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claims covering the whole subject-matter thereof. The issuance of a reissue patent is not the granting of a patent, but the exercise of the privilege of correcting a patent already granted, for which the law provides a fee different from the fee required originally, and I find no authority for requiring the applicant to pay more.

"There are reasons why such a requirement by the Commissioner may work a hardship upon the patentee applying for a reissue which make it important that the right granted by the statute should be fully recognized; but these reasons do not aid in defining what the right is.

"In view of the above holding it will not be necessary to consider the ground for the requirement of division. "The decision in ex parte Lippincott, supra, is overruled."

Rule 91.

91. The application for a reissue must be accompanied by the original patent and an offer to surrender the same. or, if the original be lost, by an affidavit to that effect, and a certified copy of the patent. If a reissue be refused, the original patent will be returned to applicant upon his request.

The Office does not undertake the examination of a reissue application unless it is accompanied by the original patent which is to be reissued together with an offer to surrender it, except in cases where the original patent has been lost and for that reason cannot be produced. In such cases a certified copy may be filed, accompanied by an affidavit to the effect that the original patent has been lost. The actual surrender of the original patent, however, does not take effect until the reissue is granted and the new patent issues. Until that time, the original patent remains in as full force and effect as if applicant had retained it in his possession. The Office has no power to cancel the original patent, or to amend except by reissue, and if a reissue be refused, must return it to its owner, the reissue applicant, upon his request.

The offer to surrender the original patent is made in the petition for reissue.

The effect upon the original patent, of an application for reissue was passed upon by the Supreme Court in Allen v. Culp, 79 O. G., 1523, Mr. Justice Brown delivering the following opinion:

Upon the trial, the plaintiff having offered evidence in support of his case, the defendant put in evidence a certified copy of the application for a reissue of the Letters Patent in question, and also a model of the tension device made and sold by the defendant. The application for a reissue was made by Culp and Allen jointly, who prayed that they might be allowed to surrender the patent, and that the same might be

reissued to Allen for the same invention upon an amended specification. To the specification was appended the usual affidavit to the effect that the deponents believed that the patent surrendered was inoperative or invalid by reason of a defective and ineffective specification, in that it failed to properly describe the essential and important features of the invention, and that such errors arose from inadvertency, accident, and mistake, and without any fraudulent or deceptive intention. The record also contained a communication from the Examiner refusing to reissue upon the ground of unreasonable delay; and also because the new claims had been substantially anticipated by other patents.

Thereupon the court charged the jury, at the request of the plaintiff, that

Where the reissue of Letters Patent is applied for the surrender takes effect only upon the issue of the amended patent, and, if the issue is refused, the original patent is returned to owner,

and that

the action of the Patent Office in refusing to reissue the patent in suit did not affect its validity, and the contract between the plaintiff and defendant in reference thereto was not rendered invalid by such action.

In this connection the court also refused to charge the jury, at the request of the defendant, that

the joint act of the parties in surrendering the patent in question and applying for a reissue thereof on November 18, 1892, amounted to a cancellation of the patent, and, being followed by a refusal on the part of the Government to grant a reissue, operated to end and determine the contract sued upon, as to any of the patented machines made after such surrender.

The first statutory provision for the reissue of Letters Patent made its appearance in the act of July 3, 1832, repeated and expanded in the thirteenth section of the patent act of 1836, which provided generally that whenever any patent should be inoperative or invalid by reason of a defective description or specification, or by reason of the patentee claiming more than he had a right to, if the error arose from inadvertency, accident, or mistake, and without any fraudulent or deceptive intention, it should be lawful for the Commissioner, upon the surrender to him of such patent, to cause a new one to be issued for the same invention, for the residue of the period then unexpired for which the original patent was granted, in accordance with the patentee's corrected description and specification. This was but little more than putting in statutory form a power which this Court had already held to exist, prior to the act of 1832, in the Secretary of State, in the absence of a statute. (Grant v. Raymond, 6 Pet., 218). But in construing this statute it was uniformly held by this Court that the surrender of the patent for reissue was a legal cancellation and extinguishment of it, that no rights could afterward be asserted upon it, and that suits pending for an infringement of such patent fell with its surrender, because the foundation upon which they were begun no longer existed. (Moffitt v. Garr, 1 Black, 273; Ready v. Scott, 23 Wall., 352,

364; Peck v. Collins, C. D., 1881, 211; 19 O. G., 1137; 103 U. S., 660.)

To obviate the injustice to inventors occasioned by the peremptory requirement that the patent should be treated as extinguished from the moment it was surrendered for a reissue, it was provided in section 53 of the patent act of 1870, amending the thirteenth section of the act of 1836, that upon the surrender of a patent for that purpose a reissue should be granted

for the unexpired term of the original patent, the surrender of which shall take effect upon the reissue of the amended patent.

