untary extinguishment of former rights, not a concession that such rights never existed, and, therefore, while no suit can be maintained under the original patent nor any infringement of its privileges be made the ground of a recovery, all closed transactions under it remain undisturbed.2 Judgments obtained upon it are not vacated.3 Moneys paid under it cannot be reclaimed. But an infringement which commenced under the original patent is not sanctioned by the surrender, and if it continues in the same or in another form after the grant of the re-issue, an action may be instituted on the latter patent, and damages accruing since the date of the re-issue be obtained. §700. Application for Re-issue: Concurrence of the Inventor therein Necessary, if Living. An application for the re-issue of a patent granted and assigned before the 8th day of July, 1870, may be made by the owners of the patent with or without the concurrence of the original patentee.1 Patents granted or assigned since July 8, see Moffitt v. Gaar (1860), 1 Fisher, 610; Mfg. Co. v. Blundell (1882), 22 O. G. 1 Bond, 315. 177; 11 Fed. Rep. 419. 2 That a surrender cannot affect rights previously acquired, see Potter v. Holland (1858), 4 Blatch. 206; 1 Fisher, 327. That a contract concerning a patent applies to it after a surrender and reissue, the re-issue not being a new patent, see McBurney v. Goodyear (1858), 11 Cush. 569. 8 That the surrender of a patent for re-issue has no effect upon a right which has passed into a judgment, see Mers v. Conover (1876), 11 O. G. 1111. That although the surrender extinguishes the original patent, the moneys paid under it cannot be recovered, see Moffitt v. Gaar (1861), 1 Black, 273. 5 That the acquiescence of the patentee in the use of his invention, under the original patent, does not authorize its use under a re-issue, see McWilliams That a surrender and re-issue does not deprive the patentee of the right to sue for the unlawful use, after the reissue, of a machine brought before the re-issue, see Bliss v. Brooklyn (1871), 4 Fisher, 596; 8 Blatch. 533; Carr v. Rice (1856), 1 Fisher, 198. § 700. That under Sec. 13, act of July 4, 1836, the re-issue was to be granted to the patentee, if he was living and still the owner of the patent; if he was dead and there was no assignment, then to his executor or administrator; and if there was an assignment, to the assignee, see Potter v. Holland (1858), 4 Blatch. 206; 1 Fisher, 327. That under the act of 1836 a reissue might be granted to an assignee without the knowledge or consent of the patentee, see Swift v. Whisen (1867), 3 Fisher, 343; 2 Bond, 115. 1870, can be re-issued only upon the application and oath of the original inventor, if he be living.2 Various reasons for this change in the law have been suggested. The oath accompanying the application must aver that the error whose amendment is desired arose through inadvertence, accident, or mistake, and must repeat the allegations of the original oath in reference to priority of invention and the absence of previous public use and knowledge. This oath, after the grant of the re-issue, is prima facie evidence upon all the points embraced therein. To permit it to be made by a mere assignee upon his information and belief, when the inventor is living and can, therefore, testify upon his positive knowledge, is an unnecessary relaxation of the ordinary rules of evidence and was properly corrected by the act of 1870. Moreover, the rights of the inventor in his invention are not exhausted by the conveyance of his entire interest in the original patent. Under former laws a re-issue might affect the value of his right to an extension after the expiration of the assigned patent,3 and under present laws an alteration in the description or claims of the existing patent may prejudice his interests in subordinate or dependent inventions which may be indicated in the original specification, but which he did not intend to cover by the original patent or transfer to the assignee. His consent to the re-issue, if he is living and able to accord it, may be, therefore, properly required. § 701. Application for Re-issue: by Whom Made. Under existing laws the application for re-issue must be made by the inventor, if living; on his own behalf if he is. still the entire owner of the patent, and on behalf of its real owners if he has assigned the whole or any undivided interest. Where the inventor is dead the owners of the patent, whether his representatives or assignees or both, may make the application, as before the changes in the law.1 A living inventor 2 Rev. Stat. Sec. 4895. * That where an assignee has re-issued a patent without the patentee's consent, the latter may apply for an extension of the original, see Potter v. Braunsdorf (1869), 7 Blatch. 