Changes in these regulations can be made at any time by the same authority which originally enacted them; and after such a change the new rule is to be obeyed even in pending cases, unless injustice will thereby be done to the contestants. In the absence both of a statute and a rule of the department, the Patent Office is governed by the principles which the courts apply to cases of a similar character.1 § 423. Grant of Letters-Patent Illegal unless Statutory Prerequisites Fulfilled. According to the acts of Congress and the rules of the Patent Office, certain preliminary steps on the part of the inventor are made essential to the granting of a patent. The bestowal of the patent privilege depends entirely upon the provisions of the statutes, and the conditions named therein must be fulfilled or the letters-patent will be null and void.1 With these prerequisites the Patent Office has no power to dispense, though of their existence and sufficiency the Commissioner is in many cases the final judge; and that they did exist and were sufficient the issue of the letters-patent is always prima facie evidence.2 That there is no excuse for an officer who adheres to a practice after it has been overruled on appeal, see Ex parte Kitson (1881), 20 O. G. 1750. That where new rules do not injure parties in pending cases they will be followed, see Fowler v. Benton (1880), 17 O. G. 266. That the decisions of courts operate on all cases alike from the time they are rendered, while the rules of practice apply only to cases filed after their adoption, if they would prejudice the parties, see Ex parte Pfaudler (1882), 23 0. G. 269. 4 That where the same questions arise in the Patent Office as in the courts, they are governed by the same rules, see Dana v. Greenleaf (1875), 9 O. G. 198. That the same rules as to the evidence establishing the fact of invention are followed in the Patent Office and the courts, see Chambers v. Duncan (1876), 10 O. G. 787. § 423. 1 That the right to letterspatent rests on the statutes, and the conditions authorizing their issue must be strictly fulfilled, see Ex parte Benton (1882), 23 O. G. 341; Moffitt v. Gaar (1860), 1 Bond, 315; 1 Fisher, 610; Latta v. Shawk (1859), 1 Bond, 259; 1 Fisher, 465. 2 That the Patent Office cannot dispense with the legal prerequisites to a patent, see Eagleton Mfg. Co. v. West, Bradley, & Cary Mfg. Co. (1883), 111 U. S. 490. That the patent is prima facie evidence that all prerequisites existed, see Dorsey Harvester Rake Co. v. Marsh (1873), 6 Fisher, 387. That as to some prerequisites the decision of the Patent Office is final, § 424. Authority of the Commissioner, Acting Commissioner, and Examiners. The principal officers of the government concerned in the granting of letters-patent are the Commissioner of Patents, the Acting Commissioner, and the various grades of examiners. As the Patent Office is a branch of the Department of the Interior, its general operations are under the supervision of the Secretary of that department, and he may require the Commissioner to perform the functions imposed upon him by the law.1 The Commissioner is, however, practically at the head of the Patent Office. His powers are partly judicial, partly ministerial. As a judicial officer, he sits as a court of appeal in certain classes of contested cases.2 see Hoe v. Cottrell (1880), 1 Fed. Rep. performance unless they are merely ministerial, see Houston v. Barker 597. See also §§ 451, 967, 1016, 1032, and (1888), 44 O. G. 697. notes, post. § 424. 1 That the Commissioner acts under the supervision of the Secretary of the Interior, and may be required by him to perform his official duties, see Dec. Sec. Int. (1877), 12 O. G. 475. That the duties of the Commissioner are of two classes: (1) those imposed on him by law; and (2) those imposed by rule of the department, see Houston v. Barker (1888), 44 O. G. 697. That the Commissioner is subject to the control of the Secretary of the Interior only where he is not controlled by the statutes, see U. S. v. Butterworth (1884), 3 Mackay, 229; 27 O. G. 519. That no appeal lies from the judicial acts of the Commissioner to the Secretary of the Interior, see Houston v. Barker (1888), 440. G. 697; Butterworth v. Hoe (1884), 112 U. S. 50; 29 O. G. 615; U. S. v. Butterworth (1884), 3 Mackay, 229; 27 O. G. 519. That the Secretary has no appellate jurisdiction over the Commissioner as to the quasi-judicial duties imposed on him by law, and though he has authority to direct him to perform his duties, he cannot control the mode of their That the appellate jurisdiction of the Secretary is limited to cases arising under the rules prescribed by him for the government of his department, see Houston v. Barker (1888), 44 O. G. 697. That where the Commissioner acquiesces in the decision of the Secretary he cannot treat it as a nullity when the Supreme Court afterwards decides that the Secretary had no power to act, see Drawbaugh v. Blake (1885), 30 O. G. 259. That the Secretary will not interfere where the Commissioner has made every endeavor to be correct, unless there has been fraud or palpable error, see Dec. Sec. Int. (1883), 23 O. G. 629. 2 That the Commissioner acts judicially in granting or refusing a patent, but is nevertheless bound by established rules and principles, see Butterworth v. Hoe (1884), 112 U. S. 50; 29 O. G. 615. That the judicial powers of the Commissioner are chiefly as a court of ap peal, see Stone v. Greaves (1880), 17 O. G. 397. That the Commissioner is not to follow the decisions of lower tribunals As a ministerial officer, he has jurisdiction over the whole matter of the examination of applications and the grant and issue of patents, but in the discharge of these ministerial duties he is subject to the statutes and the rules of the Office; and his powers cannot be extended beyond these, either by his own authority or by the construction of the courts. The Acting Commissioner is, for all legal purposes, the Commissioner himself; his jurisdiction cannot be collaterally attacked, and patents certified and allowed by him are of the same validity as those issued by the Commissioner in person.