells (1874), 22 Wall. 1; 6 0. G. 881; Carlton v. Bokee (1873), 17 Wall. 463; 6 Fisher, 40; 2 O. G. 520; Tarr v. Webb (1872), 10 Blatch. 96; 5 Fisher, 593; 2 O. G. 568; Sarven v. Hall (1872), 9 Blatch. 524; 1 O. G.

437; 5 Fisher, 415; Seymour v. Os-
borne (1870), 11 Wall. 516; Morey v.
Lockwood (1868), 8 Wall. 230; Hoff-
heins v. Brandt (1867), 3 Fisher, 218;
Cahart v. Austin (1865), 2 Clifford,
528; 2 Fisher, 543;
Burr v.
Duryee
(1863), 1 Wall. 531.

That where the re-issue does not cover an invention distinct from that described and attempted to be claimed in the original, the re-issue is valid, unless the failure to claim amounted to abandonment, see Eames v. Andrews (1887), 122 U. S. 40; 39 O. G. 1319.

claim. In the case of a machine-patent it is assumed that every feature of the invention which the inventor intended to protect will be exhibited either in his drawing or his model, and by prescribing that these can be amended only by each other the statute fairly implies that no part of the actual invention which he made can be regarded as embraced in what he intended to describe and claim unless in one or both of these it is disclosed. Where no model or drawing exists, the Office and the courts are left to the guidance of such regulations concerning the kind and degree of evidence required for the solution of this question as they may, in general, or in reference to particular cases, see fit to establish. The necessity for some permanent and definite rule upon the subject, however, and the manifest danger of fraud and imposition if the fact that by the original patent the inventor intended and attempted to cover the matter now claimed in the re-issue were to be determined in any case upon his mere assertions or other parol testimony alone, early led the courts to declare that the original specification, as illustrated by the model or drawings if any, and as interpreted by a proper explanation of its terms of art and by the examination in connection with it of the invention actually made, must bear upon its face sufficient evidence of the alleged endeavor to describe and claim.2 This rule, as usually stated,

§ 664. That the courts and the Patent Office obey the same rules in ascertaining the character of the invention which the patentee originally attempted to protect, see Ex parte Aldrich (1876), 9 O. G. 407.

acter of the invention which the original
patent was intended to protect, and for
ascertaining the identity with this of the
invention claimed in the re-issue, was
Knight v. Baltimore & Ohio R. R. Co.
(1840), Taney, 106; 3 Fisher, 1. In this
case Chief Justice Taney charged the jury
that the plaintiff could not recover on
his re-issued patent unless the invention
which it described and claimed was
"the same in principle and in its mode
of operation with the one intended to be
described in" the original patent, and
then left this question of identity (which
of course includes the question of the
actual character of the invention in-
tended to be covered by the original
patent) to be decided by the jury, as a

2 The cases in which this rule has been accepted and followed are almost without number, and yet in scarcely any of them has it been completely and accurately stated. The adoption of the incorrect forms mentioned in the text is largely responsible for this, but such has been the history of the rule itself that freedom from obscurity could scarcely be expected. The earliest case in which the courts seem to have established a test for determining the char

appears in one of the two following forms: negatively, that a re-issue cannot include any subject-matter which the orig

matter of fact. In the cases which immediately followed this, the same position was taken by the courts, and the jury were required to pass upon the identity of the inventions on any relevant evidence that might have been presented. See Carver v. Braintree Mfg. Co. (1843), 2 Story, 441; Stimpson v. Westchester R. R. Co. (1845), 4 How. 404; Allen v. Blunt (1846), 2 W. & M. 139; Batten v. Taggert (1854), 17 How. 83; Heilner v. Battin (1856), 27 Penn. 521; Poppenhusen v. Falke (1861), 4 Blatch. 496, etc. While the courts were pursuing this method of investigation a practice appears to have arisen in the Patent Office of confining the applicant for a re-issue to such evidence concerning the invention which he first endeavored to protect, and its identity with that claimed in the re-issue, as was furnished by the original patent and its specification, drawings, and model, when interpreted by the invention itself, — a practice more than once repudiated in the courts, but gradually making its impression upon their decisions.

issue is "final and conclusive, unless the court is of the opinion, upon comparing the two instruments, that the reissued patent, as matter of legal construction, is not for the same invention as the original."

