§ 704. Procedure on Applications for Re-issue: The Application. An application for a re-issue, and the proceedings in the Patent Office thereon, are for the most part governed by the rules which regulate applications for original patents, and which have been already considered in detail. It will be sufficient, therefore, to discuss at this time only the particular points in reference to which the procedure on re-issue applications is exceptional. The application must be based upon a single original patent and must show the original to have been defective through mistake, and point out wherein the mistake consisted.1 It need not follow the language of the statute." It comprises a petition, an oath, an abstract of title, and the amended specification, accompanied by such drawings and model as the nature of the case may require. The petition prays for leave to surrender the original patent and for a reissue upon the amended specification. It may be signed by the true owners of the patent, unless the patent has been granted or transferred since July 8, 1870, in which case the petition must be signed by the inventor if living, and contain the written assent of the present owners. If the inventor has deceased, and the petition bears the signatures of the assignees, the fact of his decease must be duly stated. The abstract of title must disclose the names of all persons owning any undivided interest in the original patent; and the orig

§ 704. 1 That a re-issue can be based on but a single original patent, not on several, see Washburn & Moen Mfg. Co. v. Fuchs (1883), 16 Fed. Rep. 661; 5 McCrary, 236.

2 That the application for a re-issue need not follow the language of the statute, see Gold & Stock Telegraph Co. v. Wiley (1883), 17 Fed. Rep. 234.

That a re-issue need not be applied for in writing under the statute, though the rules of the Patent Office may require it, see Dental Vulcanite Co. v. Wetherbee (1866), 3 Fisher, 87; 2 Clifford, 555.

3 That if the original assignment by the patentee to the first assignee were

made before July 8, 1870, the application for re-issue may be made by the assignee, see Selden v. Stockwell Self-Lighting Gas Burner Co. (1881), 19 Blatch. 554; 20 O. G. 1377; 9 Fed. Rep. 390.

That Sec. 3, act of 1870, proviso 2d, does not require applications for re-issue pending on July 8, 1870, to be made anew, with oath of inventor, etc., see National Spring Co. v. Union Car Spring Mfg. Co. (1874), 12 Blatch. 80; 6 O. G. 224.

4 That an abstract of title must accompany an application for a re-issue, see Ex parte Fassett (1877), 11 O. G. 420; Ex parte Wright (1876), 10 O. G. 587.

inal patent, or, if it be lost, a certified copy and an affidavit of the loss, must at the same time be delivered to the Patent Office.

§ 705. Procedure on Applications for Re-issue: The Oath.

Where the petition must be signed by the inventor the oath must also be made by him; in other cases it should be made by the applicants, whoever they may be.1 In addition to the matters embraced in the oath required in an original application, it must state particularly that the applicant believes the original patent to be inoperative or invalid, with his reasons for such belief, specifying the defects or insufficiencies in the description, or the excessive matter in the Claim, pointing out the errors which constitute the inadvertence, accident, or mistake, with the manner in which they arose, and alleging that such errors occurred without fraudulent or deceptive intention. It must also disclose the existence of foreign

§ 705. 1 That under the act of March 3, 1871, the oath of the assignee was sufficient, if the original patent issued before July 20, 1870, but otherwise the oath of the inventor was required, see National Car Spring Co. v. Union Spring Mfg. Co. (1874), 6 O. G. 224; 12 Blatch. 80.

That where an assignee filed an appli cation for a re-issue before July 20, 1870, his oath alone was sufficient, see National Spring Co. v. Union Car Spring Mfg. Co. (1874), 6 O. G. 224; 12 Blatch. 80.

That an applicant for a re-issue who has assigned his interest, and is still obliged to make oath that the mistake occurred "through inadvertence, etc.,' is not merely a formal party and a perfunctory affiant, and his assignee is bound by his statements and declarations, see Ex parte Mahnken (1887), 41 O. G. 1269.

2 That the oath to a re-issue application must aver that the applicant be lieves that he is the original and first inventor, and that the invention was never before known or used, and must

allege his citizenship, see Ex parte Whitely (1886), 36 O. G. 1243.

That an affidavit, on an application for re-issue, that the original is "not fully valid and available" is not sufficient and the re-issue is void, see Poage v. McGowan (1883), 15 Fed. Rep. 398; Whitely v. Swayne (1865), 4 Fisher, 117.

That the rule requiring a detailed statement under oath is imperative, and unless observed the application will not be examined, see Ex parte Whitely (1886), 36 O. G. 1243 ; Ex parte Timken (1883), 24 O. G. 1088.

That the rule requiring a statement to be filed with a re-issue application, accounting for the defects in the original, is not retroactive, see Ex parte Pfaudler, (1882), 23 O. G. 269.

That the statement required to be filed with a re-issue application must set out the facts on which the application is based, not merely the opinions or conclusions of the person who prepares the paper, pointing out the defects which render the original invalid and showing

patents for the same invention, if any have been issued to the applicant or to others by his consent, with their dates and numbers and the extent to which the invention has been used in the United States, in the same manner as on an original application.3

§ 706. Procedure on Applications for Re-issue: The Specification, Drawings, and Model.

