the same meaning it has elsewhere, and requires only an application for the issue of the patent already adjudged.3

§ 8. APPEAL IN CASE OF REJECTION

343

342

The statute provides "Whenever, on examination, any claim for a patent is rejected, the Commissioner shall notify the applicant thereof, giving him briefly the reasons for such rejection, together with such information and references as may be useful in judging of the propriety of renewing his application or of altering his specification." The applicant may then, if he chooses, alter his claims so as to eliminate therefrom matter which has in the opinion of the Commissioner been anticipated and offer the altered claims for approval. If they are again rejected as too broad, he may again correct them, and this rejection, correction and resubmission may continue until limited by the subject matter itself. When, at any stage in this procedure, the applicant does not believe that the earlier patents, referred to by the Commissioner as anticipations, necessitate a change in his claims, the statute provides, "And if, after receiving such notice, the applicant persists in his claim for a patent, with or without altering his specifications, the Commissioner shall order a re-examination of the case."

If upon this re-examination, the application is again rejected, the applicant may then, and then only, appeal. Although the statute reads as though these examinations and rejections were made by the Commissioner, they are in fact the work of "preliminary examiners," and the appeal is made from their decisions to a group of examiners, also subordinate to the Commissioner, called the board of examiners-inchief. If the applicant is dissatisfied with the decision of this board he may, on payment of the fee prescribed,345 appeal to the Commissioner in person.346 If he is still dissatisfied,

344

342 Ex parte Livingston, 20 O. G. 1747.

343 R. S. 4903.

344 R. S. 4909. The course of procedure is described by the court in Butterworth v. Hoe, 112 U. S. 50.

345 $20.00, Rule 140.

346 R. S. 4910.

347

after the decision of the Commissioner he may carry his appeal to the Court of Appeals of the District of Columbia.* A favorable decision by this court affects only the right to have a patent issued and does not in any way determine the validity of the patent after it has been issued, 348

The rules of procedure of appeals, the time for filing papers, notices to be given, forms, etc. can be found in the Rules of the Patent Office and in books upon the detail work of soliciting patents, and are too technical to be discussed here.349

If the decision of the Court of Appeals is adverse to the claimant, or if he does not choose to appeal to that court at all, he has still a further proceeding to compel issue of a patent to him.350 "Whenever a patent on application is refused, either by the Commissioner of Patents or by the Supreme Court of the District of Columbia upon appeal from the Commissioner, the applicant may have remedy by bill in equity; and the court having cognizance thereof, on notice to adverse parties and other due proceedings had, may adjudge that such applicant is entitled, according to law, to receive a patent for his invention, as specified in his claim, or for any part thereof, as the

347 Prior to the act of February 9, 1893 creating this court, the appeal was to the Supreme Court of the District of Columbia, R. S. § 4911. It was changed by $9 of the act. By the act of March 3, 1911 (Judicial Code $250) the decision of the Court of Appeals is declared to be final except in certain cases which do not include patent matters, subject to certiorari by the Supreme Court of the United States or certificate to it. If the examiner or the Commissioner should refuse to act at all, a writ of mandamus would undoubtedly be proper. Steinmetz v. Allen, 192 U. S. 543.

348 R. S. S 4914, Rousseau v. Brown, 21 App. D. C. 73.

349 It has been held that there is no appeal from the Commissioner to the Secretary of the Interior on his finding as to patentability. Butterworth v. Hoe, 112 U. S. 50. The multiplicity of appeals and difficulty of acquiring a patent is severely criticized by U. R. Lane, in Dilatory Patent Procedure, 20 Green Bag 503.

350 R. S. § 4915. By § 24 of the Judicial Code, the action is within the primary jurisdiction of the United States District Courts. In Butterworth v. Hill, 114 U. S. 128, it was held, without deciding where the action should be brought, that it could not be brought in any other district than the one of which the Commissioner was an inhabitant.

facts in the case may appear. And such adjudication, if it be in favor of the right of the applicant, shall authorize the Commissioner to issue such patent on the applicant filing in the Patent Office a copy of the adjudication, and otherwise complying with the requirements of law. In all cases, where there is no opposing party, a copy of the bill shall be served on the Commissioner; and all the expenses of the proceeding shall be paid by the applicant, whether the final decision is in his favor or not. This right has been held to be available only when the application has been rejected on the ground that the alleged invention is not, on its merits, entitled to a patent.3

