refused by one Commissioner his successor should not grant it without a careful re-examination of the case, and a clear conviction that the former judgment was erroneous.2 § 713. Date and Term of Re-issued Patent. A re-issued patent bears the date of the original for all purposes, except as the foundation of an action for infringement. When the term of the re-issue is expressed in years, the term runs from the grant of the original.2 When the original was limited by the duration of a foreign patent, the re-issue is subject to the same limitation. The rights of all parties claiming under the re-issue, whether as against the public or against rival claimants, are held to have accrued when the original patent issued, and are interpreted and enforced according to the circumstances then existing.4 All rights of action for the infringement of the original patent are, however, extinguished by its surrender, and suits pending at the date of the re-issue are abated.5 That a re-issue withheld by one Commissioner will not be granted by his successor without a careful examination of the case, see Ex parte Hunt (1879), 15 O. G. 831. § 713. That the re-issue bears the date of the original, except as to suits for infringement, see House v. Young (1867), 3 Fisher, 335; Hussey v. Bradley (1863), 2 Fisher, 362; 5 Blatch. 134; Bloomer v. Stolley (1850), 5 McLean, 158; Woodworth v. Hall (1846), 1 W. & M. 248; 2 Robb, 495; Stanley v. Whipple (1839), 2 McLean, 35; 2 Robb, 1; Shaw v. Cooper (1833), 7 Peters, 292; 1 Robb, 643; Grant v. Raymond (1832), 6 Peters, 218; 1 Robb, 604. That the decision of the Commissioner that the date of the invention described in the re-issue was the date of the original patent is final, see House v. Young (1867), 3 Fisher, 335. 2 That a re-issue granted for a specific term begins at the date of the original patent, see Whitely v. Fisher (1870), 4 Fisher, 248. 8 That the law, not the language of the patent, decides when a re-issue becomes operative, see Whitely v. Fisher (1870), 4 Fisher, 248. That the rights of the patentee under the re-issue are governed by the law in force at the date of the original, see Shaw v. Cooper (1833), 7 Peters, 292; 1 Robb, 643. 5 That the surrender extinguishes the original patent, and all rights of action under it fall with it, see Jones v. Barker (1882), 22 O. G. 771; 11 Fed. Rep. 597; Peck v. Collins (1880), 103 U. S. 660; 19 O. G. 1137; Moffitt v. Gaar (1861), 1 Black, 273. That as all pending suits fail with a surrender of the patent for re-issue, there can be no continuance to obtain a reissue, see Jones v. Barker (1882), 22 O. G. 771; 11 Fed. Rep. 597. That a re-issue can affect only suits subsequently begun, see United States Stamping Co. v. King (1879), 17 O. G. 1399; 17 Blatch. 55; 7 Fed. Rep. 860; 4 Bann. & A. 469. § 714. Decision of Commissioner in Allowing a Re-issue, how far Conclusive. The effect of a decision of the Commissioner in granting a re-issue, and the extent to which his decision is reviewable by the courts, are questions which have given rise to much discussion. Upon principle, the problem seems to be a simple § 714. 1 Upon the effect of the award of a re-issue by the Commissioner the courts are to this day undecided, and the judgments of different tribunals are apparently irreconcilable. In several earlier cases it was held that the action of the Commissioner was conclusive unless fraud in obtaining and allowing the re-issue was alleged and proved. His power to determine the identity of the inventions covered by the re-issued and original patents was treated as final, and except in such palpable and unwarranted enlargements as implied a fraud, the re-issue could not on this ground be impeached. Thus in Whitely v. Swayne (1865), 4 Fisher, 117, Leavitt, J. (123) "It is insisted by the counsel for the complainant, that the decision of the Commissioner of Patents in granting the re-issues is conclusive, and that the court cannot look into anything that transpired antecedently to the grant to impeach the validity of the re-issued patent. This is undoubtedly the settled law in this country, so far at least as to the identity of the original invention, and the invention as described and claimed in the application for the re-issue, unless fraud in the transaction is alleged. The Commis. sioner is supposed to have all the quali fications necessary to an intelligent decision of that question, and there are strong reasons why his action should be regarded as final. Such I understand to be doctrine of the Supreme Court of the United States, as announced in numerous reported cases. 4 How. 404; 15 How. 62; 17 How. 84; Law's Dig. 617. But I am not aware that the Supreme Court have decided in any case that it is not competent to inquire whether the Commissioner has exceeded his authority in granting a patent, without a compliance with the requirements of the statute. He has clearly no power to dispense with what the statute declares to be necessary prerequisites to the grant. And if it appears from the papers and records of the Office in evidence that the statutory requirements have not been complied with, it is within the power of a court, and its plain duty, to hold the patent to be void. Such was the doctrine announced by Judge Hall in the case of Ransom v. Mayor of New York, Law's Dig. App. 57. The learned judge says: 'Things specified in this section (6th section of the act of 1836) are prerequisites to the granting of a patent, and unless these prerequisites are complied with, a party sued for an infringement of the patent may show that they have not been complied with, and in that mode defeat the action