the alleged error in the original arose. In examining the patentability of the invention the same questions as to its novelty, utility, abandonment, and the priority of the applicant's inventive act, are presented as on original applications, and the claim of the applicant as to any one of these questions is not aided by the fact that the invention has already once received the protection of a patent, and that the validity of the patent has been vindicated in the courts.2 Even the repetition in the re-issue application of the exact Claims of the original patent does not exempt them from this examination or from the judgment which may be pronounced upon them by the Patent Office. The novelty of the invention is determined according to the state of the art at the date of the original application, not at that of the re-issue, since if the invention was then new to the public no subsequent advances in the arts can deprive it of the novelty which it possessed when the inventor first endeavored to protect it. Its utility is measured by the usual standards. Abandonment is evidenced by more than two years' public use and sale before the original application, by an omission to claim it in the original patent after clearly describing it and an unreasonable delay in curing the omission by a re-issue, and by any other conduct of the inventor, either before or since the issue of the original patent, which proves an intention upon his part to dedicate the invention to the public.

2 That in an application for a reissue, its Claims are subject to revision by the Patent Office though they have been sustained by the courts, see Ex parte Cox (1873), 3 O. G. 2.

That on an application for a reissue the patentability of the invention will be examined in view of the state of the art at the time when the original patent was applied for, see Carroll v. Morse (1876), 9 O. G. 453; Carlton v. Bokee (1872), 17 Wall. 463; 2 O. G. 520; 6 Fisher, 40.

That on an application for a re-issue the right of the re-issue applicant to the inventions claimed in his re-issue application will be examined in view of the

That the invention

state of the art as indicated by inventions made both before and since the original was granted, and by the claims of rival inventors, see Sargent v. Burge (1876), 10 O. G. 285.

That the re-issue is void for want of novelty if the original was, see Jones v. McMurray (1877), 3 Bann. & A. 130; 2 Hughes, 527; 13 O. G. 6.

4 That on an application for a re-issue two years' public use of the invention before the original application may be shown, and will be fatal, see Funck v. Doty (1878), 14 O. G. 157.

That for all purposes of abandonment by public use and sale, the date of the re-issue is the date of the original,

was first conceived and reduced to practice by the alleged inventor is established prima facie by the oath accompanying the application, but may be contradicted by the records of the Patent Office or the personal knowledge of the examiner. The practice in regard to the objections and references of the examiner, as well as to amendments, arguments, rejections, and appeals, is similar to that in cases of original applications.

§ 709. Procedure on Applications for Re-issue: Examination of the Application as to the Identity of the Invention with that Described in the Original Patent.

In examining the identity of the invention claimed in the re-issue application with that attempted to be covered by the original patent, the examiner must be guided, not by his personal judgment or discretion, as in amendments to original applications, but by the rules specifically prescribed in the statutes and the decisions of the courts. The inventions are not identical unless all the essential characteristics of the one described and claimed in the re-issue application were described or attempted to be described in the original specification, drawings, or model as part of the patented invention.1 In a machine-patent, for reasons hitherto recited, this identity must appear by a comparison of the drawings and models, which can be amended only by each other.2 In other cases where drawings and models exist, the identity is determined

see Shaw v. Colwell Lead Co. (1882), 11 Fed. Rep. 711; 20 Blatch. 417.

That Sec. 32, act of 1870, making two years' delay in prosecuting an application an abandonment of it, does not relate to re-issue applications, see Ex parte Galusha (1873), 3 O. G. 321.

That things abandoned before the issue of the original patent cannot be claimed in the re-issue, see Ex parte Conklin (1872), 2 O. G. 543.

§ 709. 1 That on an application for a re-issue, parol evidence is not admissible to enlarge the scope of the invention beyond that shown in the original specification, drawings, and model, see Glue

Co. v. Upton (1874), 6 O. G. 837; 4 Clifford, 237; 1 Bann. & A. 497; Collar Co. v. Van Deusen (1874), 23 Wall. 530; 7 O. G. 919; Cahart v. Austin (1865), 2 Clifford, 528; 2 Fisher, 543.

2 That under the act of 1870 the Commissioner, in allowing a re-issue, cannot look outside the original specification, drawings, and model, except that in machine-patents, where the model is no longer in existence, extrinsic proof may be examined to determine what the machine really was, see Giant Powder Co. v. California Powder Works (1875), 3 Sawyer, 448; 2 Bann. & A. 131.

by comparing the entire descriptions, as contained in these and in the specifications to which they are annexed, with one another. Where there are no drawings or models, and the description in both the original and the re-issue applications, therefore, rests in words alone, extrinsic proof may be offered and received to establish this identity.3

710. Procedure on Applications for Re-issue: Examination of the Application as to the Mode in which the Defects in the Original Arose.

The examination into the cause from which the alleged error in the original arose may be conducted according to the discretion of the Commissioner, provided it be done without prematurely disclosing the pendency of the re-issue application. The affidavit of the applicant is prima facie proof that the error occurred through inadvertence, accident, or mistake, and without fraudulent or deceptive intention; but this is open to contradiction or to confirmation by the records of the Patent Office, the affidavits of its officers, or any other evidence satisfactory to the Commissioner which can be obtained without a violation of the secrecy to which the applicant is entitled. The existence of this condition must be established before the re-issue can be legally allowed.1 But

That on an application for a re-issue the Commissioner may examine the original specifications, drawings, model, or any other legal proof, in order to ascertain the identity of the inventions, see Hussey v. Bradley (1863), 2 Fisher, 362; 5 Blatch. 134.

