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of invention has been given to the parties, as a reversal of such a decision by the Court would not determine who was the prior inventor and is, therefore, entitled to the patent. A basis for an award of priority must exist in case it is found by the court that all parties have a right to make the claims before the court will entertain the appeal or consider the question of the patentability of a claim to one party as a basis for an award of priority to another party. The clear cut distinction between cases in which the Court has entertained and refused to entertain appeals from a final award of priority by the Commissioner where the non-patentability of a claim to a party formed the basis for the Commissioner's decision, lies in the fact that where it is possible for the Court to determine and decide priority of invention from the record after they have decided that all the parties have a right to make the claim, the Court has jurisdiction, but if the record is in such condition that it is possible for the Court's decision on the question of non-patentability to one party to leave the question of priority so that it would be necessary to give the parties further opportunity to prove they made the invention of the issue at dates prior to their application dates before actual priority could be ascertained, then the Court has no jurisdiction. In other words, appeal lies when the question of the non-patentability of a claim to a party is material to the right of another party to a patent, but only when this question is ancillary to the question of priority and other facts or circumstances in the record may form the basis of the award of priority. This is practically equivalent to saying that there must be an award of priority by the Examiner of Interferences in every interference case before the Court has jurisdiction to entertain the appeal. It seems impossible now to persuade the Court to hear an interference appeal in which there has been no award of priority by the Examiner of Interferences. This is given as a quick and easy but infallible test by which to ascertain in all cases whether the Court will entertain the appeal or dismiss it. I believe that all the decisions can be reconciled to this simple statement. The Court may not look to see if the Examiner has awarded priority but, if he has not, the case has progressed that far on motion for dissolution which the Court will not hear even after the Commissioner attempts to make an award of priority on

this ground. In following the test above given one should also be careful that the question of the right of cne party to make the claim has been properly raised in the Patent Office if he desires the Court to consider this question as ancillary to the question of priority of invention (7;25;46;54 and 58).

The test given above obviously does not fail because of the decision Cosper v. Gold and Gold (168 O.G. 787), where the Court heard the appeal after the Commissioner adversely decided that Cosper had no right to make the claims and awarded priority to his opponents on this basis. It is submitted that the test holds because the Court said in referring to this case in Carlin v. Goldberg 1917 C.D., 130 "the interference had been tried and the case was in that condition where the issue of priority turned solely upon the right of Cosper to make the claims." According to the present practice in the Patent Office a case brought before the Court is never in such condition without an award of priority having been made by the Examiner of Interferences. It is immaterial whether the Examiner's award of priority was based upon the evidence or was a judgment upon the record. There must have been inquiry as to who was the first inventor before the case reaches the Court. The parties must have been given an opportunity to take testimony on the question of priority, and the parties must have taken this testimony or the time therefor must have expired before the Court will consider the appeal. All the decisions or dicta to the contrary have no weight in view of the many fairly consistent decisions of the Court on this point since 1906 (12;15:25;30 and 98).

Mandamus.

Notwithstanding the fact that statutory appeals are provided from certain of the Commissioner's decisions to the Court of Appeals of the District of Columbia, numerous attempts have been made to obtain reviews of the Commissioner's rulings by mandamus to the Supreme Court of the District of Columbia (1;6;13:21;41:47:49; 53; 67; 69; 73; 87; 96 and 97). It is well settled that the writ of mandamus cannot be used to take the place of an appeal or writ of error, nor be granted where there is another adequate remedy.

The Courts are vested with no power to interfere with or direct or supervise the practice of the Patent Office, or to control the Commissioner's discretion in the performance of his duties (68) or to revise the rules he establishes with the approval of the Secretary of the Interior for the conduct of proceedings in the Office. The Commissioner exercises a power that is essentially judicial, so Congress has power to provide for a review of his decisions by appeal to the Courts. If, however, the Commissioner should deny a hearing to a party, or refuse to perform a duty, or attempt to surpass his authority, the Courts may interfere by mandamus or injunction (69).