of the supposed inventor.' The soundness of this doctrine cannot be successfully controverted. It would be straining the doctrine of presumptions in favor of the legality of the acts of a public officer to an unreasonable extent to hold that a patent is legal and valid where the records and papers of the Office show conclusively that essential statutory provisions had been disre garded." Also in Swift v. Whisen (1867), 3 Fisher, 343, Leavitt, J.: (351) "But the statute makes it the special duty of the Commissioner of Patents to examine closely every application for a re one. The Commissioner is a judicial officer, empowered under issue, and he is vested with no authority to grant a re-issue except under circumstances where the statute has been complied with. It is to be supposed, in support of the exercise of the authority of the Commissioner of Patents under the law, that all the requisites of the statute have been complied with, and hence it is the uniform doctrine of all the courts of the United States that they will presume that the law has been complied with, and they refuse, except under special circumstances referred to in the act, to go into any inquiry back of the grant by the Commissioner of Patents of these re-issues; in other words, to a certain extent they consider the action of the Commissioner upon the right of parties to a re-issue to be conclusive; presuming that all the requirements of the law have been enforced, have been complied with, in the case. The decisions upon the general doctrine to which I have referred, namely, to the effect that the action of the Commissioner is conclusive upon the question of the identity of the inventions embraced or described in the re-issue and in the original patent, would seem to be harmonious. There is no case, that I am aware of, in conflict with this general proposition; and these decisions rest upon the fact that in deciding whether the re-issue is for the same invention, the Commissioner of Patents, who acts, of course, under the obligation of an oath, acts in that particular in a judicial capacity. His decisions, therefore, on points of that kind, have the force and effect of judicial decisions, and courts are reluctant to go back of those decisions and to inquire whether the re-issue has been properly granted or not, except in cases where it is made apparent that the reissue was obtained by fraud, or for the purposes of deception and imposition. But if any facts appear in the progress of a trial, which are sufficient to satisfy a jury that there has been fraud in the procurement of a re-issue, — either actual fraud, or circumstances which may be supposed to amount to constructive fraud, the re-issued patent will be held invalid. There is a plain distinction between actual fraud and constructive fraud. The statute refers, specially, to cases of collusion, fraudulent, corrupt collusion between the applicant for the patent and the Commissioner of Patents. If it is apparent that there has been any improper collusion between them, and that the patent has been granted corruptly, then, of course, that is an act of positive fraud that will invalidate any patent to which it applies. And there may be also constructive fraud, where it is made manifest that the reissued patent is fraudulently extended beyond the claims of the original patent for a deceptive purpose, for the purpose of imposition upon the public, and where there is no just foundation for such a claim in the original patent; where, in fact, the re-issue goes altogether beyond the scope of the original inven. tion and incorporated an element that was not contemplated or intended by the original patentee in his original patent. Cases of this kind have occurred in the progress of the execution of the patent laws of the country where re-issues have been fraudulent, — that is, where they have been tainted with this constructive fraud; where it appeared that, for a deceptive purpose, a party applying for a re-issue had sought to embrace an element in the re-issued patent that was not claimed and did not pertain to the original invention, for the purpose of taking advantage of other parties in the community who were using that element which he had fraudulently certain circumstances to issue letters-patent, and while acting made a part of his original invention." er, 232, Strong, J.: (237) "It must 2 Bond, 115 (125). See also Jordan v. Dobson (1870), 2 Abbott, 398; 7 Phila. 533; 4 Fisher, 232. It soon, however, became evident that the imputation of such comprehensive powers to the Commissioner on a mere ex parte proceeding was at variance with the rights of individuals and with public policy. The position was then adopted by the courts that whenever it appeared on the face of the original and re-issued patents that the inventions embraced therein were not identical, the Commissioner had exceeded the authority conferred upon him by the statutes and that the award of the reissue might be held invalid; and, on the other hand, that where the want of identity was not apparent on comparing the two patents, the action of the Commissioner could not be impeached on any ground whatever, except for fraud in allowing the re-issue, and this only in a proceeding instituted for that purpose. This position has been maintained in numerous cases and is still adhered to by many of our courts. Thus in Seymour v. Osborne (1870), 11 Wall. 516, Clifford, J.: (543) "Where the Commissioner accepts a surrender of an original patent and grants a new patent, his decision in the premises, in a suit for infringement, is final and conclusive, and is not re-examinable in such a suit