In order to authorize the Commissioner of Patents to grant a reissue, two conditions precedent must exist (Sec. 4916, R. S.):

(a) Either that the original patent is inoperative or invalid by reason of a defective or insufficient specification, or

(b) That the patentee is claiming as his invention or discovery more than he had a right to claim as new.

But neither of these conditions is available unless the error arose from inadvertence, accident or mistake and without any fraudulent or deceptive intention. The findings of the Commissioner that a legal condition exists and is available are conclusive in so far as they depend upon the credibility and weight of the evidence; but, in so far as they depend upon the legal interpretation and effect of admittedly genuine documents or other undisputed evidence, they are reviewable in court. (General Electric Co. v. Richmond Ry. Co., 178 F. R., 87.)

The Patent Office rule as to reissue oaths, in force in 1879 to April 15, 1882, read as follows:

86. A reissue will not be granted until the existence of the conditions prescribed therefor by law shall have been duly shown. The affidavits of the applicant will be prima facie evidence as to inadvertence, accident, mistake, fraud, and deceptive intent, subject to contradiction or confirmation by the records of the office, by the affidavits of employes of the office having personal knowledge of the facts, or by such other affidavits as the commissioner shall, without disclosing the pendency of the application, admit as evidence in the case.

The rule was amended April 15, 1882, to read as follows:

86. Applicants will be required to file with their petitions for reissue:

1st. A statement setting forth particularly the defects or insufficiencies in the specification which render the patent inoperative or invalid, and in cases where more was claimed and allowed than the applicant was entitled to claim as new, such part or parts must be distinctly pointed out.

2d. In such statement the applicant must explain how such errors arose, in order that the question of inadvertence, accident, or mistake may be determined.

3d.

The statement must be accompanied with the oath of the applicant that said errors arose without any fraudulent or deceptive intention.

From the decision of the examiner holding that the statement or oath is insufficient, an appeal may be taken to the Commissioner in person.

This rule was in force until November 16, 1885, when the rule substantially as it exists today was adopted, having incorporated therein the definite requirement that the statements as a whole be under oath.

While Sec. 4916, R. S., does not specifically require that an applicant must state under oath the facts relied upon to show that the error in taking out a patent which is inoperative or invalid arose through inadvertence, accident or mistake, but it is only when such inadvertence, accident or mistake is established that the Commissioner has any authority to grant a reissue (General Electric. Co. v. Richmond Ry. Co., 178 F. R., 84). Rule 87, however, specifically requires that this statement of facts relied upon shall be under oath. This rule is clearly not in conflict with the statute and it has been repeatedly held that under such circumstances the rule has all the force of law (Steinmetz v. Allen, 22 App. D. C., 56; 104 O. G., 853; Allen v. Lowry, 26 App. D. C., 8; 116 O. G., 2253; Broadwell v. Long, 36 App. D. C., 418; 164 O. G., 252), and the rule has been held valid in In re Fullagar, 40 App. D. C., 510; 192 O. G., 1263, in so far as that question was before the court.

The oath of reissue applications is submitted to a Law Examiner under Order No. 2255, 227 O. G., 1, which reads as follows:

The oaths of reissue applications (Rules 46 and 87) and oaths under Rule 75 hereafter filed shall be submitted to a Law Examiner. His conclusion on the question of their sufficiency shall be binding on the Primary Examiner. THOMAS EWING, Commissioner.

May 18, 1916.

The ruling that the oath is insufficient is a ground of rejection from which appeal lies to the Examiners-inChief in the first instance (Ex parte Janowitz, 85 O. G., 152).

Even if the oath is held to be insufficient, action on the merits may be given so that when as issue is reached appeal may be taken on all grounds of rejection.

Diligence.

Prior to the decision in Miller v. Brass Co., 104 U. S., 350, 21 O. G., 201, that established the "two year" doctrine, the privilege of reissue was very much abused, and many efforts were made to remedy the evils; among others the suggestion was made that there should be no reissue of a patent after it had been in existence for more than two years.

In 1876 a prominent patent attorney, H. Howson, Sr., suggested the following rule:

Every applicant for a Reissue must file a paper setting forth in full and explicit terms wherein consists the error, inadvertence, or mistake contained in the original patent which he desires to correct by reissue. If language is introduced which does not appear in the original patent, he must state why he introduced it, and whether it is based on the model, drawing, or specification. If new functions, which do not appear to have been contemplated in the original patent, are given in the new specification, a full explanation will be demanded from the applicant, tending to show the accuracy of the new assertions, and when expanded claims are asked, he must state the ground on which they are based. (Howson on Reissued Patents, p. 47.)

Laches in equity disables the party who seeks to revive a right which he has allowed to lie unclaimed, from enforcing it to the detriment of those who have in consequence been led to act as though it were abandoned (Wollensak v. Reiher, 115 U. S., 96, 99: 31 O. G., 1301).

