against it. An extension in the face of opposition strengthens this presumption, and in its turn may be urged in favor of the patent in the courts.*

§ 840. Extension: Procedure in Cases over which the Patent Office had Original Jurisdiction.

In cases of extension over which the Patent Office had original jurisdiction proceedings were commenced by filing a written application not more than six months, nor less than ninety days, before the expiration of the patent.1 Upon receipt of the application the Commissioner caused notice to be given to persons interested adversely to the extension by publication in Washington and elsewhere, for at least sixty days before the hearing on the application,2 and also instituted an examination in the ordinary method into the patentability of the invention. At the time appointed in the published notice

That if the patent has been sustained by the courts, and no new evidence against it is offered on the hearing for an extension, it will be regarded as valid, see Ex parte Putnam (1873), 3 O. G. 240; Ex parte Blandy (1872), 2 O. G. 174; Ex parte Cox (1872), 2 O. G. 491; Ex parte Blake (1872), 1 0. G. 605.

That personal doubts of the Commnissioner as to validity yield to the judgments of the courts, see Ex parte Putnam (1873), 3 O. G. 240.

That a patent for a combination whose elements do not co-operate may be extended, if the courts have upheld the combination as a true and patentable one, see Ex parte Lewis (1873), 3 O. G. 92.

That no extension should be allowed when the original invention was not new, even though the courts, in the absence of certain evidence now at hand, have sustained it, see Ex parte Lawson (1873), 3 O. G. 150.

That an extension strengthens the presumption of novelty and utility, see Whitney v. Mowry (1867), 2 Bond, 45; 3 Fisher, 157.

§ 840. That the ninety days under Sec. 12, act March 1861, begin with the day on which the application for an extension is filed, see Johnson v. McCullough (1870), 4 Fisher, 170.

That an application for an extension being filed February 15, and the patent expiring the 15th of May, the appli cation was filed within ninety days before the expiration of the patent, see Johnson v. Onion (1877), 3 Hughes, 290.

That the jurisdiction of the Commissioner over an extension begins on the filing of the petition, and all subsequent steps are subject to his control, see Gear v. Grosvenor (1873), Holmes, 215; 6 Fisher, 314; 3 O. G. 380.

2 That the publication sixty days previous to the hearing may begin on the first day of the sixty, see Gear v. Grosvenor (1873), 3 O. G. 380; 6 Fisher, 314; Holmes, 215.

That a notice of an application to extend the original is sufficient notice of an application to extend the re-issue, see Crompton v. Belknap Mills (1869), 3 Fisher, 536.

the interested parties were heard with their evidence upon all points involved in the controversy, and if the Commissioner was satisfied that the patentee, without his fault, had failed to secure a reasonable remuneration for his labor and expense, and that justice and the public good required a prolongation of the monopoly, he entered a certificate upon the patent renewing it for seven years after the close of the original term.3 This certificate being recorded in the Office, gave the same effect to the patent as if it had at first been issued for the term of twenty-one years.*

§ 841. Extension: Procedure in Cases Referred to the Patent Office by Congress.

Applications for the extension of patents issued since March 2, 1861, must be made to Congress. Such applications may be directly granted or denied without further action, or may be granted subject to the decision of the Commissioner of Patents upon the merits of the application. In the latter cases the proceedings in the Patent Office, except as to the time and mode of their inception, closely resemble those arising under the former law. An application must be filed in the Office based upon the special act of Congress, a certified copy of which must accompany the application, and the applicant must at the same time furnish a statement under oath of the ascertained value of the invention, and of his receipts and expenditures on its account,

That a patent will be extended if there is no opposition, and the Commissioner is satisfied as to diligence and merit, see Ex parte Robbins (1873), 3 O. G. 292.

That an extension may be allowed though the Commissioner has doubts as to the patentability of the invention, see Ex parte Lockwood (1873), 3 O. G. 439.