350a

This proceeding must be brought within the one year limited for the prosecution of applications after adverse action,351 unless the delay is satisfactorily excused,352 and to secure a decision in its favor the alleged invention must not only be prior in time to the one specifically set up in anticipation by the Commissioner, but must also be patentable on its own merits.358

$ 9. INTERFERENCES

Whenever an application is filed, setting out an alleged invention which the Commissioner feels is anticipated by an unexpired patent or earlier application for a patent, and there is a contention that the device for which application was last made was in fact invented before the one already patented or for which patent was first asked, the Commissioner is required by the Statute to give notice to the parties and to try the question of priority of invention.354 The statute reads, "Whenever an application is made for a patent which, in the opinion of the Commissioner, would interfere with any pending application, or with any unexpired patent, he shall give notice thereof to the applicants, or applicant and patentee, as the case may be, and shall direct the primary examiner to proceed to determine the question of priority of invention. And the Com

350a Butterworth v. Hoe, 112 U. S. 50.

351 R. S. 4894.

352 Gandy v. Marble, 122 U. S. 432.

353 Hill v. Wooster, 132 U. S. 693.

354 R. S. § 4904.

missioner may issue a patent to the party who is adjudged the prior inventor, unless the adverse party appeals from the decision of the primary examiner, or of the board of examinersin-chief, as the case may be, within such time, not less than twenty days, as the Commissioner shall prescribe." Literally taken, this covers all cases where the later application is, in the opinion of the Commissions, anticipated by an earlier one, for in all such cases one would interfere with the other. But it is obvious that a question of priority does not arise, so as to be triable, in all such cases. Even if the opinion of anticipation is not acquiesced in, the controversy may be solely over the essential identity of the two devices, and priority of one or the other be admitted. In such circumstance the statute would not require notice and trial. When a trial as to priority is had under the statute, the procedure, taking of testimony, etc., is governed by the statutes and the rules of the office. Appeal from the decision of the Commissioner is the same as in other cases of unfavorable decision upon an application.355

SIO. PROTEST AGAINST ISSUE

One who is not a party in any way to a patent, may, on learning that a patent is pending in the patent office, file with the Commissioner a protest against its allowance, on the ground of public use or sale more than two years prior to the filing of the application. 359

355 The question of what constitutes priority of invention is discussed supra.

359 In re National Phonograph Co., 89 O. G. 1669; U. S. ex rel. v. Allen, 101 O. G. 1133; Ex parte Kephart, 103 O. G. 1914; Ex Parte Hartley, 136 O. G. 1767; Kneisely v. Kaisling, 174 O. G. 830; In re Lewthwaite, 176 O. G. 525.

CHAPTER VII

ACTIONS TO AVOID PATENTS

After a patent has once been issued by the patent office, in proper form, it is too late for that office to revoke it or otherwise actively to affect its validity. "It has passed beyond the control and jurisdiction of that office, and is not subject to be revoked or concelled by the President or any other officer of the Government.360 It has become the property of the patentee, and as such is entitled to the same legal protection as other property.361 The only authority competent to set a patent aside, or to annul it, or to correct it for any reason whatever, is vested in the courts of the United States, and not in the department which issued the patent."362

The government

GOVERNMENT ACTION TO INVALIDATE. may bring an action in the courts to have a patent that has been issued annulled and set aside, and this may be done "not only when it has a proprietary and pecuniary interest. in the result, but also when it is necessary in order to enable it to discharge its obligation to the public, and sometimes when the purpose and effect are simply to enforce the rights of an individual.”363 Such suits must be based on the ground that the patent has been improperly issued on account of fraud, accident, mistake or the like, and the fraud or other matter on which invalidity is predicated must be clearly proved. 364

360 McCormick Machine Co. v. Aultman, 169 U. S. 606, citing U. S. v. Schurz, 102 U. S. 378; U. S. v. Am. Bell Telephone Co., 128 U. S. 315, 363.

361 Citing Seymour v. Osborne, 11 Wall 516; Cammeyer v. Newton, 94 U. S. 225; U. S. v. Palmer, 128 U. S. 262, 271.

362 Citing Moore v. Robbins, 96 U. S. 530; U. S. v. Am. Bell Telephone Co., 128 U. S. 315, 364; Mich. Land & Lumber Co. v. Rust, 168 U. S. 589, 593.

363 U. S. v. Am. Bell Telephone Co., 167 U. S. 224, 264; Id. 128 U. S. 315. 364 U. S. v. Am. Bell Telephone Co., 167 U. S. 224; in this case delay of