If he exceeds the

limits of his The courts

not be collaterally attacked.
jurisdiction, as fixed by law, his acts are void.

ment Co. v. Elizabeth (1873), 3 O. G.
522;
6 Fisher, 424; Parham v. Ameri-
can Buttonhole, Overseaming, & Sew-
ing Machine Co. (1871), 4 Fisher, 468;
Chicago Fruit House Co. v. Busch
(1871), 2 Bissell, 472; 4 Fisher, 395;
Blake v. Stafford (1868), 6 Blatch. 195;
3 Fisher, 294; Middletown Tool Co. v.
Judd (1867), 3 Fisher, 141; Potter v.
Holland (1858), 4 Blatch. 238; 1 Fish-
er, 382.

That a re-issue cannot be attacked by an infringer unless fraudulent or contrary to law or issued to the wrong party, see Dental Vulcanite Co. v. Wetherbee (1866), 3 Fisher, 87; 2 Clifford, 555.

The abuses which arose under this doctrine were its inevitable consequence. As any re-issue which the Patent Office could be prevailed upon to grant, whether it were for the original invention or not, and whether the defects which it corrected were intentional or otherwise, became impregnable in the courts unless the repugnancy between it and the original was manifest on the inspection of the two patents, patentees whose original patents covered all they had invented or at that time thought of claiming as their inventions, naturally took advan tage of the general and indefinite language of their original specifications, and based upon them re-issue claims far beyond the limits of their own inventive acts, and under this doctrine vindicated their unwarranted assumptions even in the highest tribunal of the nation. In the effort to prevent or thwart these abuses the courts had recourse to various theories, in order, if possible, to remedy the evil without placing a further limitation on the pow. ers of the Commissioner. By holding that the decision of the Patent Office on the origin of the amended defect, as

well as on the identity of the inven tions, was reviewable, they would at once have removed all difficulty; since by permitting an inquiry into the character of the actual invention, and the intentional or unintentional omission or misstatement in the origi nal specification, they would have lim ited every re-issued patent to the exact inventions which the patentee originally intended to secure. Reverence for the settled course of decisions forbade this heroic remedy and led to the introduction of other doctrines, intended to protect intervening public and private rights, which have in their turn created new difficulties and required perpetual explanation and modification in the courts. The current of legal and judicial opinion, however, seems to be moving steadily toward the only true solution of this question, as set forth in the remainder of this paragraph and in the cases cited in its notes.

2 That the Commissioner's action in granting a re-issue is not open to review in cases where he has jurisdiction, see Ball v. Langles (1880), 102 U. S. 128; 18 O. G. 1405; Wells v. Gill (1872), 2 O. G. 590; 6 Fisher, 89.

8 In Odell v. Stout (1884), 22 Fed. Rep. 159, Sage, J. : (161) "The action of the Commissioner of Patents is not res adjudicata. Cook v. Ernst, 2 O. G. 89. He is not an officer in whom, under the constitution, judicial power can be vested. Grant v. Raymond, 6 Pet. 242. If he were, the proceedings for procur ing original letters and re-issues are er parte and would not estop defendants, charged as infringers, upon questions affecting the validity of the patent. But the statutes, prescribing his pow. ers and duties, vest in the Commissioner of Patents a discretion, which in some matters is final, and in others subject

have power to inquire whether a given act was within his jurisdiction or exceeded it, and according to the result of this inquiry they may treat his act as valid or invalid. In refer

ence to re-issues the statutes confer on the Commissioner the power to amend a defective patent by re-issuing it in a corrected form. At the same time they prohibit the exercise of this power in such a manner as to introduce into the re-issue any new invention, or to cure any defect which was originally intentional, or fraudulent." In accepting a surrender and

granting a re-issue, the Commissioner, who has entire control over the language of a patent, thus acts within his jurisdiction, provided that the defects in the original patent arose without fraud, through inadvertence, accident, or mistake, and that no new matter is embraced in the re-issue. The courts cannot so far review this action as to declare that the original patent was not defective, that the surrender and re-issue were on that account of no effect, and that the original patent is consequently still in force. Nor can they hold that the original operative and valid patent was extinguished by the surrender, but that being originally valid and operative it could not be the subject of re-issue, and, therefore, that no patent in favor of the patentee can now exist. Endless confusion would arise if the jurisdiction of the Commissioner upon these points were not final. But on the other hand, where the Commissioner, in

terested can bring himself within these conditions and limitations, the Commissioner is authorized to issue a new patent for the same invention. When the original shows upon its face that the grounds and reasons for the re-issue do not exist, or where a comparison of the letters-patent disclose different inventions, the re-issue is void, as an act unauthorized by the law." 19 O. G. 425 (425).

