the error in the application which had been made by the lower courts of its earlier decisions and laid down rules of evidence and procedure under which the lower courts have since satisfactorily and justly adjudicated the rights of litigants in accord with the plain intent of the law.

In accordance with the law and procedure as defined by the Supreme Court in the Wagner and Dowagiac cases if the proportion of the infringer's profits resulting from the use of the patented thing cannot be ascertained with mathematicai exactness the testimony of experts and persons informed by observation and experience" is received to establish a "reasonable approximation". Where the amount of damages cannot be fixed by reference to evidence of sales lost or evidence of an established royalty of which the complainant has been deprived evidence of what would have been a reasonable royalty is received and made the basis of measuring damages. All of this procedure is plainly authorized and directed by the Supreme Court in the Wagner and Dowagiac cases and has been and is being consistently and justly applied by the courts at the present time.

The statute is clear and explicit. The hardship to which complainants were previously subjected in patent accountings did not arise from any defect or uncertainty in the statute, but solely from the action of the courts in adopting unnecessarily harsh and rigid rules of evidence. The defect was not in the statute but in the court-established procedure governing the conduct of trials under the statute. The error and injustice involved in that procedure were eliminated and a rational, just and thoroughly workable procedure was established by the Supreme Court as soon as the matter came before it.

The patentee is entitled to profits and damages if he can prove that there are any. If he can prove these items with mathematical precision no question arises. If he cannot prove profits and damages with mathematical precision but can establish them with reasonable certainty by the testimony of experts and other informed persons such testimony is accepted as the foundation of judgment. The law as now applied does as near exact justice between the parties as is humanly possible. It gives the complainant what he is justly entitled to if he can fix the amount with reasonable certainty, but jealous

ly guards the rights of both defendants and complainants by leaving no twilight zone in which the Court may exercise uncontrolled discretion.

Accountings in Patent Cases-The Proposed Amendment.

The proposed amendment provides that in cases where the damages and profits are not susceptible of exact calculation and determination the Court may receive opinion or expert testimony, and upon such testimony and all the other evidence in the case decree payment to the complainant "of a reasonable sum as a royalty or general damages for the infringement."

The provisions of this amendment would apply to practically all cases as there are few instances in which damages and profits are susceptible, of exact calculation and determination. A criticism that at once occurs to the lawyer upon reading this proposed amendment lies in the power given to the Court to decree payment of "a reasonable sum as a royalty or general damages". Royalties are matters of agreement and contract between the parties. Courts have never heretofore assumed to make contracts or business arrangements for parties in patent cases, and have taken cognizance of the amount of established royalties, when such existed, merely as a measure of damages. While this criticism may upon first impression seem merely formal, it is to be observed that the terms of the proposed amendment clearly authorize the Court to base its findings upon what it deems a reasonable business arrangement to the exclusion of the amount of profits and damages, no matter how strong the evidence of profits and damages may be if it falls short of exact calculation and determination. To authorize and direct courts to substitute business relations of their own invention for satisfactorily, though not mathematically, proved profits and damages can result in nothing but confusion and injustice.

RULES 133 TO 142 INCLUSIVE.

Appeals to the Examiners-in-Chief and Petitions to the
Commissioner in the ex parte Prosecution
Of Applications.

F. C. SKINNER, Examiner-in-Chief.

In the ex parte prosecution of applications, the original jurisdiction is in the Primary Examiner, but from any action made by him an appeal lies either to the Board of Examiners-in-Chief or directly to the Commissioner of Patents. Appeals to the Commissioner were formerly known as interlocutory appeals, and are so referred to in the earlier decisions, but they are now called petitions.

Before the applicant is entitled to take either a petition or an appeal from any action of the Primary Examiner, a reconsideration must be requested, R. S., Sec. 4903, Sec. 4909. Where the appeal is from the rejection of claims, there must have been two rejections of the claims as originally filed, or if amended in matter of substance, of the amended claims; and all of the claims must have been passed upon and, except in cases of division, all preliminary and intermediate questions relating to matters not affecting the merits of the invention settled, before the case can be appealed to the Examiners-in-Chief (Rule 134); Mewes, C. D., 1872, p. 163; Burt, C. D., 1889, p. 251.