By analogy to the law of public use, a delay of more than two years in applying for a reissue with broadened claims is fatal unless excused by special circumstances (In re Starkey, 21 App. D. C., 519; 104 O. G., 2150, In re Otto 265 O. G., 308; In re Schneider 271 O. G., 362.)

The showing of diligence is not as important where the claims are not enlarged and there is no detriment to the public, but where the claims are enlarged, a definite showing of facts constituting due diligence is required in the oath in order to support a reissue (Miller v. Brass Co., 104 U. S., 305; Mahn v. Harwood, 112 U. S., 354).

Diligence is required in the discovery of the defects as well as in the presentation of the application after the discovery of the defects (In re Fullagar, 40 App. D. C., 510; 192 O. G., 1263; Felbel v. Aguilar, 121 O. G., 1012; Ives v. Sargent, 119 U. S., 652; 1887 C. D., 191).

Where the errors are apparent upon inspection of the patent, very unusual circumstances are necessary to excuse the delay of more than two years (ex parte Tilden, 182 O. G., 971, citing many authorities).

A holding of lack of diligence shown in the oath is a ground for rejection (ex parte Powers, 108 O. G., 1053).

Inadvertence, Accident or Mistake.

To authorize a reissue there must be clear proof that the error which renders the original patent inoperative or invalid arose by inadvertence, accident or mistake, and that the party asking for relief acquires no more than he was originally entitled to, and what is called for by the words "same invention" in the statute cannot be gathered from mere inference or suggestion with reference to what the patentee might or might not have conceived (Stafford Co. v. Coldwell-Gildard Co.. 202 F. R., 744; 194 O. G., 746).

A clear mistake is necessary to warrant broadened claims even when reissue is applied for within two years after the grant of the original patent (Coon v. Wilson, 113 U. S., 268, 277; 30 O. G., 889; 1885 C. D., 171). In Yale Lock Co. v. Berkshire National Bank, 135 U. S., 342, 51 O. G., 1291, the record disclosed that there was not a clear mistake, inadvertently committed in the wording of a claim, and the reissue was held invalid, although applied for only thirteen days after the granting of the patent.

The attorney's inadvertence is regarded as the applicant's inadvertence (In re Heroult, 127 O. G., 3217; 29 App. D. C., 42; In re Briede, 123 O. G., 322; 27 App. D. C., 298). But the applicant is bound by the attorney's error in judgment (In re Hatchman, 1884 C. D., 116; 26 O. G. 116).

In Crown Cork and Seal Co .v. Aluminum Stopper Co., 108 F. R., 845, 860, the court accepted the ruling of the Patent Office on the question of inadvertence, accident or mistake, there being no evidence in the record to indicate that the applicant's statements were untrue. Where, in order to obtain a patent applicant has narrowed his original claims upon the citation of references, he is estopped from insisting upon such construction of

the allowed claims as would cover what had been previously rejected and also from reissuing to broaden such narrow claims by claiming what had been previously rejected and canceled in the original application (Corbin Cabinet Lock Co. v. Eagle Mfg. Co., 150 U. S., 42; 1893 C. D., 612).

There is no inadvertence, accident or mistake in the deliberate cancellation of a claim in the original application (Ex parte Hatchman, 1884 C. D., 116; Dobson v. Lees, 137 U. S., 258; 1890 C. D., 569; Mahn v. Harwood, 112 U. S., 354; 1885 C. D., 144; Moneyweight Scale Co. v. Toledo Computing Scale Co., 187 F. R., 826; 170 O. G., 928).

A disclaimer deliberately made to avoid an office requirement is binding (Westinghouse v. Stanley, 115 F. R., 810).

When the original drawings and specification contained matter which manifestly had not been claimed, and applicant knew it at the time, there was no inadvertence, accident or mistake (Ex parte Mahnken, 40 O. G., 915; 1887 C. D., 1883; Ex parte Mahnken, 41 O. G., 1269; 1887 C. D., 134). Broadened claims, securing what was described but not claimed may be due to inadvertence, accident or mistake (Hill v. Commissioner, 1885 C. D., 464; 33 O. G., 757; 4 Mackay, 266; Asmus v. Alden, 27 F. R., 684; 36 O. G. 231; Miller v. Brass Co., 104 U. S., 353; 1882 C. D., 49).

The courts will not review the Commissioner's decision upon questions of inadvertence or mistake, unless the matter is manifest from the record (Topliff v. Topliff, 145 U. S., 156; 1892 C. D., 402).

Defective or Insufficient Specification.

Defective or insufficient specification means that the patent failed to secure to the patentee all of that which he has invented or claimed. Obvious error in the drawing is sufficient ground for reissue (Hobbs v. Beach, 180 U. S., 383; 1901 C. D., 311).

An error in the oath of citizenship is not a ground for reissue (Child v. Adams, 1 Fish. Pat. Cas., 189; 5 Fed. Cas., No. 2673).

It is important that the oath cover all matter for which