In the transition to this doctrine from that of Chief Justice Taney in 1840 decisions of various degrees of incorrectness and inconsistency were rendered, some affirming the right of the patentee to a re-issue in the broadest terms which his original invention would permit, others restricting him in the re-issue to what he had claimed in the original patent; some asserting that the identity of the inventions covered by the original and re-issued patents must be apparent to the court upon a mere inspection of the instruments themselves, others adopting the extreme position of Judge Clifford that this identity must be conclusively presumed unless the patents, when compared with one another, disclosed substantial differences between them; yet all finally agreeing in the rule primarily adopted by the Patent Office, that the original specifications, drawings, and model must afford the ultimate test by which the Office or the courts are to determine what portions and aspects of his actual invention the inventor had intended and attempted to describe and claim.

Concurrently with these events, the doctrines that the nature and scope of any patented invention is to be determined by the court as a matter of law upon an inspection of the patent; that consequently the identity of two patented inventions must be ascertained by a comparison of their respective pat- Having reached this point in the ents with each other by the court; and explication of the rule, most of the dethat the action of the Commissioner in cisions treat it as sufficiently stated, and issuing or re-issuing a patent is prima proceed to apply it in their own peculiar facie lawful and valid ;- - were becoming modes. But it is evident that this exfirmly grounded and universally applied, plication is not a finality. culminating, at length, in the proposi- it be established that the subject-matter tion announced by Clifford, J., in Sickles of a re-issue must be confined to the inv. Evans (1863), 2 Clifford, 203, and af- vention which the patentee originally firmed by him in Stevens v. Pritchard, attempted to secure, and that this at(1876), 4 Clifford, 417, that the action tempt must be discoverable in the origiof the Commissioner in granting a re- nal specification, drawings, or model,

For though

inal patent, as construed by the court, does not apparently endeavor to protect; affirmatively, that a re-issue may em

In

the mode to be pursued in making that tion itself as originally made and perdiscovery is still to be determined. fected. The first is excluded because reference to this mode of inquiry it must unreliable and unnecessary, as well as be remembered that the specification, in on grounds of public policy, and dewhich the discovery is to be made, is mands no further consideration. The confessedly defective, - so defective, in- specification of the re-issued patent, on deed, that in consequence of its defects the contrary, is in the highest degree the patent is inoperative or invalid. authoritative and available. It purports Manifestly, then, no mere process of in- to give, and must be accepted as giving, terpretation can avoid or cure its imper- a complete and exact description of the fections and ascertain what patentable invention, and as stating fully and matter it has undertaken to describe clearly the claims of the inventor. It and claim, since where interpretation is assumed to be sufficient to acquaint can have this effect the patent cannot those skilled in the art with the mode be invalid or inoperative. Hence reof making and using the invention, and course must be had to some exterior to inform the public of the precise line source for information as to the true which separates the arts and instru nature of the invention, that in the ments at their command from that light afforded by its actual character, as which is embraced in the monopoly. the inventor conceived it and reduced The patentee cannot be permitted to it to practice before his original applica- deny that the court or Patent Office, by tion for a patent, his defective claims legally interpreting his re-issue specifiand description may be read. This is cation, with its drawings and model, evidently the only method in which the will obtain a perfect knowledge of his fact that the specification is defective true invention, as he himself has made can be ascertained, or the nature and it and contemplated its introduction degree of the defect can be measured, or into public use. And hence the Patent the scope of the invention which the de- Office and the courts have here a ready, fective delineation or assertion attempted permanent, and invariable standard with to embrace can be explored; and not which to compare the original specificauntil the Patent Office or the court is tion, and thus discover how much of the thus informed of what the inventor invention as it now appears in the permight have made the subject-matter of fected patent the inventor then attempted his patent, if he had so desired, can it to describe and claim. Where no rebe in any situation to scrutinize the issue has as yet been granted, and no original specification, drawings, or re-issue specification on which the patmodel in order to discover what he did entee insists as the accurate presentaintend and endeavor to describe and tion of his invention has been filed, this claim. source of information is, of course, absent, and a resort to the actual invention becomes necessary.

Three sources of information concerning the actual character of the orig. inal invention may be accessible for the This review of the subject makes it purpose of this inquiry: (1) The as- evident that the mode of discovery to sertions of the inventor or other parol be pursued in ascertaining what the testimony; (2) The specification of original specification attempted to emthe re-issued patent; (3) The inven- brace must vary with the different

brace whatever was suggested or substantially indicated in the original specification or drawings as belonging to the invention