in the Circuit Court, unless it is apparent upon the face of the patent that he has exceeded his authority, that there is such a repugnancy between the old and the new patent that it must be held, as matter of legal construction, that the new patent is not for the same invention as that embraced and secured in the original patent." be assumed, therefore, he did determine there were defects in the former specifi cations arising from inadvertence, accident, or mistake, without any fraudulent intention. And having thus determined, his decisions are conclusive. They are not re-examinable, except so far as he decided there was no fraud. It is now settled that the granting of a renewed patent is so far conclusive upon the question of the existence of error in the original patent arising from inadvertency, accident, or mistake, that it leaves nothing open but the fairness of the transaction. Stimpson v. Westchester R. R. Co., 4 Howard, 380; Woodward v. Stone, 3 Story, C. C. R. 749; Allen v. Blunt, 3 Story, C. C. R. 742; Curtis on Patents, 280." 2 Abbott, 398 (404); 7 Phila. 533 (536). In Collar Co. v. Van Dusen (1874), 23 Wall. 530, Clifford, J.: (558) “Unless, however, it is apparent upon the face of the new patent that the Commissioner has exceeded his authority, his decision is final and conclusive, as the jurisdiction to re-issue patents is vested in him subject to a single exception, that if there is such repugnancy between the old and the new patent that it must be held, as matter of legal construction, that the re-issued patent is not for the same invention as that embraced and secured in the original patent, then the re-issued patent is invalid." 7 O. G. 919 (920). In Wells v. Jacques (1874), 1 Bann. & A. 60, Nixon, J.: (68) "His application is made to the Commissioner of Patents, and that officer, not this court, is the tribunal in which Congress has vested the power of determining whether sufficient reasons exist to grant the reissue. His decision in the matter is final, in the sense that there is no apIn Jordan v. Dobson (1870), 4 Fish- peal from it; and it does not seem to within his jurisdiction his judgments are conclusive and can be re-examinable here, unless it is evident upon the face of the re-issue that he has exceeded his authority, and that there is such a repugnancy between the old and the re-issued patent that it must be held, as a matter of legal construction, that they are not the same invention. Seymour v. Osborne, 11 Wall. 543." 5 O. G. 364 (366). In Birdsall v. McDonald (1874), 6 O. G. 682, Swayne, J.: (683) "The Commissioner of Patents awarded the re-issue. The subject was placed by the law within his jurisdiction. His decision is to be held prima facie correct in all cases, and it is conclusive, unless impeached for fraud, or unless it is clear upon the face of the several specifications that the re-issue is not for the same thing as the original patent. Where a remedy is sought for fraud it must be in an independent proceeding had directly for that purpose by a bill in equity in the name and by the authority of the United States." 1 Bann. & A. 165 (170). In Russell v. Dodge (1876), 93 U. S. 460, Field, J. (464) "The decision of the Commissioner in granting the reissue is, it is true, so far conclusive as to preclude in the present suit for infringement any inquiry into its correctness outside of the patents themselves. His action, in any case within the limits of his authority, is not open to collateral impeachment. But that authority being limited to a re-issue for the same invention as that embraced in the original patent, a re-issue for anything more is necessarily inoperative and void. To determine the identity of the invention the two patents may be compared. Thus compared, the re-issue here appears on its face to be for a different invention, and the Commissioner, therefore, exceeded his authority in issuing it.” 11 O. G. 151 (152). G. In Kells v. McKenzie (1881), 20 O. 1663, Brown, J.: (1663) Under this section it is now settled that the decision of the Commissioner re-issuing the patent is final and conclusive, and is not subject to review in any court, except as to the identity of the invention. But if it be apparent upon the face of the patent that he has exceeded his authority, and has thus acted without jurisdiction, and that there is a manifest repugnancy between the old and new patent, then it must be held, as a matter of legal construction, that the new patent is not for the same invention as that embraced and secured in the original patent." 9 Fed. Rep. 284 (286). In Spaeth v. Barney (1885), 22 Fed. Rep. 828, Colt, J.: (829) "The authorities are numerous and conclusive to the effect that where the Commissioner accepts the surrender of an original patent, and grants a new patent, his decision is final and conclusive in a suit for infringement, unless it is apparent on the face of the patent that he has exceeded his authority; that there is such a repugnancy between the old and the new patent that it must be held, as matter of legal construction, that the new patent is not for the same invention as that embraced in the original patent." 30 O. G. 997 (997). To the same effect see American Diamond Rock Boring Co. v. Sheldon (1879), 17 Blatch. 208; Thomas v. Shoe Mach. Mfg. Co. (1878), 16 O. G. 541; 3 Bann. & A. 557; Russell v. Dodge (1876), 93 U. S. 460; 11 O. G. 151; Union Paper Collar Co. v. White (1875), 11 Phila. 479; 7 O. G. 698, 877; 2 Bann. & A. 60; La Baw v. Hawkins (1874), 1 Bann. & A. 428; 6 O. G. 724; Milligan & Higgins Glue Co. v. Upton (1874), 6 O. G. 837; 4 Clifford, 237; 1 Bann. & A. 497; Nicholson Pave |