The language of the amended specification must correspond with that of the original unless some sufficient reason for a change appears. In an original Description the widest latitude in the use of terms may be permitted, but in the reissue specification, where the identity of the invention must, at all hazards, be preserved, no unnecessary divergence from the words in which it was originally stated can safely be allowed. New names, new uses, new descriptive matter tend to create uncertainty in this respect, and may easily be made to cover some unwarrantable departure from the original invention. Except where the correction of the errors in the previous description requires the employment of additional or substituted phraseology, the rules followed by the Patent Office in passing upon the formal sufficiency of the amended specification, therefore, restrict it to the statements made in the original. New drawings must accompany the specifica

how they arose, see Ex parte Timken (1883), 24 O. G. 1088; Ex parte Wilkins (1883), 24 O. G. 1270; Ex parte Pfaudler (1882), 23 O. G. 269.

That a statement of reasons for reissue, which merely alleges "misunderstanding," is not sufficient, see Ex parte Wilkins (1883), 24 O. G. 1270.

That, except for the Patent Office rules, the invalidity of the original need not be sworn to, and though an oath were required its omission would not invalidate the re-issue, see Hartshorn v. Eagle Shade Roller Co. (1883), 25 O. G. 1191; 18 Fed. Rep. 90; Burr v. Duryee (1862), 2 Fisher, 275.

That it is not imperative on the Patent Office that the fact that the

original is inoperative, should have been judicially ascertained, see Burr v. Duryee (1862), 2 Fisher, 275.

That under the rules re-issue as well as original applications require an oath disclosing foreign patents and the extent of use in the United States, see Ex parte Beck (1880), 17 O. G. 329.

§ 706. In Ex parte Underwood (1872), 1 O. G. 549, Leggett, Com. : (549) "In applications for patents the examiner should interfere as little as possible with the language chosen by the applicant in describing his invention. The largest latitude should be allowed; but in applications for reissues a different rule does and should prevail. The applicant should be held

tion when the invention is capable of such delineation, conforming in their style, number, and artistic perfection to the regulations governing original drawings. These new drawings are allowed to vary from the old only where the variation appears in the original model or relates to some unimportant matter not affecting the invention claimed. The amendment of the model is, in like manner, limited to features found in the original drawings.

§ 707. Procedure on Applications for Re-issue: Filing of the Application in the Patent Office.

That the specification of the re-issue may be made more full and precise than the original, in order to cover the real invention, see Washburn & Moen Mfg. Co. v. Haish (1880), 4 Fed. Rep. 900; 10 Bissell, 65; 19 O. G. 173.

The application, thus composed, is presented to the Patent Office by forwarding it in the usual mode to the Commissioner, accompanied by the statutory fees. This entitles the applicant to the consideration of his case, and if the Commissioner refuses to proceed with its examination, he may be compelled to do so by mandamus.1 A hearing on an application for re-issue takes precedence over those on ordinary applications, and will be particularly expedited if the term of the original patent has almost expired.2 The filing of the rigidly to the language adopted in his patent, except that a good reason appears for departing from such language. In objecting to the use of new terms, new descriptive matter, etc., the examiner is not bound to give reasons. It is enough that such terms and descriptive matter are new; and it devolves upon the applicant to show good reason for their introduction, or they must be stricken out. A different rule would open a wide door to fraud. A patentee, if allowed to interpolate new uses, new descriptive matter, new names, etc., might, by frequent re-issues, keep full pace with the advancement in the art to which his patent pertains, and might thus appropriate to his own use the improvements and inventions made by others. The rule should be: liberality with original applications; strict construction with applications for re-issue." See also Hatch v. Moffitt (1883), 15 Fed. Rep. 252.

That a re-issue containing a broad Claim binds the patentee even though it does not secure his invention, see Wisner v. Grant (1880), 18 O. G. 192; 7 Fed. Rep. 922.

§ 707. That where an applicant for a re-issue has filed his application and paid his fees and done all he can to make the application effectual, it is the duty of the Commissioner to hear it although he may not have accepted the fees, and if he refuses, a mandamus will lie to compel a hearing, see Commis sioner v. Whitely (1866), 4 Wall. 522.

2 That where a patent has nearly expired, its re-issue may be expedited in the Patent Office, see Ex parte Evarts (1874), 5 O. G. 429.

application does not preclude the applicant from resuming his rights under the former patent; but at any time before the re-issue has been granted he may withdraw his application, revoke his surrender, and be restored to his original position.3

§ 708. Procedure on Applications for Re-issue: Examination of the Application on the Merits of the Invention.

The specification annexed to a re-issue application is subject to revision, restriction, division, and other formal corrections in the Patent Office, to the same extent as an original specification. An examination of the application on its merits involves an inquiry into the patentability of the invention therein described and claimed, into the identity of such invention with the invention attempted to be covered by the former patent, and into the cause from which