* The examiners, with the exception of the Examiners-in-Chief, are appointed by the Commissioner, and are charged with various duties, especially those of correcting errors in the descriptions of alleged inventions contained in applications for letters-patent, of examining the novelty and utility of such inventions, and of hearing and deciding upon the claims of rival inventors. The functions of the other officers of this department are mainly clerical, and require no particular enumeration.5 if he thinks them erroneous, see Sellers v. Walter (1886), 37 O. G. 1001. That the Patent Office in granting patents before 1836 acted ministerially rather than judicially see Opinion Atty. Gen. (1831), 2 Op. At. Gen. 454. That the ministerial jurisdiction of the Commissioner extends to the whole matter of examining applications and granting patents, see Stone v. Greaves (1880), 17 O. G. 397. That the ministerial powers of the Commissioner cannot be extended by the courts, see Child v. Adams (1854), 1 Fisher, 189; 3 Wall. Jr. 20. That the Acting Commissioner is, for all legal purposes, the Commissioner, see Dorsey Harvester Rake Co. v. Marsh (1873), 6 Fisher, 387. That the clerk is Acting Commissioner when the Commissioner is sick or absent, see Woodworth v. Hall (1846), 1 W. & M. 389; 2 Robb, 517. That the jurisdiction of the Acting Commissioner cannot be collaterally attacked, and that his certificate is good between the parties, see Woodworth v. Hall (1846), 1 W. & M. 248 ; 2 Robb, 495. 6 That the duties of examiners are fixed by the Commissioner, see Hull v. Com. (1875), 7 O. G. 559; 2 MacArthur, 90. See also § 51 and notes, ante. For a discussion of the powers of the Board of Examiners, see Ex parte Hull (1875), 9 O. G. 1. That an examiner cannot pass on any matter expressly decided by a superior tribunal, see Ex parte Reynolds (1883), 24 O. G. 993. That the jurisdiction of an examiner does not change with the person of the incumbent, but remains unaffected until the case passes to a different tribunal or is ended, see Ex parte Fredericks (1887), 40 O. G. 691. That the proceedings in the Patent Office are always presumed to be regu lar, see Eagleton Mfg. Co. v. West, § 425. Patent Solicitors and Attorneys. The business between inventors and the Patent Office is usually transacted through attorneys. An inventor has the right to prepare his own application, and to appear and prosecute his claims in person; but in most cases by doing this he necessarily encounters great difficulties, arising partly from his ignorance of the requirements of the law, and partly from his inability to comply with them if they were known. A due regard for their own interests has led inventors to intrust such affairs to men trained for that purpose, and the practice has been encouraged by the Patent Office as tending to facilitate its own labors, as well as to render more secure the rights of patentees. All such attorneys act under the supervision of the Commissioner, and are subject to a withdrawal of their privileges for misconduct toward the Office or their clients. Their obligations to their employers and their authority and methods of transacting business are governed partly by the regulations of the Office, and partly by the ordinary rules of law.1 § 426. Applications: Caveats: Interferences. The object of an inventor in endeavoring to procure a patent is twofold: (1) To secure for himself the grant of an exclusive privilege; (2) To prevent a similar grant to any rival applicant. To accomplish the first object he must file in the Patent Office an application in which he describes and claims a patentable invention resulting from his own creative act, and must support his application by an oath that he believes himself the first and true inventor of the art or instrument therein described. If the allegations of this application are, upon the customary examination in the Patent Office, found correct, his petition for a patent is formally allowed and in due course of proceedings the letters-patent will be issued, creating in him the desired monopoly.1 The latter object, though a secondary one, is still of great import Bradley, & Cary Mfg. Co. (1880), 17 post. § 425. 1 See §§ 431-437 and notes, § 426. See §§ 449-585 and notes, post. ance. As every patent is prima facie valid, it clothes the patentee with a presumptive right to the exclusive use of the invention, and although issued to another than the real inventor, and therefore liable to be avoided by the courts, while it exists it constitutes a cloud upon the title of the true inventor, rendering his own letters-patent of doubtful validity even where it forms no obstacle to his procuring them. Methods have consequently been provided for the attainment of this as well as the first object. An inventor who is engaged in developing his conceptions or reducing them to practice, and is not yet prepared to make a formal application for a patent, may protect himself against the issue of a patent to his rival by filing in the Patent Office a notice called a Caveat, and maintaining it on file until his invention is completed and his own application is prepared.2 Where his rival first appears after his own application has been presented to the Office, he can secure the adjustment of their conflicting claims, and, if he be the true and first inventor, the issue of the patent to himself and its refusal to his rival, by a proceeding known as an Interference. These three proceedings constitute the principal business of the Office in relation to the grant of patents. § 427. Patent Office Practice and Procedure. In the conduct of these proceedings the Patent Office is guided not only by the acts of Congress and the written rules of the Office, but by its own established practice. In this tribunal, as in every other, statutes and rules receive a practical interpretation by their application to particular states of fact, and methods of procedure are extended or defined by usages subordinate to, but still beyond, the provisions of the written law. With the facility for reducing all such usages to formal rules which is afforded by the powers of the Commissioner, there is, however, less room for these judicial and traditionary regulations in the Patent Office than in most other bodies where conflicting claims are decided. See §§ 586-616 and notes, post. 2 See §§ 438-448 and notes, post. |