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applicants, rests upon the provisions of the statutes, and is validly exercised only when such provisions are obeyed.3 But this rule is not pressed to an extreme against the interests of applicants. Where the applicant has in good faith complied with his own obligations under the direction of the Office, no error or neglect on its part can prejudice his rights. Moreover, from the granting of the patent the courts presume that all formal requirements have been fulfilled, and do not suffer this presumption to be disputed, except in some proceeding directly instituted to repeal the patent.5

Cary Mfg. Co. (1883), 111 U. S. 490; 27 O. G. 1237; Ex parte Heginbotham (1875), 8 O. G. 237.

In Moffitt v. Gaar (1860), 1 Bond, 315, Leavitt, J.: (317) "It is an undoubted truth that an inventor has no legal rights or immunities under a patent, except such as are conferred by the statute. With whatever solemnity or observance of legal form it may have issued, if wanting in any substantial statutory requisite, it is a nullity. And such defect is always available as a defence in a suit for an infringement." 1 Fisher, 610 (612).

That a patent is invalid unless the substantial legal requirements are complied with, though the patentee is innocent of bad intent, see Ex parte Benton (1882), 23 O. G. 341.

In Commissioner v. Whitely (1866), 4 Wall. 522, Swayne, J.: (532) "It is averred in the petition, and not denied in the answer, and therefore, as in other like cases of pleading, to be taken as conceded, - that the application was filed with the acting Commissioner. It is also admitted in the answer that the requisite amount of fees had been paid by the relator, but it is added that it had not been placed to the credit of the Office, and was in the hands of the chief clerk, subject to the relator's order. The relator had done all in his power to make his application effectual, and had a right to consider it properly be fore the Commissioner."

That errors in the Patent Office, without the fault of the inventor, cannot affect his rights, see Bignall v. Harvey (1880), 18 O. G. 1275; 4 Fed. Rep. 334; 18 Blatch. 353; Sayles v. Chicago & Northwestern R. R. Co. (1865), 2 Fisher, 523; 1 Bissell, 468; Phelps v. Brown (1859), 1 Fisher, 479; 4 Blatch. 362; 18 How. Pr. 7; Sparkman v. Higgins (1846), 1 Blatch. 205.

That delays in the Patent Office, if not attributable to the negligence of the applicant, cannot affect his rights, see Jones v. Sewall (1873), 6 Fisher, 343; 3 Clifford, 563; 3 O. G. 630; Johnsen v. Fassman (1871), 1 Woods, 138; 5 Fisher, 471; 2 O. G. 94; Dental Vulcanite Co. v. Wetherbee (1866), 2 Clifford, 555; 3 Fisher, 87; Sayles v. Chicago & Northwestern R. R. Co. (1865), 1 Bissell, 468; 2 Fisher, 523; Adams v. Jones (1859), 1 Fisher, 527; Rich v. Lippincott (1853), 2 Fisher, 1.

That delays in the Patent Office, if acquiesced in by the applicant, may bar his rights, see Bevin v. East Hampton Bell Co. (1871), 5 Fisher, 23; 9 Blatch. 50.

In Philadelphia & Trenton R. R. Co. v. Stimpson (1840), 14 Peters, 448, Story, J.: (458) "It is a presumption of law that all public officers, and especially such high functionaries, perform their proper official duties, until the contrary is proved. And where, as in the present case, an act is to be done or patent granted upon evidence and

§ 452. Legal Requisites of Application.

An application for a patent, as well as all communications with the Patent Office concerning it, must be in writing; and if not correctly, legibly, and clearly written the Commissioner may require them to be printed at the cost of the party filing them. The application must be in the English language and be addressed to the Commissioner, and must include a petition, an oath, and a specification or Description and Claim

proofs to be laid before a public officer, upon which he is to decide, the fact that he has done the act or granted the patent is prima facie evidence that the proofs have been regularly made, and were satisfactory. No other tribunal is at liberty to re-examine or controvert the sufficiency of such proofs, if laid before him, when the law has made such officer the proper judge of their sufficiency and competency. It is not, then, necessary for the patent to contain any recitals that the prerequisites to the grant of it have been duly complied with, for the law makes the presumption; and if, indeed, it were otherwise, the recitals would not help the case without the auxiliary proof that these prerequisites had been, de facto, complied with. This has been the uniform construction, as far as we know, in all our courts of justice upon matters of this sort. Patents for lands, equally with patents for inventions, have been deemed prima facie evidence that they were regularly granted, whenever they have been produced under the great seal of the government, without any recitals or proofs that the prerequisites of the acts under which they have been issued have been duly observed." 2 Robb, 46 (63).