That, although priority is in dispute, an extension may be allowed upon ex parte proofs with a disclaimer of the disputed Claims, see Ex parte Nishwitz (1872), 1 O. G. 141.

That a patent will not be extended where the same invention is covered by a previous patent to the same grantee, see Ex parte Latta (1873), 3 O. G. 349.

4 That the effect of an extension is to make the patent a patent for the old and new terms, see Gibson v. Harris (1846), 1 Blatch. 167.

That an extension vests an absolute and complete title in the patentee though the surrender and re-issue of the original was by another, see Potter v. Empire Sewing Machine Co. (1868), 3 Fisher, 474.

giving such facts and data in reference thereto as will enable the Commissioner to form an exact judgment concerning his real profits. Any ambiguity or concealment in this statement is suspicious, and if it is unavoidably defective the reasons for the defect must appear. Upon this application four questions arise: the original patentability of the invention; its value to the public; the sufficiency of the remuneration already received by the inventor; and the effect of an extension upon the public interest. On the first point, in uncontested cases, no evidence is necessary. On the second, the testimony of disinterested persons must, if possible, be presented, and with such definiteness as to enable the Commissioner to estimate the industrial importance of the device or process covered by the patent. On the third point, it must be shown by sufficient proof that the inventor has employed all reasonable means to make his monopoly productive, and that without his fault he has failed to obtain a fair recompense for the time, ingenuity, and expense bestowed on the invention, and on its introduction into use. The conclusions of the Commissioner on the fourth point are drawn from the facts disclosed by the preceding inquiries, and from his general knowledge of the condition of the art. The rules of evidence governing this investigation are those established by the

§ 841. That the applicant for an extension must file an account showing facts and not mere opinions, see Ex parte Lee (1872), 1 O. G. 435.

That on an application for an extension, the account of receipts and expenditures need not give every item, but must give data enough for a clear judgment as to remuneration, see Ex parte Wilson (1872), 1 O. G. 185.

That on an application for an extension, the real gains received from the patented invention should be stated, although they are derived only from a part interest in the invention, see Ex parte Miller (1872), 1 O. G. 431.

That an account of profits taken on an extension hearing must include all profits received under foreign patents

for the invention, see In re Newton's
Patent (1884), L. R. 9 App. Cas. 592;
In re Adair's Patent (1881), L. R. 6
App. Cas. 176.

That where an application for an extension withholds particulars as to remuneration it is suspicious, see Ex parte Wilson (1872), 1 O. G. 185.

That the expenses of introducing into use may properly be set off against receipts in estimating value and remuneration, see Ex parte Dick (1872), 2 O. G. 147.

2 That a patentee may be estopped by neglect from asserting his rights under the extension, see Goodyear v. Honsinger (1867), 2 Bissell, 1; 3 Fisher, 147.

Office for other cases in which exterior proof may be required.3 Any person may oppose an extension by serving notice of his opposition, and his reasons therefor, upon the applicant or his attorney, at least ten days before the day fixed for the closing of the evidence, and after such notice will be treated as an adverse party, and entitled to participate in all future proceedings, to offer testimony against the matters asserted by the applicant, and to be heard in argument. After the evidence has closed, the application is referred to the proper examiner for his determination of the patentability of the invention, and upon his report and the proof and arguments of the parties the Commissioner bases his decision, by which the extension is awarded or the application is dismissed.

§ 842. Extension: Decision of Patent Office Final.

