DECISIONS

OF THE

SECRETARY OF THE INTERIOR.

1908.

IN RE DEMPSEY.

Decided January 20, 1908.

132 O. G., 1074.

1. FINAL FEE-DELAY IN FILING-NOT ACCEPTED.

A final fee which was inclosed in a letter registered at a substation of the post-office of Washington, D. C., on the last day allowed for payment thereof and which reached the city post-office at about 2.30 p. m. of said day, but was not delivered to the Patent Office until the second day thereafter because of an intervening holiday, should not be accepted and applied, as it was filed outside of the period fixed by law.

2. SAME-CONSTRUCTIVE DELIVERY TO PATENT OFFICE EVIDENCE.

The contention that a final fee which was placed in a receptacle set apart for the Patent Office by the city post-office on the last day allowed for payment is constructively a delivery to the Patent Office has no basis in the absence of proof that the fee was so set apart.

3. EVIDENCE-RECORD OF POST-OFFICE CONCLUSIVE.

The records of the city post-office as to the time when a registered package was placed in a receptacle set apart for the use of the Patent Office will be accepted as conclusive.

Mr. Walter H. Pumphrey for the applicant.

COMMISSIONER OF PATENTS.

DEPARTMENT OF THE INTERIOR, Washington, D. C., January 20, 1908.

SIR: The Department has considered the proffered appeal of William S. Dempsey from a decision of your Office of December 9, 1907, holding that the final fee in the matter of his application for Letters Patent for an invention was not received within the time allowed by law and the regulations of the Patent Office, and withholding patent for that reason.

801

Section 4885 of the Revised Statutes provides that

Every patent shall bear date as of a day not later than six months from the time at which it was passed and allowed, and notice thereof was sent to the applicant, or his agent; and if the final fee is not paid within that period, the patent shall be withheld.

Rule 167 of the Patent Office, based on said section 4885, is as follows:

Every patent will bear date as of a day not later than six months from the time the application was passed and allowed and notice thereof was mailed to the applicant or his attorney, if within that period the final fee be paid to the Commissioner of Patents, or if it be paid to the Treasurer or any of the assistant treasurers or designated depositaries of the United States, and the certificate promptly forwarded to the Commissioner of Patents; and if the final fee be not paid within that period, the patent will be withheld. A patent will not be antedated.

It is admitted that the payment of the final fee in this case was not made within the time provided by said section and said Rule 167, unless the depositing thereof by registered letter in a substation of the Washington city post-office on the last day of the period allowed by law, and its subsequent delivery to the central office in said city on that day, at 2.30 p. m., was a delivery to the Patent Office within the meaning of this statute.

This question was most carefully considered in an opinion of Assistant Attorney-General Van Deventer February 15, 1901, in the case of the appeal of Michael J. Cannon, involving a substantially similar question and contention. In that opinion, which was approved by the Secretary of the Interior, it was held that the postal authorities are not the agents of the Government for the collection of Patent Office fees; that the agents of the Government for this purpose are designated in the rules governing the practice of that Office, and that the postal authorities are not among the agents so designated. This would seem to be conclusive of the question here presented, but it is contended that the Patent Office has in the central city post-office at Washington a receptacle in which it is the practice to deposit all mail for the Patent Office, and that the registered letter containing the final fee in this case was deposited in said receptacle by the post-office authorities some hours before the closing of the official day in the Patent Office, and but for a regulation or custom under which the mail of said Office is not sent for, this letter would have been delivered therein long before the closing of office hours on such day. No proof of the fact on which this contention is based is furnished, and your Office reports that upon inquiry at the city post-office it has been ascertained by examination of the postoffice records that such letter was not in fact placed in said receptacle on said day, and not until the following day.

The records of the post-office on this question of fact will be accepted as conclusive. There is, therefore, no basis for this contention, and without expressing an opinion as to its sufficiency, were it well founded in fact, the appeal is denied.

1. RENEWAL OF FORFEITED APPLICATIONS-SECOND RENEWAL-NO APPEAL TO SECRETARY OF THE INTERIOR FROM THE REFUSAL TO ACCEPT.

No appeal lies to the Secretary of the Interior from a refusal of the Commissioner of Patents to accept a second renewal application. The question raised being one of a judicial or quasi-judicial character, the remedy, if there be one, lies in appeal to the courts. (Butterworth, Commissioner of Patents, v. U. S., ex rel. Hoe et al., C. D., 1884, 429; 29 O. G., 615; 112 U. S., 501; Poole v. Avery, C. D., 1899, 255; 87 O. G., 357; 14 Asst. Atty. General's Opinion, 501.)

2. SAME-OPINION OF THE ASSISTANT ATTORNEY GENERAL-NOT BINDING UPON COMMISSIONER OF PATENTS.

An opinion of an Assistant Attorney-General for the Interior Department relating to the right to file a second renewal application rendered upon request of the Commissioner of Patents Held to be merely advisory in nature, and the Commissioner might properly have disregarded the same had he desired, and should now disregard the same if in his opinion it was in error.

Messrs. Kenyon & Kenyon for the applicant. (Mr. William Houston Kenyon and Mr. Walter F. Rogers of counsel.)

DEPARTMENT OF THE INTERIOR,

THE COMMISSIONER OF PATENTS:

Washington, July 28, 1908.

Sir: Counsel for Asher Lambert have proffered an appeal to the Secretary of the Interior from the action of your Office refusing to accept a second renewal application filed by Lambert for the issuance of Letters Patent for an invention. Accompanying the appeal is a petition to the Secretary of the Interior praying that two certain opinions of the Assistant Attorney-General, dated June 30, 1894, and January 10, 1895, respectively, involving the same question presented by this appeal and which were approved by the then Secretary of the Interior

be withdrawn so that the Commissioner of Patents may return to the practice which existed for thirty years prior to the date of said opinions.

The question presented by the proffered appeal is whether the Commissioner of Patents erred in refusing to accept a renewal application by Lambert, he already having made one renewal application for the same invention. This question is covered by sections 4885 and 4897 of the Revised Statutes, which are as follows:

Sec. 4885. Every patent shall bear date as of a day not later than six months from the time it was passed and allowed and notice thereof was sent to the applicant or his agent; and if the final fee is not paid within that period the patent shall be withheld.

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.

It may well be doubted if the Secretary of the Interior has appellate jurisdiction of the question presented. Its consideration by the Commissioner of Patents was more than ministerial. It involved the exercise of judgment and discretion, and its determination would seem to be a judicial, or quasi-judicial act. The appellant's remedy by appeal, if there be one, is committed to the courts, and the Secretary of the Interior has no authority to review the Commissioner's action. (Butterworth, Commissioner of Patents, v. United States, ex rel. Hoe and others, C. D., 1884, 429; 29 O. G., 615; 112 U. S., 501; Poole v. Avery, C. D., 1899, 255; 87 O. G., 357; 14 Asst. Atty. General's Opinion, 501.)

The petition, however, points out that the present practice is not in keeping with the intent of the statute, that it is based on the aforesaid approved opinions of the Assistant Attorney-General of this Department, that these decisions are erroneous and should be withdrawn so that the Commissioner may not feel bound by them, and it is intimated if this be done that the Commissioner's views, being in harmony with the views of the petitioner, he would at once correct the abuse that has resulted therefrom and return to a practice which had subsisted for thirty years prior to the promulgation of said opinions. Thus presented, the Secretary of the Interior may consider and act upon the prayer of the petitioner.

The rulings complained of were not made in any attempted exercise of appellate or supervisory authority but were advisory and upon