That the decision of the Commissioner on the sufficiency of the applicant's fulfilment of the formal prerequisites to a patent is final, see Hancock Inspirator Co. v. Jenks (1884), 21 Fed. Rep. 911; Hoe v. Cottrell (1880), 1 Fed. Rep. 597; 18 O. G. 59; 17 Blatch.

546; 5 Bann. & A. 256; De Florez v. Raynolds (1878), 14 Blatch. 505; 3 Bann. & A. 292; United States kifle & Cartridge Co. v. Whitney Arms Co. (1877), 14 Blatch. 94; 11 O. G. 373; 2 Bann. & A. 493; Tarr v. Folsom (1874), 5 O. G. 92; Holmes, 312; 1 Bann. & A. 24; McMillin v. Barclay (1871), 5 Fisher, 189; 4 Brews. (Pa.) 275; Seymour v. Osborne (1870), 11 Wall. 516.

That the issue of a patent is prima facie evidence that all prerequisites are complied with, see Konold v. Klein (1878), 3 Bann. & A. 226; Gear v. Grosvenor (1873), 3 O. G. 380; 6 Fisher, 314; Holmes, 215; Dorsey Harvester Rake Co. v. Marsh (1873), 6 Fisher, 387; Crompton v. Belknap Mills (1869), 3 Fisher, 536.

That a patent need not recite that all its prerequisites have been fulfilled, see Gear v. Grosvenor (1873), Holmes, 215; 6 Fisher, 314; 3 O. G. 380.

That a patent can be attacked on the ground of formal defects in the application or its prerequisites only by a scire facias, a bill in equity, or an information to set aside the patent, see Hoe v. Cottrell (1880), 18 O. G. 59; 17 Blatch. 546; 1 Fed. Rep. 597; 5 Bann. & A. 256.

That judgments by the Patent Office are prima facie only, not conclusive, see Wilson v. Barnum (1849), 2 Fisher, 635; 1 Wall. Jr. 347; 2 Robb, 749.

That the Patent Office is not estopped to deny the validity of its own grant, see McKnight v. Van Wagenen (1876), 9 O. G. 1161.

of the art or instrument for which a patent is desired. In certain cases it must be accompanied by drawings and a model or specimen of the invention. No application can be accepted by the Office for examination until it is complete in all its parts; and where it has been signed or sworn to in blank or without actual inspection of the petition and specification, or has been altered or partly filled up after being signed or sworn to, it will be stricken from the files if such irregularity is discovered before the patent is delivered.2

§453. The Application-Petition: its Requisites.

The petition is a communication addressed to the Commissioner and duly signed by the applicant, requesting the grant of letters-patent for the invention described in the application. It must state the name and residence of the petitioner, and in its designation of the invention must contain words of reference to the specification for a fuller disclosure thereof.1 It should also set forth the person on whose behalf the application is made and to whom the patent is desired to issue; declaring whether it be to the applicant himself, or whether, in case of a previous assignment, it be to the assignee of an entire interest alone, or jointly to the assignee of a part interest and the applicant.

§ 454. The Application-Oath: By and Before Whom Made. The oath of the applicant is one of the most important portions of his application.1 Being in many cases conclusive as

§ 452. 1 That there can be no patent without an application, see Railway Register Mfg. Co. v. Broadway & Seventh Ave. R. R. Co. (1886), 26 Fed. Rep. 522; 34 O. G. 921; Eagleton Mfg. Co. v. West, Bradley, & Cary Mfg. Co. (1884), 111 U. S. 490; 27 O. G. 1237.

That an examiner should refuse to act unless there is a proper application before him on which to act, see Ex parte Benton (1882), 23 O. G. 341.

2 That a blank application and oath signed and forwarded to Washington to be filled up does not comply with the law, and a patent granted thereon

is invalid, see Ex parte Benton (1882), 23 O. G. 341.

That the applicant must sign his first name in full, see Ex parte Gentry (1888), 44 O. G. 822.

§ 453. 1 That the petition for a patent must so refer to the specification that the patent prayed for may be identified, see Ex parte Mason (1888), 43 0. G. 627.

§ 454. 1 In Ex parte Heginbotham (1875), 8 O. G. 237, Spear, Act. Com.: (237) "The oath is a prerequisite to the granting of a patent. It was so held by Judge Story in the very case

to the facts therein alleged, it must conform strictly to the requirements of the law. It must be made by the inventor, if alive, or if he be dead, by his personal representative. It can be taken before any person in the United States authorized by law to administer oaths; or, when the applicant resides in a foreign country, before any minister, chargé d'affaires, consul, or commercial agent holding commission under the United States, or before any notary public, the oath being in all cases attested by the official seal of the officer administering it.4

§ 455. The Application-Oath: its Averments.

