application, which had prevailed for thirty years was changed to permit but one renewal in 1894 solely because the Commissioner construed the opinions of the Assistant Attorney-General as controlling in the matter. In the case of ex parte Weil (C. D., 1906, 160; 122 O. G., 352) the Commissioner stated that—

The practice of this Office in refusing to entertain a second renewal application is founded upon opinions of the Attorney-General published in C. D., 1894, 111; 69 O. G., 639, and in C. D., 1895, 95; 70 O. G., 493—

and he gives no other reason. The decision of the Assistant Secretary in the present case, however, holds that said opinions are in no way controlling or binding upon the Commissioner of Patents, but that it is his duty to determine the matter according to his conscience and discretion and that his construction may be disturbed only by the courts.

Prior to 1861 but one fee was required by the Patent Office, this being a fee of thirty dollars, payable upon the filing of the application. If, therefore, the application was allowed, it could be issued at once. In 1861 the present division of fees was made—that is, a preliminary fee of fifteen dollars was required, and a final fee of twenty dollars was required "on issuing each original patent," (sec. 10, act of 1861;) but the act did not specify how long after allowance the applicant could have for the payment of this final fee. In 1863 this difficulty was met by the following statute:

Sec. 3. And be it further enacted, that every patent shall be dated as of a day, not later than six months after the time at which it was passed and allowed, and notice thereof sent to the applicant or his agent. And if the final fee for such patent be not paid within the said six months the patent shall be withheld and the invention therein described shall become public property as against the applicant therefor: Provided, That in all cases when patents have been allowed previous to the passage of this act, the said six months shall be reckoned from the date of such passage.

To mitigate the harshness of the provision precluding the applicant from obtaining a patent after the specified six months even upon a new application, Congress provided by the act of 1864, as a temporary remedy, that the time for paying the final fee in pending applications should be extended for six months after the date of the latter act. It was soon recognized, however, that the act of 1863 was too severe upon inventors, and in 1865 Congress passed an act of general relief the prototype of section 4897, Revised Statutes. The act of 1865 provided, with respect to both pending and future applications, that when the final fee had not been paid on an allowed application within the six months specified any person having an interest in the invention should have the right to make an applicationthe same as in the case of an original application, provided such application be made within two years after the date of the allowance of the original application.

This provision, without substantial change, was incorporated in section 35 of the act of 1870 and section 4897 of the Revised Statutes. (These various statutes are quoted in full in Sibbald v. Cassidy and Smith, C. D., 1892, 223; 61 O. G., 1165.)

Section 4897, Revised Statutes, has remained in force without change since its enactment in 1874. This section, which governs the matter under consideration, reads as follows:

Sec. 4897. Any person who has an interest in an invention or discovery, whether as inventor, discoverer, or assignee, for which a patent was ordered to issue upon the payment of the final fee, but who fails to make payment thereof within six months from the time at which it was passed and allowed, and notice thereof was sent to the applicant or his agent, shall have a right to make an application for a patent for such invention or discovery the same as in the case of an original application. But such second application must be made within two years after the allowance of the original application. But no person shall be held responsible in damages for the manufacture or use of any article or thing for which a patent was ordered to issue under such renewed application prior to the issue of the patent. And upon the hearing of renewed applications preferred under this section, abandonment shall be considered as a question of fact.

This history of the provision permitting the renewal of forfeited applications shows that it was originally intended to provide a remedy for the statutory forfeiture of the invention, (act of 1863,) that its purpose was remedial and to confer added privileges upon the inventor, and that it should therefore be broadly construed. Although the act of 1863, which it was intended to alleviate, was repealed by the Consolidated Patent Act of 1870, this provision of the act of 1865 was reenacted therein. Had it been the intention to restrict the Patent Office practice which prevailed between 1865 and 1870 of allowing more than one renewal, it is reasonable to suppose that in the general revision of 1870 the provision would have been worded to expressly so state. The Commissioners at the time of the passage of the acts, and who, if they did not assist in framing them, were especially interested in them, never seem to have had any doubt about their permitting more than one renewal, nor does it seem to have been questioned by the Commissioners during the thirty years prior to 1894.

During the thirty years no patent issued by the Office upon a second renewal application was ever held invalid for this reason by the courts, and they never questioned the validity of the Office practice.

In 1890 the Commissioner of Patents referred to the Secretary of the Interior the case of Nicholson, who in turn referred it to the Department of Justice. In that case the application of Nicholson, filed on June 25, 1887, was allowed December 9, 1887, renewed December 4, 1889, again allowed December 11, 1889, and a second application

for renewal was filed June 7, 1890. In his opinion (C. D., 1890, 197; 53 O. G., 1574) Attorney-General Miller states that the question presented is "whether under the circumstances detailed Nicholson is entitled to be allowed Letters Patent upon this application.' He held the applicant not entitled to Letters Patent because the second renewal was presented more than two years after the allowance of the original application. He further stated that he did not deem himself called upon to decide whether a second renewal application filed within the two years would support a patent. Obviously, however, if he had been of the same opinion as Assistant Attorney-General Hall in 1894 the fact that the renewal application was a second renewal would have been equally good ground for refusing a patent, and he would doubtless have so stated had he considered it to clearly constitute a bar.