All actions by the Primary Examiner in ex parte cases relate either to matters of form or to the merits of the invention, the former being reviewable by the Commissioner on petition, and the latter by the Examiners-inChief, on appeal. The reason for this division is that the duties of the Examiners-in-Chief are purely judicial, as defined by R. S., Sec. 482, while the Commissioner, as the head of the office, exercises both administrative and judicial functions (Ex parte Krake, C. D., 1869, p. 100; Ex parte Morton, C. D., 1871, p. 169). The questions of form which are carried to the Commissioner directly by petition are such as relate to the enforcement

of the rules and the placing of the application in a proper condition for examination on its merits. The opinion of the Commissioner on the merits of the invention is rendered, when necessary, in the regular course of appeal from the decision of the Examiners-in-Chief, R. S., Sec. 4910; Rule 136.

The distinction between matters of form and questions which go to the merits of the invention does not seem to have been always understood, and there are numerous decisions which are devoted to the classification of various subjects matter in one group or the other. The real test seems to be that where the question relates to the auhority of the examiner to take the action, or where the requirement appealed from is that the applicant take some action which is intended to put the application in proper form for a final action on the claims, such as to properly illustrate the matter described or to amend the description or claims so that they can be understood, it is a matter of form and does not go to the merits of the invention as it does not reject the claims or deny the patentability of the invention defined thereby, nor the right of the applicant to a patent thereon, but only requires him to comply with the rules and present his case in clear and intelligible shape for action on its merits. Where the claims are rejected and the examiner refuses to grant a patent to the inventor for the invention involved in the claims, the action goes to the merits of the invention and appeal lies to the Examiners-in-Chief.

Rule 133 specifies many of the grounds of rejection. which go to the merits of the invention, but the rejection originates with the Primary Examiner, and the nature of these grounds of rejection is more properly a subject for discussion in connection with other rules, and need not be considered in this paper. The question of jurisdiction of appeals on these subjects has been settled in many decisions, but they are frequently nothing more than repetitions of what is stated in the Rule, and it is not apparent in most cases why the jurisdiction should have been questioned. Under the present Rule 133, the question of division is appealable to the Examiners-in-Chief. This was formerly regarded as a matter of form and not of merits, the reasons being very clearly stated in a quotation in U. S. ex rel Steinmetz v. Allen, C. D., 1903,

p. 581, taken from the opinion of the Commissioner in that case, in which he said:

"The requirement for division is purely a matter of form not involving the. merits of the claims, since the claims may be, and in the present case are, regarded as allowable. The examiner has not refused to grant a patent to this applicant upon any of the claims presented, but has merely required that they be included in two patents instead of one. It is a question of procedure or of the manner of securing the protection which is in controversy, and not the right of the applicant to a patent upon any of the claims presented."

This view of the question was also taken by the Supreme Court of the District of Columbia in C. D., 1903, p. 632, and by the Court of Appeals of the District of Columbia in C. D., 1903, p. 578.

In making the requirement of division in this case, the Primary Examiner was acting under a Rule 41, which required that:

"Claims for a machine and the process in the performance of which the machine is used must be presented in separate applications."

This rule was mandatory and the Examiner had required a division without any consideration of the propriety of the requirement in the particular case before him. On writ of error to the Supreme Court of the United States, in U. S. ex rel Steinmetz v. Allen, C. D., 1904, p. 703, the Court held this portion of Rule 41 invalid on the ground that the question of division was discretionary with the Commissioner and that this rule, in effect, refused to exercise the discretion vested in him by law. The Court further held that in some cases a requirement of division acquiesced in by the applicant might result in the holding that one of the patents is invalid in view of the other on the ground that there was but a single invention, and as this would result in the loss of one portion of his invention, the requirement for division would be equivalent to a rejection and was therefore appealable to the Examiners-in-Chief. Although in most cases where a division is required no one contends that there is any possibility of one patent being held invalid in view of the other, the fact that in some cases this might be so, led to the adoption of the present provision in Rule 133, making requirements for division appealable to the Examiners-in-Chief.