This oath may be in the usual form of an oath, or in that of an affirmation. The applicant must swear that he does verily believe himself to be the original and first inventor of the art or instrument for which he desires a patent; that he does not know and does not believe that the same was ever before known or used; and that the invention has not been in public use nor on sale in the United States for more than two years preceding the date of the present application.1 He must

in which he held the patent valid, notwithstanding the informality of the oath (Whittemore v. Cutter, 1 Gall.), and other courts have found the same; but, because the courts have sustained patents where some of the prerequisites to their granting have been ignored or dispensed with by the Office, it by no means follows, as contended by the present applicant, that it is a matter discretionary with the Commissioner."

That the oath is not a mere formality, but is necessary and gives prima facie validity to the patent, see Ex parte Eaton (1873), 4 O. G. 525.

That no patent can issue without the application-oath, see Opinion Atty. Gen. (1820), 1 Op. At. Gen. 332.

2 That the oath, being often conclusive, must be made strictly according to law and before the proper officer, see Warnant v. Warnant (1880), 17 O. G. 265. That the oath need not be dated, see French v. Rogers (1851), 1 Fisher, 133.

That the oath need not be in writing, see Hancock Inspirator Co. v. Jenks (1884), 21 Fed. Rep. 911.

That the application-oath must be made by the applicant, not by his agent or attorney, see Opinion Atty. Gen. (1861), 10 Op. At. Gen. 137.

4 That an oath in a foreign country to an application can be taken only before an officer designated under section 4892, there being no authority to take an oath except by statute, and the laws of a foreign country having no force as against the statute, see Ex parte Gruson (1884), 26 O. G. 274.

§ 455. That the oath must aver that the invention has not been in public use or on sale in this country for more than two years before the applica tion, see Ex parte Rowan (1882), 22 O. G. 1037; Ex parte Livingston (1881), 20 O. G. 1747.

Whether the phrase "with the consent and allowance" of the inventor

also aver his citizenship and place of residence, and disclose the names, numbers, and dates of any foreign patents he may have obtained for the same invention.2 This oath relates to the entire specification, and must be true concerning each and every portion of it, but does not include the model, in the construction of which parts may become necessary of which he is not the first and original inventor. It is also limited in its effect to the invention thus described, and with each amendment of the specification by which new matter is introduced as part of the original invention a new oath must be filed.*

§ 456. The Application-Oath: its Truth or Falsehood.

The averments of this oath concerning the originality of the invention relate only to the belief of the inventor, and the oath is not, therefore, a false one, nor the patent based thereon illegally obtained, though it be subsequently discovered that the invention has been previously known. But an oath wilfully false concerning the citizenship of the applicant, or any other matter made essential by the statutes, is a fraud

can properly be inserted in this averment must depend on the interpretation of the law of Abandonment as discussed in §§ 357, 358, and notes, ante.

That the oath must aver that the inventor does not believe that the invention was ever known or used before his inventive act, see Ex parte Rowan (1882), 22 O. G. 1037.

That the applicant must disclose under oath all his foreign patents for the same invention, see Ex parte Mason (1888), 43 O. G. 627; Opinion Sec. Int. (1882), 21 O. G. 1197; Ex parte Bland (1879), 15 O. G. 828.

That the rule requiring disclosure of the date of foreign patents is reason. able, see U. S. v. Marble (1882), 22 O. G. 1365; and is authorized by Sec. 4887, Rev. Stat., see Ex parte Toufflin (1879), 15 O. G. 657.

That the disclosure of foreign patents must be definite and in the usual form, see Ex parte Mason (1888), 43 O. G. 627.

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3 That the oath applies to and covers the entire specification, see Ex parte Eaton (1873), 4 O. G. 525; Hogg v. Emerson (1848), 6 How. 437; 2 Robb, 655.

That the oath must cover every feature claimed, see Ex parte Clark (1886), 36 O. G. 120; Ex parte Foster (1885), 33 O. G. 113.

That the oath does not relate to the model, see Ex parte Eaton (1873), 4 O. G. 525.

That an oath on a joint application relates to the whole, not to separate parts of the invention, see Tieman, Simpson, & Collins (1877), 11 O. G. 1.

That an application-oath relates only to the claimed inventions, for which a patent is solicited, see Ex parte Crandall (1886), 35 O. G. 625; Drawbaugh v. Blake (1883), 23 O. G. 1221.

For the form and other requisites of the amendment-oath, see § 561 and notes, post.

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