not result from any inadvertence, accident, or mistake. Thus where the omitted matter has actually gone into public use, or where another inventor has applied for and obtained a patent which distinctly claims it, or where the courts interpreting his patent have decided that it does not embrace this feature or subordinate invention, the inventor may be presumed to

have sufficient notice of the defect to make his continued acquiescence in it a conclusive admission that his patent, in its original condition, truly represented and covered the entire invention which he undertook to claim. Concerning the period within which the amendment must be made after such notice can be fairly imputed to the inventor, there is no other rule than that of reasonable time, to be determined by the courts from all the circumstances of the case. Any avoidable delay may prevent him from obtaining a re-issue, not by forfeiting a privilege once possessed, but by proving such an original intentional exclusion that the right to a re-issue could never have existed."

§ 692. Intentional Exclusion not Shown by Mere Delay Alone

in the Amendment.

An intention to exclude from the original patent the patentable matter suggested in its description but omitted from its Claims is never inferred from mere delay alone. The

the law, and abridge or strangle the inventor's rights, by reason of the imper. fect language in which he had attempted to clothe his discovery." 2 Fisher, 213 (220).

6 In Mahn v. Harwood (1884), 112 U. S. 354, Bradley, J.: (361) “If any such inadvertence or mistake has really occurred, it is generally easily discernible by an inspection of the patent itself; and any unreasonable delay in applying to have it corrected by a surrender and re-issue is a just bar to such correction. If the specification is complicated and the Claim is ambiguous or involved, the patentee may be entitled to greater indulgence; and of this the court can rightfully judge in each case. No precise limit of time can be fixed and laid down for all cases. The courts will always exercise a proper liberality in favor of the patentee. But in any case, by such delay as the court may deem unnecessary and unreasonable, the right to a re-issue will be regarded as having been abandoned and lost, and

the Commissioner will be held to have exceeded his authority in granting it. Whenever it is manifest from the patent itself, compared with the original patent and cognate documents of record, or from the facts developed in the case, that the Commissioner must have disregarded the rules of law by which his authority to grant a re-issue in such cases is governed, the patent will be considered as void to the extent of such illegality. It is then a question of law, not a question of fact.” 30 O. G. 657 (659).

That delay in a re-issue may be explained, see Wollensak v. Reiher (1885), 115 U. S. 96; 31 O. G. 1301; Singer Mfg. Co. v. Goodrich (1883), 15 Fed. Rep. 455.

That the courts will not assume, without proof, that a re-issue after fourteen years' delay enlarges the original or was sought for that purpose, see Clark v. Wooster (1886), 119 U. S. 322; 37 O. G. 1477.

lapse of time, unaccompanied by circumstances from which a purpose to omit what might have been claimed is presumed, cannot affect the right of the inventor to a re-issue of his patent, and to the correction of any error in the description or the Claim that may be necessary to secure the invention which he attempted to protect by his original patent.1 The amendment of defects occurring through accident, mistake, or inadvertence, and without fraud, may therefore be made at any time when the error is discovered or the amendment may become desirable, provided the amendment does not introduce into the patent any invention not substantially indicated by the original specification.

§ 692. 1 In Hussey v. Bradley (1863), 2 Fisher, 362, Hall, J. : (378) “We cannot say, as matter of law, that these re-issues were too late, nor is there any proof of fraud or laches upon which we can, on that ground, declare these reissued patents void. A re-issue has been upheld when the surrender was made more than sixteen years after the first patent was issued (Gibson v. Harris, 1 Blatch. 167), and it was there said that a patent which had been extended to twenty-one years under the general law, and afterward extended to twenty-eight years by special act of Congress, might be surrendered and re-issued after the term of twenty-one years had expired. And see Woodworth v. Edwards, 3 W. & M. 120; French v. Rogers, and Goodyear v. Day, Secs. 27-32, Law's Digest, 614, 615 (vol. i. p. 133). The fact that a portion of these inventions was not claimed in the original patent we have already shown does not defeat the present claims of the patentee, and that even a disclaimer in the original patent of an invention claimed in a re-issued one is not, without other proof, enough to avoid the re-issued patent. Ex parte Hayden, and Laidly v. James. It is true that in the case of Batten v. Taggert, 2 Wall. Jr. 102, Judge Kane decided that if a pat