In cases within the original jurisdiction of the Patent Office the decision of the Commissioner allowing an extension was final upon all matters necessarily involved in his judicial action.1 If lawful on its face the extension could not be collaterally attacked for fraud or other irregularity, though the patent as extended was still open to all defences which could have been set up against it during the original term.2

8 That in extension cases the usual rules of evidence apply, see Ex parte Lewis (1873), 3 O. G. 92.

§ 842. 1 That the decision of the Commissioner as to an extension is final, see New American File Co. v. Nicholson File Co. (1881), 20 O. G. 524; 8 Fed. Rep. 816; U. S. Rifle & Cartridge Co. v. Whitney Arms Co. (1877), 14 Blatch. 94; 2 Bann. & A. 493; 11 O. G. 373; Ex parte Sexton (1876), 9 O. G. 251; Gear v. Grosvenor (1873), Holmes, 215; 6 Fisher, 314; 3 O. G. 380; Tilghman v. Mitchell (1871), 4 Fisher, 615; 9 Blatch. 18; Whitney v. Mowry (1870), 4 Fisher, 207; Jordan v. Dobson (1870), 4 Fisher, 232; 2 Abbott, 398; 7 Phila. 533; American Wood Paper Co. v. Glens Falls Paper Co. (1870), 4 Fisher, 324; 8 Blatch. 513; Crompton v. Belknap

Mills (1869), 3 Fisher, 536; Goodyear
v. Providence Rubber Co. (1864), 2
Fisher, 499; 2 Clifford, 351; Clum v.
Brewer (1855), 2 Curtis, 506; Colt v,
Young (1852), 2 Blatch. 471.

2 That an extension is a judicial act of the Commissioner, and cannot be collaterally impeached, see Dorsey Harvester Rake Co. v. Marsh (1873), 6 Fisher, 387; American Wood Paper Co. v. Glens Falls Paper Co. (1870), 8 Blatch. 513; 4 Fisher, 324; Rubber Co. v. Goodyear (1869), 9 Wall. 788.

That if an extension is regular on its face it cannot be attacked by the defendant in an infringement suit for fraud or irregularity, see Tilghman v. Mitchell (1871), 9 Blatch. 18; 4 Fisher, 615.

That extended letters-patent are not impeachable for fraud in a collateral

§ 843. Extension: Effect on Rights of Assignees, etc.

The rights of assignees under an extension are protected but not defined by the express provisions of the statutes. An extension does not purport to vary the contract relations between the inventor and other parties. Like the original monopoly it is property which may be transferred or enjoyed in every manner consistent with its nature, and rights under it may be created and enforced to the same extent as during the original term. Conveyances of the extension made before it is allowed, licenses so granted as to continue while the monopoly endures, and implied licenses to use the patented article free from the dominion of the monopoly, take effect under the extension, and are governed by the terms of the express or implied contracts in which they originate.1 The inventor cannot make use of his extension to curtail any of these vested rights. An assignee of the original term, though having no interest in the extension, may nevertheless employ the patented devices which he has on hand at the expiration of the patent, until they are no longer capable of use. Grantees of territorial interests in the patent, and purchasers of the patented instruments at a lawful and unrestricted sale, enjoy a similar privilege. The owner of the extension is bound by the acts of the former owners of the patent in reference to these parties, and cannot prejudice their legal rights by any exercise of his prohibitory powers.2

suit, see Gear v. Grosvenor (1873), Holmes, 215; 6 Fisher, 314; 3 O. G. 380.

That the decision of the Commissioner allowing an extension has great weight, but not on the question of infringement, see Evarts v. Ford (1873), 5 O. G. 58.

§ 843. That the right to use the invention during an extension depends on the right to use during the original term, see Union Paper Bag Mach. Co. v. Nixon (1876), 9 O. G. 691; 1 Flippin, 491; 2 Bann. & A. 244.

That the act concerning extensions

avails assignees as well as patentees, according to the nature of their contracts, see Wilson v. Turner (1845), Taney, 278.

That an extension of the patent does not relieve a licensee from the duty of paying royalties, see Union Mfg. Co. v. Lounsbury (1869), 41 N. Y. 363; Union Mfg. Co. v. Lounsbury (1864), 42 Barb. 125.

2 That the owners under an extension are bound by the acts of the patentee under the original patent, see Goodyear v. Honsinger (1867), 2 Bissell, 1; 3 Fisher, 147.