In the case of Atwood ex parte, the Commissioner says: "There would seem to be an obvious impropriety in allowing an inventor to make application and obtain a patent for some trifling improvement, and then come in at any time within two years, as suggested by counsel, and claim another patent covering broadly the machine improved and already described in the first patent, so that the first patent would become tributary to the second, and the unlucky purchaser of the first would become an infringer of the second in the hands of his grantor.

"The law gives ample facilities for patenting every improvement shown in an application. It provides a system of re-examinations and appeals before the patent goes out; and, even after the issue of a patent, it permits the owner to reissue it and to subdivide it, until nothing is left upon which to found a claim. All claims granted upon the thing described have a common origin-the original application. The monopoly founded upon them has a common duration-the lifetime of the original patent. This is just to the inventor, and it is just to the public. It is a sound practice, and the only safe one.

"I answer the questions of the examiner as follows: 1. The case of Suffolk Company v. Hayden in no way controls the practice in the Patent Office. 2. When an application is filed, every invention contained in that application must be patented under it, or under such divisions of it as the wishes of the applicant and the rules of the office may permit." (Commissioner's Decisions, 1869, p. 98.)

45. THE QUESTION OF THE DIVISION OF AN INVENTION INTO SEPARATE PATENTS IS WITHIN THE DISCRETION OF THE COMMISSIONER.-It is difficult, perhaps impossible, to lay down any general rule by which to determine when a

given invention or improvement should be embodied in one, two, or more patents; some discretion must necessarily be left on this subject to the head of the Patent Office. It is often a nice and perplexing question. (Bennett v. Fowler, 8 Wall., 445.)

The case of Hogg v. Emerson (6 How., 483) has usually been relied upon as authorizing the union of several devices, machines, or improvements, under a single patent. In that case letters patent had been granted covering an improvement in a spiral propelling wheel and in a capstan. This was an extreme case, and the defendant contended that the patent was void. The court say: "The next objection is, that this description in the letters thus considered covers more than one patent, and is therefore void.

"There seems to have been no good reason at first, unless it be a fiscal one on the part of the Government when issuing patents, why more than one, in favor of the same inventor, should not be embraced in one instrument, like more than one tract of land in one deed or patent of land." (Phillips on Pat., 217.)

"Each could be set out in separate articles or paragraphs, as different counts for different matters in libels in admiralty or declarations at common law, and the specifications could be made distinct for each, and equally clear.

"But, to obtain more revenue, the public officers have generally declined to issue letters for more than one patent described in them." (Renouard, 293; Phillips on Pat., 218.) "The courts have been disposed to acquiesce in the practice, as conducive to clearness and certainty; and if letters issue otherwise, inadvertently, to hold them, as

a general rule, null. But it is a well-established exception, that patents may be united if two or more, included in one set of letters, relate to a like subject, or are in their nature or operation connected together." (Phillips on Pat., 218, 219; Barrett v. Hall, 1 Mason C. C., 447; Moody v. Fiske, 2 Mason C. C., 112; Wythe et al. v. Stone et al., 1 Story, 273.)

"Those here of that character, being all connected with the use of the improvements in the steam-engine as applied to propel carriages or vessels, and may therefore be united in one instrument."

In Root v. Ball & Davis (4 McLean, 179) the court say: "It is objected to the plaintiff's patent that two distinct things cannot be united in the same patent. This is true when the inventions relate to two distinct machines; and the reason assigned is, that it would deprive the officers of the Government of their fees, and in other respects would be inconvenient. But the same patent may include a patent for a combination and an invention of some of the parts of which the combination consists."

The doctrine of both of these cases seems to be, that while the rule which assigns distinct inventions to distinct patents is a proper one, and one which the Commissioner may properly enforce, yet, if the patent actually issue, the courts will sustain it. It is certainly nowhere asserted that it is the duty of the Commissioner to include two or more inventions in one patent, but it is evidently referred to his discretion. There are numerous cases in which it has been held, that a patent once granted is to be liberally construed; that it is to be presumed that public officers do their duty; that the court will not inquire into slight defects or mere informalities

in the grant of letters patent, where there is a meritorious invention. Yet it would be a grave error to found upon such decisions a rule of action for the Commissioner; for it by no means follows, because a patent has been sustained, notwithstanding certain informalities in the issue, that every succeeding patent is to exhibit the same informalities. In Tompkins v. Gage (2 Fish., 580) it was held, that the second claim of the patent under consideration was but a repetition of the first; but that "duplicity of claim" did not affect the validity of the patent. It could hardly be gravely contended, however, that upon the authority of this decision the Commissioner should encourage or permit the granting of duplicate claims.

The whole question is one of discretion in the Commissioner.

It may be conceded that it is difficult to establish any general rule for the division of inventions into separate patents, which shall apply to all cases, or which shall not be subject to many exceptions. In both of the cases quoted, it is suggested that the union of many inventions in one patent would deprive the Government of its proper fees. This is a legitimate consideration. A fee of $15 is now charged for examination into the novelty, utility, and patentability of an invention. This is a very reasonable charge, and is much less than it would cost to make the examination in any other way. Indeed, the fees for all services in the Patent Office are less than are charged in any other country, while the service performed for the applicant by the office is much greater.

It would be unjust to the Government, to the public at large, and to other inventors, to permit one of their number to present a batch of inventions for examination

under a single fee, for he would receive more of the time of the examiner than he had paid for. Another consideration, which is not less important, is found in the classification of the various subjects of invention, and the assignment of the different classes to different examiners. This division of labor is absolutely essential to the prompt and thorough examination of applications. It is adopted to facilitate the transaction of the public business, and the inventor himself is directly and immediately benefitted by a strict adherence to it. Any union of inventions in one patent, that would seriously impair this classification, ought not to be permitted. Besides the delay and increased difficulty in making the examination, if the patent covers devices which enter into two classes, the drawing, which is single, must be deposited in the portfolio of the one class, and be wanting in the portfolio of the other. It may thus be overlooked in the examination. of the next case.

It may therefore be said in general, that when two or more distinct inventions are united in one application that are capable of division, and which belong to different classes, or involve a double labor of examination, or have no community of operation, it is not only the right, but it becomes the duty of the Commissioner to require the application to be divided. (Linus Yale, jr., ex parte, Commissioner's Decisions, 1869, p. 110.)