97. § 701. That an executor may obtain a re-issue, see Carew v. Boston Elastic Fabric Co. (1871), 3 Clifford, 356; 5 Fisher, 90; 1 0. G. 91. That a re-issue to an administrator is presumed to be regular, see Northwest who refuses to apply for a re-issue on behalf of his assignees, when such an amendment of the patent is legitimate and necessary, may be compelled to do so by a court of equity,— since his assignment of the patent implies a contract on his part to do whatever may be requisite to render the patent effective for the actual invention, and this contract equity will enforce. But an inventor has no authority to apply for the re-issue of an assigned patent without the consent of his assignees, and his wrongful act in this regard cannot impair their rights. A re-issue thus obtained by him is valid or invalid at their election. They may ratify it and enjoy the advantages derived from it, though issued only in his name, ern Fire Extinguisher Co. v. Philadelphia Fire Extinguisher Co. (1874), 10 Phila. 227; 6 O. G. 34; 1 Bann. & A. 177. der of his patent, to affect, without their consent, the rights of third per sons to whom he has previously passed his interest in the whole or a part of the 2 See §§ 1224, 1228-1230, and notes, patent. This consent may be manifested post. 8 That the surrender of an assigned patent is not valid unless made by the assignee or with his consent, see Ex parte Wright (1876), 10 O. G. 587; Meyer v. Bailey (1875), 8 O. G. 437; 2 Bann. & A. 73; Barnes 'v. Morgan (1875), 3 Hun, 703; Dental Vulcanite Co. v. Wetherbee (1866), 3 Fisher, 87; 2 Clifford, 555. That a patentee cannot affect the interest of his assignee by any surrender for re-issue, see Barnes v. Morgan (1875), 3 Hun, 703. That an assignment of a patent carries all re-issues if the assignee so elect, see Littlefield v. Perry (1874), 21 Wall. 205; 7 O. G. 964. That a re-issue to the patentee is a bar to a re-issue to an unrecorded assignee, see Whitely v. Fisher (1870), 4 Fisher, 248. 4 In Potter v. Holland (1858), 4 Blatch. 206, Ingersoll, J.: (214) "We adopt the rule laid down by Judge Story in the case of Woodworth v. Stone (3 Story, 749), that it is not in the power of the patentee, by a surren either by joining in the surrender with one. The patentee cannot, by taking a re-issue, deprive him of the same right to it that he had to the old one, if he wishes to take the benefit of such right. Woodworth v. Hall, 1 Woodb. & Minot, 248. But when he does take advantage and benefit of the re-issued patent, he consents to give up, and does give up, the right which he had under the old one." 1 Fisher, 327 (335). See also Littlefield v. Perry (1874), 21 Wall. 205; 7 O. G. 964, Dental or they may repudiate it and compel him to obtain another, or they may insist upon their privileges under the original patent. To guard against this unauthorized re-issue of an assigned patent, it is the practice of the Patent Office to require proof of the consent of all the owners of the patent, sufficient evidence of which is furnished by the filing of the abstract of their title with the application.5 § 702. Re-issued Patent: to Whom Granted. The re-issued patent may be granted to assignees of any degree, however remote from the original inventor.1 The limits within which the original description and claims may be amended, and the consequences of a previous disclaimer or abandonment, are the same as if the application had been made by the inventor. The re-issue is void if any fraud is perpetrated or attempted by the applicant, as where he knows that the original assignor was not the true inventor or that the error whose amendment he desires did not occur in such a manner as alone