These words were obviously inserted for the purpose of preventing the surrender taking immediate effect, and to postpone its legal operation until the patent should be reissued. When a patent is thus surrendered, there can be no doubt that it continues to be a valid patent until it is reissued, when it becomes inoperative; but, if a reissue be refused, it is entirely clear that the surrender never takes effect, and the patent stands as if no application had ever been made for a reissue. Whether, if the reissue be void, the patentee may fall back on his original patent, has never yet been decided by this Court, although the question was raised in Eby v. King, (158 U. S., 366; 15 Sup. Ct., 972;) but, as the original patent in that case was also held to be void, it did not become necessary to express an opinion upon the question. But if the original application for a reissue be rejected, the original patent stands precisely as though a reissue had never been applied for, unless, at least, the reissue be refused upon some ground equally affecting the original patent. If it were otherwise, every patentee who applies for a reissue would do so at the peril, not only of having his application refused, but of losing what he already possessed. This was the very contingency the act of 1870 was designed to provide against.

It is true that in making his surrender the patentee declares that his patent is inoperative and invalid; but this is not necessarily so for all purposes, but for the purpose for which he desires to have it reissued. Such a patent might be inoperative and invalid as against certain persons who had pirated the underlying principle of the patent, and avoided infringing the exact language of the claims, and yet be perfectly valid as against others, who were making machines clearly covered by their language."

The return of the original patent upon applicant's request after a reissue has been refused terminates such reissue application.

Rule 92.

92. Matter shown and described in an unexpired patent which is an indivisible part of the invention claimed therein, but which was not claimed by reason of a defect or insufficiency in the specification, arising from inadvertence, accident, or mistake, and without fraud or deceptive intent, can not be subsequently claimed by the patentee in a separate patent, but only in a reissue of the original patent.

The question here involved is one of double patenting.

A plurality of patents cannot lawfully issue to the same inventor for the same indivisible invention, the grant of the first patent for it acting as a bar to the grant of any further patents, whether or not the applications were concurrently pending. Cases such as are included in this Rule are those comprised in the first class defined in ex parte Mullen & Mullen, 50 O. G., 837, as follows:

"1. Cases where the various claims differ among themselves only as they constitute different statements of one and the same indivisible invention-cases where, in other words, the lines of division exist as mental figments only and have no corresponding existence in the concrete subject of invention. In all such cases one application only is permissible, whether pending concurrently or not, becaue only one patent can be granted for a single invention and a second patent for the same invention under another guise would result inevitably in an illegal extension of the period of exclusive use. (Ex parte Ransom, C. D., 1887, 22; Sickels v. The Falls Co., 4 Blatch., 508; Odiorne v. The Amesbury Nail Factory, 1 Robb, 300; Jones et al. v. Sewall, 3 Cliff. 563; James v. Campbell, C. D., 1882, 67; 104 U. S., 356; Swift v. Jenks et al., C. D., 1884, 208; 19 Fed. Rep., 641.)

In such cases there is but one invention, single and indivisible into parts. The grant of one patent necessarily acts as a bar to the grant of any later patent to the same inventor for the same identical invention. If there be any defect in the patent granted, whereby the claims fail to give to the patentee all the protection for this single indivisible invention, and such defect be due to defective or insufficient specification (the claims are a part of the specification and defects in the claims themselves therefore come within this definition), and such defect has arisen from inadvertence, accident, or mistake, and without fraud, or deceptive intent, the proper way to remedy such defect is by reissue of the original patent. There is no other way in which such subject matter may be claimed.

COMMUNICATIONS

THE STATEMENT OF INVENTION TO BE PREPARED BY THE EXAMINER.

Dear Mr. Thurber:

Detroit, Mich., Feb. 7, 1920.

After perusing your article in the last Journal, which article was read with much interest, and which Journal seems to me to show increasing excellence, I was straight

way moved to indite the following, which is "respectfully submitted".

The suggestion that the patent as printed should include somewhere "a concise statement of the nature of the invention and the mode of operation" will no doubt meet with approval from those who have had experience in abstracting information from patent literature. However, some objections to the specific plan proposed might be cited.

Since a patent specification is a highly technical legal document, drafted with the primary view of being ultimately adjudicated in court proceedings, the attorney is extremely cautious about making any specific statement of invention or using any language which might be construed by skilful pleaders or mechanically inexpert judges as in any way a limitation upon the still more technical and abstruse terminology of the claims. It is extremely difficult too, when one forsakes the "specific embodiment illustrated in the accompanying drawings", to formulate a brief yet clear statement of the invention and its operation, divested of the legal terminology of the claims, capable of being readily understood without reference to the detailed description, and yet commensurate with the real invention. Furthermore, it is frequently not clear until the prosecution has been substantially completed where the invention really resides, and it may be impossible to comply fully with such a requirement at the time when the application is filed. These facts may explain in part why the "statement of invention" once in general use has been reduced usually to a mere "substantially as hereinafter described" clause.

I would suggest an amendment to the plan to the effect that the examiners themselves, at the time when the case is passed to issue, write the desired paragraph, directed merely to searchers. This practice would have the advantage of placing the drafting of the expository paragraph at the time when the invention supposed to be present in the case has been determined, and while the subject-matter is fresh in the mind of the examiner. Also it would impute no damaging admission by the applicant in regard to the character of the invention or limitation upon the scope of the claims. Lastly, it would b drafted by one presumably experienced with such work

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