See also Giant Powder Co. v. California Vigorit Powder Co. (1880), 4 Fed. Rep. 720; 6 Sawyer, 508; 18 O. G. 1339.

That although other courts declare that the decision of the Commissioner in allowing a re-issue is final, the Supreme Court of the District of Columbia, on appeal from the decision of the Commissioner in refusing a re-issue do not hold such decision conclusive, but require evidence of original inadvertence, accident, or mistake, see In re Conklin (1874), 1 MacArthur, 375; 5 O. G. 235.

The recent disposition to treat the action of the Commissioner in awarding a re-issue as reviewable has, in one case,

carried the court so far that, in appearance at least, it has decided that the inoperativeness or invalidity of the original patent may be re-examined, and if the opinion of the court differs from that of the Commissioner on that question, the re-issue may be declared void. Thus in Giant Powder Co. v. California Vigorit Powder Co. (1880), 4 Fed. Rep. 720, Field, J. : (723) “ As thus seen, a re-issue can only be had when the original patent is inoperative or invalid from one of two causes, — either by reason of a defective or insufficient specification, or by reason of the patentee claiming as his own invention or discovery more than he had a right to claim as new ; and even then the patentee can only obtain a re-issue where the error has arisen from inadvertence, accident, or mistake, and without any fraudulent or deceptive intention. As the power to accept a surrender and issue new letters is vested exclusively in the Commissioner of Patents, his decision in the matter is not open to collateral attack, in a suit for the infringement of reissued letters. His action, like that of all officers especially designated to per

accepting the surrender and granting the re-issue, has included in the re-issued patent any new matter, or any matter

form a particular duty of a judicial and if such jurisdiction be wanting, character for the government, is pre- the judgment is ineffectual for any pursumed to be correct until impeached pose. So here, upon all matters outby regular proceedings to annul or side of the patents which the Commismodify it. He must judge, in the first sioner was to hear, and upon the weight instance, of the sufficiency of the origi- of which he was to determine, his judgnal specification, whether the same is ment is conclusive in the present suit ; defective in any particular; whether but if the patents disclose a case in such defect was the result of an unin- which he had no jurisdiction, or in tentional error, and if so, to what which he exceeded it, his determination extent a new or additional specification carries with it no efficacy. This is genshould be allowed to describe correctly eral and universal law, although we find the invention claimed; and it is to be expressions in opinions that the only assumed in every case that he has done question left over for the consideration his duty. The decisions of the Supreme of the court, in a suit for infringement Court to this effect are numerous, and of re-issued letters, is whether the new the doctrine is among the settled rules and the old patent are for the same of Patent Law. But it does not pre- invention, the expressions would be clude the examination of the original more accurate if they were, - that seland re-issued patents, to see whether or dom could any other question be raised, not they disclose on their face a case in for seldom will it appear without the which the Commissioner had authority consideration of extrinsic evidence to act, or whether he has exceeded his whether or not the original patent was authority in issuing letters for an in- invalid or inoperative from a defect of vention different from that described specifications. Suppose, for illustrain the original patent. If they disclose tion, that the specifications in two pata case in which the Commissioner had ents, the original and the re-issued, no jurisdiction to act, or a case in which were identical in their language, — or, by his determination he has exceeded differing in phraseology, were identical his jurisdiction, the re-issued letters in meaning, would it be pretended must fall. His determination can have that, though their identity would be no greater conclusiveness than that of thus manifest on their face from a comthe judgment of a regular judicial parison of the two, and that the Comtribunal; and we all know that al- missioner in granting the re-issue had though such judgment cannot be col- accordingly acted in a case not warlaterally attacked by showing that the ranted by the statute, it must be asevidence upon which the court acted sumed that the re-issue was properly was insufficient, that improper testi- granted, and that the action of the mony was admitted, that the court Commissioner could not therefore be erred in its rulings upon matters of questioned? The decisions support no law, or that the verdict of the jury was such conclusion. The Commissioner is against the weight of evidence, yet the an officer of limited authority; and record of the judgment can in all cases whenever it is apparent upon inspection be examined to see whether the court of the patents that he has acted withhas jurisdiction of the subject-matter out authority, or has exceeded it, his and of the person of the defendant; judgment must necessarily be regarded