That where no model or drawing accompanies the original patent great care should be exercised to exclude new matter from the re-issue, see Ex parte Gottstein (1877), 11 O. G. 1061.

That extraneous evidence as to a model destroyed by fire, or other lost records, will not be received on a reissue application, see Ex parte Williams (1878), 14 O. G. 202.

§ 710. That no re-issue ought to be allowed by the Commissioner unless the applicant shows that the original was

defective through mistake, and not through fraud, and points out in what the mistake consisted, see Ex parte Conklin (1874), 1 MacArthur, 375; 5 O. G. 235.

That an assignee cannot re-issue to cover additions unless he proves that the additions were made by the inventor, and were intended to be patented by him, and were omitted by mistake, see Opinion Atty. Gen. (1833), 2 Op. At. Gen. 572.

That the testimony of the patentee, who re-issued his patent after thirteen years, that "he thought" the original was defective and ought to cover the additional matter, does not prove origi. nal inadvertence or mistake, see Newton v. Furst & Bradley Mfg. Co. (1886), 119 U. S. 373; 38 O. G. 104.

the question relates to the intention of the inventor at the date of his original application, not to his conduct since that time, except so far as it throws light on his intention then; and if the error then was unintentional, his subsequent attitude toward individual third parties cannot estop him from asserting his right to amend his patent.?

§ 711. Procedure on Applications for Re-issue: Interferences.

An application for a re-issue is liable to be placed in interference with a pending original application, with another application for re-issue, or with an unexpired patent, whenever the inventions claimed in each are apparently identical. An interference will be declared, under the rules, between an application for a re-issue and a conflicting original application, if the original application was pending when the patent whose re-issue is desired was granted, or if the party presenting the original application makes oath that he performed his own inventive act before the filing of the application for the patent upon which the proceedings in re-issue have been based. An interference will be declared between two or more conflicting applications for re-issue when their respective patents were granted upon applications pending at the same time, or when the applicant for the re-issue of the later patent avers on oath that his inventive act preceded the filing of the application for the earlier patent. An interference will be declared between an application for a reissue and a conflicting unexpired patent when the original applications for both patents were pending at the same time, and the re-issue applicant makes oath that his inventive act occurred before the original application of the other patentee

2 That an applicant for a re-issue is not estopped from claiming it by his conduct toward outside parties, see Ex parte Roe (1874), 5 O. G. 397. This case rests upon the doctrine that an estoppel in favor of individual parties does not enure to the public benefit, and is consequently no bar to a re-issue of the patent as against the public. But if it be true, as many cases seem to indicate, that an inventor may estop himself to claim the inven

tion as against the public, or that estoppel may constitute one step in that series of events which results in an abandonment of the invention to the public by the act of some rival inventor, there is no reason why a re-issue applicant should not be bound by his commissions or omissions to the same extent as any other claimant of an invention. See §§ 346, 357, 390, and notes,

ante.

was filed, or when the original application for the patent whose re-issue is desired was filed after the other patent had been granted and the re-issue applicant presents an affidavit that his invention was completed before the filing of the application for the earlier patent. Where an interference has been declared between a patent and an application, and pending the interference an application is made for the re-issue of the patent, the re-issue application is examined on its individual merits, and if allowed, will take the place of the original patent in the interference.1 A reissue application, describing but not claiming an invention involved in interference, may be amended by the insertion of such Claim and be, thereupon, admitted to the contest. The proceedings upon an interference are the same whether the applications are for a re-issue or for an original patent.

§ 712. Procedure on Applications for Re-issue: Appeals.

From an adverse decision of the examiners upon any question relating to the merits of the application, an appeal lies to the examiners-in-chief, and thence successively to the Commissioner, the Supreme Court of the District of Columbia, and to the Supreme Court of the United States, except in interference cases, where the decision of the Commissioner is final. Although an application for re-issue has been duly allowed and passed by the examiners, the patent is still subject to the control of the Commissioner, and like an original patent may be withheld by him upon sufficient grounds. If

§ 711. 1 That where the original patent is in interference, and not the re-issue-application, the re-issue-application will be examined, and on the surrender and cancellation of the original patent will be substituted for it, see Ex parte Zay (1881), 19 O. G. 1496.

That where the re-issue-application contains no Claim involved in the interference declared with the original, the application should not be placed in interference, see Ex parte Zay (1881), 19 O. G. 1496.

That where a patent has been surrendered for re-issue, an interference de

clared, an adverse decision rendered, and a re-issue refused, the patent is entirely avoided, see Peck v. Collins (1881), 103 U. S. 660; 19 O. G. 1137.

§ 712. 1 That a re-issue patent, though signed, may be withheld on account of a protest against its issue, see Ex parte Hunt (1879), 15 O. G. 831.

That after the Patent Office decides to re-issue a patent, a stranger cannot have access to the records of the proceedings in order to discover objections and contest it, see Dec. Sec. Int. (1883), 23 O. G. 629.