A patent may thus be

entee neglects in his specification to assert his invention as to a certain part, omits to claim specifically such part, and suffers his patent so to stand for a number of years, he cannot afterward surrender his patent and take a re-issue claiming such part, as the use under the former patent, without any claim, will be a dedication to the public; but this decision was overruled by the Supreme Court of the United States in the same case, 17 How. 85, and the cases to which we have already referred are, we think sufficient to show that we cannot, after the action of the Commissioner of Patents in respect to these patents, and without other proof, hold that there has been any abandonment or dedication to the public of the inventions claimed in these re-issued patents." 5 Blatch. 134 (148).

2 That a re-issue after a delay of thirteen years is not too late, if the original was defective through a mistake and the re-issue was necessary to cure it, see Newton v. Furst & Bradley Mfg. Co. (1882), 11 Bissell, 405; 14 Fed. Rep. 465.

That no part of the invention originally described becomes dedicated to the public by lapse of time, but may be always claimed in a re-issue, see Battin v. Taggert (1854), 17 How. 74.

re-issued either during its original term, or during an extension regularly allowed by the Patent Office, or during an additional extension granted by a special act of Congress.3

§ 693. Fourth Proposition: Amendment by Re-issue, when Allowable, may be Made in Any Form and to Any Extent Necessary to Secure the Actual Invention. The fourth proposition, -- that when an amendment by reissue is allowable it can be made in any form and to any extent that may be necessary to render the patent effective for the original invention, is evident from the nature and object of the amendment itself. The former patent being invalid and affording no protection, or being inoperative and affording less protection than the inventor had a right to claim, the re-issued patent is substituted for it in order that a patent, valid and operative for the entire invention attempted to be covered by the original patent, may exist in favor of the inventor.1 Whatever is required for the attainment of this object may, therefore, be performed by the re-issue. Not only may the language of the specification be indefinitely varied, but new Claims may be added, or the old may be divided and restated, within any limits not embracing patentable matter which is absent from the original description. If one re

3 That an extended patent can be re-issued, see Ex parte Sexton (1876), 9 O. G. 251; Wilson v. Rousseau (1846), 4 How. 646; 2 Robb, 372.

That a patent granted or extended under a special act may be re-issued like an ordinary patent, see Page v. Holmes Burglar Alarm Telegraph Co. (1880), 17 O. G. 737; 17 Blatch. 484; 1 Fed. Rep. 304; 5 Bann. & A. 165; Hussey v. Bradley (1863), 2 Fisher, 362; 5 Blatch. 134; Gibson v. Harris (1846), 1 Blatch. 167.

§ 693. 1 That if the first patent is defective a good one may be obtained, see Treadwell v. Bladen (1827), 4 Wash. 703; 1 Robb, 531.

2 That it is the office of a re-issue to make a defective specification clear and a defective Claim sufficient, see Russell

v. Dodge (1876), 93 U. S. 460; 11 0. G. 151; Aultman v. Holley (1873), 6 Fisher, 534; 11 Blatch. 317; 5 0. G. 3; Sarven v. Hall (1872), 5 Fisher, 415; Blatch. 524; 1 O. G. 437.

That a re-issue may contain new Claims based on the old specification, if such Claims were omitted by mistake, and if the patentee has not been estopped to amend, see Combined Patents Can Co. v. Lloyd (1882), 21 O. G. 713; 11 Fed. Rep. 149; 15 Phila. 481; Swift v. Whisen (1867), 2 Bond, 115; 3 Fisher, 343.

That the Claims may be enlarged in a re-issue if the invention is the same, see Jones v. Barker (1882), 11 Fed. Rep. 597; 22 O. G. 771; Sharp v Tifft (1880), 17 O. G. 1282; 2 Fed. Rep. 697; 18 Blatch. 132; 5 Bann. & A.

issue fails to accomplish the desired result another may be granted, and thus successive efforts at amendment may be made until the patent meets in all respects the purpose it was first intended to fulfil.3 Each of these successive re-issues is

399; Rubber Co. v. Goodyear (1869), 9 acted on his non-claim, -see Asmus v.
Wall. 788.
Alden (1886), 27 Fed. Rep. 684; 36 O.
G. 231.