Likewise in the case of Western Electrical Instrument Company v. Empire Electrical Investment Co., the only court case found in which this point is directly involved, the Circuit Court of Appeals for the Second Circuit refused (136 F. R., 599) to affirm the decision of the court below that a second renewal is prohibited by section 4897, Revised Statutes. In that case the circuit court held (131 F. R., 90) the patent invalid both because it issued on a second renewal application (referring to Assistant Attorney-General Hall's opinions) and because the second renewal was made more than two years after the allowance of the original application. On appeal, however, the court of appeals in its decision rendered March 8, 1905, made no direct reference to the holding below that the patent was invalid because it issued on a second renewal application, but stated:

We concur in so much of the opinion of the court below as holds that: "If more than one application could be made, the final application must be made within two years after the allowance of the original application, the term 'the original application,' as used in this section, meaning the first application." This would seem to be virtually a holding that the court of appeals did not concur in the remainder of the opinion of the court below.

In his first opinion Assistant Attorney-General Hall held that the statute does not contemplate a second renewal, even when made within two years after the allowance of the original application, for two reasons, as follows:

The effect of the statute is to restore to the applicant rights that have been forfeited and surrendered to the public by his failure to prosecute and perfect his claim within the time required by the statute. The act did not contemplate the restoration of a right that had been again forfeited by the failure of the applicant to pay the final fee within the limit prescribed by the statute, and the public would be thereafter justified in regarding his failure to perfect his appllcation as an abandonment of the invention. Besides, the expression, "but such second application must be made within two years," etc., implies that no other application should be allowed.

The first of these reasons involves the holding that the forfeiting of an application abandons the invention to the public and would bar the filing of a new application by the inventor. The Assistant Attorney-General admitted this holding to be an error and withdrew it in his second opinion. This apparently left as the sole reason for his opinion that second renewals cannot be made under the statutes his statement that the use in the statute of the expression "such second application must be made within two years" implies that no other application should be allowed; but at best this is a mere inference. Among the dictionary definitions of second are "another," "other," 99 66 next," ""identical with another or preceding one." It would appear, also, from the history of the provision that the word "second" was intended to be construed broadly as a synonym of "renewed," "secondary," or "next" rather than as a formal limitation. It is believed that all that Congress intended by the sentence "but such second application must be made within two years after the allowance of the original application " was to limit the renewal period to the term of two years after the allowance of the original application. This was the same term provided in the act of 1839 (sec. 7) for the public-use bar, in the act of 1861 (sec. 12) for abandonment of the application through failure to complete, and in the act of 1870 (sec. 32, afterward sec. 4894, R. S.) for abandonment through failure to prosecute.

From a practical standpoint there are many reasons why the former Office practice of permitting more than one renewal within the two-year period had much to commend it. While favorable to the inventor it took nothing from the public. Forfeiture of the application does not give the invention to the public. The inventor may file a new application therefor, but often a patent on such an application would be barred by two years prior public use or by foreign patents. Inasmuch as the renewal term is limited to two years, successive renewals will not delay the issue of the patent. If the inventor wishes to defer the issue of his patent, he may wait until the last day of his two years before filing his first renewal. Should he renew more than once, he could not extend the two-year period, while the Government would be the gainer to the extent of the additional renewal fees.

In the present case Lambert might have waited until September 13, 1908, before making his first renewal, but instead he renewed his application on March 14, 1907, and filed his present request for a second renewal on May 15, 1908, months before the end of the twoyear period. Following the forfeiture of an application through failure to pay the final fee within the six months after allowance there is a period of eighteen months during which it lies dormant

and no notice can be taken of it by this Office; but at any time during this period it may be renewed and an interference demanded with pending applications or patents that may have issued in the meantime. The sooner and the oftener a forfeited application is renewed during this period the less likelihood is there that patents for the same invention will issue without an interference therewith.

For all of these reasons the practice is restored which prevailed prior to 1894 of allowing more than one renewal of a forfeited application, provided it is made within the two years following the date of allowance of the original application; but this change in practice is not to be construed as in any way retroactive.

Lambert's application will be renewed as of June 16, 1908, the date on which the present petition and fee were filed. The petition is granted to the extent indicated.

EX PARTE BROWN AND SPRINK.

AMENDMENTS-RULE 68.

APPLICATION FOR PATENT.

Decided July 29, 1908.

135 O. G., 1801.

An amendment touching the merits of the case will not be admitted under the provisions of Rule 68 unless accompanied by a verified showing of good and sufficient reasons why it was not earlier presented.

ON PETITION.

REVERSIBLE CLUTCH-PULLEY.

Mr. D. P. Wolhaupter for the applicants.

MOORE, Commissioner:

This is a petition from the action of the Examiner refusing to enter a proposed amendment under Rule 68 after final rejection. Petitioners contend that the amendment presents the finally-rejected claims in better form for purposes of appeal. The Examiner, however, states that no objection was made to the form of the rejected claims and that the proposed amendment does not merely vary the form of the claims. He states that it was refused entry because it introduces structural limitations and points out wherein the changes occur. Petitioners do not deny that these structural changes exist in the proposed claims, but contend that they put the case in better condition for appeal.

The entry of the amendment would probably require the reëxamination and reopening of the case. The amendment touching the