warrants its correction.2 The grant of a re-issue to an assignee is prima facie evidence of his title to the patent.3 Parties claiming under the original patent, other Vulcanite Co. v. Wetherbee (1866), 2 That third parties ratify the re-issue by using or selling rights under it, see Meyer v. Bailey (1875), 2 Bann. & A. 73; 8 O. G. 437. That a re-issue does not enure to the benefit of the assignee when obtained by the patentee, the assignee taking by ratification, not by enurement, see Burdell v. Denig (1865), 2 Fisher, 588. That when the patentee obtains a re-issue at the request of the owners of the patent after an assignment of the original it enures to the benefit of the assignees, see Wing v. Warren (1872), 5 Fisher, 548; 2 O. G. 342. That the Commissioner may require sufficient proof that the assignee consents to the re-issue, see Ex parte Wright (1876), 10 O. G. 587. That a certified abstract of title is the proper evidence of the assignee's consent, see Ex parte Wright (1876), 10 O. G. 587. § 702. 1 That a re-issue may be granted to an assignee of any degree, see Selden v. Stockwell Self-Lighting Gas Burner Co. (1881), 19 Blatch. 544; 20 O. G. 1377; 9 Fed. Rep. 390; Swift v. Whisen (1867), 3 Fisher, 343; 2 Bond, 115. That a re-issue may be obtained in his own name by the assignee of the executor of the patentee, see Carew v. Boston Elastic Fabric Co. (1871), Holmes, 45. 2 That a re-issne is void if the applicant knew, at the date of the application for it, that he or his assignor was not the true inventor, see Singer v. Walmsley (1860), 1 Fisher, 558. 3 That the grant of a re-issue to an than its owners, may retain their existing rights or assert them as modified by the re-issue at their option.* § 703. Re-issued Patent a Continuation of the Original, and Governed by the Same Law. A re-issued patent is a new statement of the contract between the public and the patentee, and binds each of its parties to the same extent as if it were an original patent. It is to be interpreted by the same rules, and is subject to amendment by re-issue or disclaimer in the same manner.1 Being, however, a continuation in a new form of the original patent, the rights arising under it are governed by the law in force when the original was granted, and the patentability of the invention which it covers is determined by the state of the art as it existed at the date of the original.2 The motive for obtaining a re-issue cannot change the rights which it creates, and is not regarded in deciding upon its validity or construing its provisions, except in cases where an actual fraud has been committed.3 assignee is prima facie evidence that he has a title to the patent, see Washburn & Moen Mfg. Co. v. Haish (1880), 10 Bissell, 65; 19 O. G. 173; 4 Fed. Rep. 900; American Diamond Rock Boring Co. v. Sheldon (1879), 17 Blatch. 208; 4 Bann. & A. 551. 4 That no re-issue of a patent can affect the rights of non-consenting own. ers or other third parties, see Potter v. Braunsdorf (1869), 7 Blatch. 97; Potter v. Holland (1858), 4 Blatch. 206; 1 Fisher, 327. That a portion or the whole of an invention for a particular part of the United States, and the rest for other parts, may be secured by a re-issue, see Potter v. Holland (1858), 4 Blatch. 206; 1 Fisher, 327. That after an extension the re-issue is good for the extended term, see Gib son v. Harris (1846), 1 Blatch. 167. That the Patent Office has § 703. the same power over a re-issue as over the original, see Ex parte Lippincott (1879), 16 O. G. 632. 2 That the re-issue is a continuation of the original patent, see Shaw v. Colwell Lead Co. (1882), 20 Blatch. 417; 11 Fed. Rep. 711; Shaw v. Cooper (1833), 7 Peters, 292; 1 Robb, 643. That a re-issue is governed by the law in force at the date of the original, see Shaw v. Cooper (1833), 7 Peters, 292; 1 Robb, 643. That the patentability of the inven. tion claimed in a re-issue is determined by the state of the art at the date of the original application, see Carroll v. Morse (1876), 9 O. G. 453; Carlton v. Bokee (1872), 17 Wall. 463; 2 O. G. 520; 6 Fisher, 40; and § 708, note 2, post. That the motive for a re-issue is unimportant, if the inventions are the same, see Buffum v. Oakland Mfg. Co. (1879), 4 Bann. & A. 599. |