Illustrations of the application of this principle of law are as follows:

The Commissioner may dissolve an interference and direct the Examiner to reject the claims without giving a party the right to a writ of mandamus for the simple reason that the party has a remedy by appeal from the rejection of the claims, and if the claims are ultimately decided to be patentable the interference may be redeclared (21). He may, under his supervisory authority, refuse a patent to a successful party to an interference even after the Primary Examiner, Law Examiner, and Board have held the claims to be patentable, as the granting of a patent is not a mere ministerial duty which he can be compelled by mandamus to perform by following the conclusions of the lower tribunals. Since appeal from his decision can be taken to the Court the granting of a writ of mandamus would be controling the Commissioner in the performance of his administrative duties (13). His discretion in the determination of the existence of an interference is not subject to review by mandamus because the statue specifically confides this matter to his judgment whether right or wrong (27;96). His erroneous decision cannot be corrected by mandamus instead of appeal (97).

Although a decision granting a motion to dissolve an interference on the ground that one of the parties has no right to make the claims is not appealable to the Court, yet it has been held that when such a decision becomes final by failure to prosecute an appeal to the highest tribunal that will hear the appeal, mandamus may prop

erly be invoked to secure the enforcement of the judgment that the unsuccessful party has no right to make the claims in issue. Such a decision becomes res adjudicata when not appealed from (16;72) and mandamus may be invoked to secure a vacation of any subsequent ex parte or inter partes proceedings which the Commissioner may institute to readjudicate the same question (73). Rule 130.

An early rule prevailed in the Court under which they persistently refused to consider the question of the right of a party to make a claim when appeal was taken on the question of priority of invention until the Podlesak v. McInnerney decision in 1906. It was held in this case and has been consistently followed in many subsequent ones that this question goes to the very foundation of an interference and will be considered on appeal as ancillary to an award of priority (101).

Rule 130:

Where the patentability of a claim to an opponent is material to the right of a party to a patent, said party may urge the nonpatentability of the claim to his opponent as a basis for the decision upon priority of invention. A party shall not be entitled to raise this question, however, unless he has duly presented and prosecuted a motion under Rule 122 for dissolution upon this ground or shows good reason why such a motion was not presented and prosecuted. When the law examiner has denied such a motion for dissolution the question shall not be reinvestigated by the examiner of interferences except in view of evidence which was not before the law examiner, but it may be raised before the appellate tribunals on appeal from award of priority by the examiner of interferences. As a result of the Podlesak decision, this rule was promulgated providing for an award of priority where at the final hearing it appears that one party is not entitled to make the claims of the issue (57). It is only when the question of an opponent's right to make the claims hecomes material to the right of a party to a patent and the party by proper proceedings in the Patent Office has brought the question up that the Court will consider it (7;25;46;54; and 58). The decision by the Patent Office tribunals on this question does not and ought not to become final (86). Rule 130 does not warrant a party to urge unpatentability of the issue to either party at the

final hearing, as a holding that the counts are unpatentable to all the parties would not result in a decision of priority of invention in favor of either party. In cases contemplated by this rule a decision that the issue is not patentable to one party would necessarily result in an award of priority to the other party. A ground for rejecting one party's claims must not apply equally well to the other party's claims for then neither party would be entitled to a patent including the claims and the question of priority would be a moot one (81). The lack of the right of an opponent to make a claim is ground for bringing a motion to dissolve under Rule 122, and if a party fails to present and prosecute such a motion or show good reason why he did not do so, he will not be entitled to urge the question under Rule 130, but the tribunals of the Office may consider the question of their own motion (91), after which the Court doubtless has jurisdiction to consider the question as ancillary to the question of priority.

A party may not, under this Rule, assail the right of all parties, including himself, to make the claims, as this would be equivalent to a concession that he himself had no right to the claims, and, therefore, the right of the other party to make them would not be material to his right. In an interference including more than two parties, the party who relies upon his filing date must assail the right of every party senior to him to make the claims in order to come within the provisions of Rule 130 (22), for, if the claims are patentable to any prior applicant who is a party to the interference, then the nonpatentability of the claims to a different party is not material to his own right to a patent.

Interlocutory Matters and Rule 124.

Interlocutory orders and rulings on mere matters of procedure in the Patent Office will not be reviewed by the Court (3;12;15;30;53;98; and 99). A decision which does not eliminate a party from an interference but defers final judgment on the question of priority, leaving it possible for any party to prevail on the merits is purely interlocutory (73). The Commissioner may delegate to the Examiner the duty of determining whether an interference exists, and a decision of the Commissioner dissoly

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