re-examination, and may be revised and restricted in the same manner as in original applications; but if any reissue be refused, the original patent will, upon request, be returned to the applicant. (Act of July 8, 1870, § 53; Patent Office Rules, July, 1870.) 375. SURRENDER DOES NOT TAKE EFFECT UNTIL THE REISSUE IS GRANTED. -No surrender is made until the reissue is granted. Until the reissue is actually issued from the office the original patent remains uncanceled. It is usually deposited in the office with the application, as a guaranty that the application is made in good faith, and that, if the office is willing to grant the new patent, the old one shall be forthcoming. Besides this, as the demand for a reissue is declared to be based upon the invalidity of the original, an invalidity which the applicant is estopped to deny, (Moffit v. Gaar, 1 Black, 273,) the original patent is useless, and may well be committed to the custody of the office. Nevertheless, the uniform practice has been to return the original patent if a reissue be finally refused. There can be no doubt of the right of an applicant for a reissue to abandon his application at any time, and to demand and receive his original patent. Some have supposed the eighth section of the act of 1837 to be in conflict with this practice; but that section provides, not for an examination of the claims of the original patent, but for the examination of the new or corrected claims, in the same manner as upon an original application. It is obvious that if the surrender does not take effect, and the patent remains uncanceled until the issue of the amended patent, the continuity is not broken. (Whiteley ex parte, Commissioners' Decisions, 1869, p. 72.) If a reissue is not valid, the surrender which led to it will also be invalid, and the old letters patent will be considered in full force. (Woodworth v. Edwards, 3 Wood. & Minot, 137.) 376. RIGHTS CONFERRED BY REISSUE.-The new patent is issued to the patentee for the unexpired part of the term of the original patent, the surrender of which takes effect upon the issue of the amended patent, and the patent so reissued, together with the corrected specification, has the effect and operation in law, on the trial of all actions thereafter arising, as though the same had been originally filed in such corrected form. (See Act of July 8, 1870, § 53.) The reissued patent with corrected specifications has relation back to the emanation of the first patent as fully, for every legal purpose, as to causes subsequently accruing, as if the second patent had been issued at the date of the first one, (Stanley v. Whipple, 2 McLean, 37; Smith v. Pearce, 2 McLean, 176,) even though the original patent was invalid, (Bloomer v. Stolley, 5 McLean, 166,) and legalizes the rights of the patentee from the date of the first patent, (Stanley v. Whipple, 2 McLean, 37;) but it can cover only the same term that the original patent did. (Woodworth v. Hall, 1 Wood. & Minot., 257.) It operates, except to suits for violations commenced before the amendment, from the commencement of the original term. (Ib.) An action cannot be maintained for damages for an infringement occurring under the old patent before the surrender, (Moffit v. Gaar, 1 Fish., 610;) but it is no defense to an action upon the reissued patent that the defendant's machine was made and put up during the original patent, under which he was not liable to an action for infringement, (Coe v. Rice, 1 Fish., 198,) nor will proof of the use of the thing patented during the interval between the original and reissued patents defeat the action, (Batten v. Taggart, 17 How., 84.) No prior use of a defective patent can authorize the use of an invention after the emanation of a renewed patent, however long such use may have been after the date of the defective and surrendered patent. (Stimson v. Westchester Railroad, 4 How., 402.) There is a well-recognized difference between an extended and a reissued patent. The former grants a wholly new term, the latter only legalizes the right during the continuance of the original term. (McBurney v. Goodyear, 11 Cush., 571.) A contract concerning a patent made before its surrender applies to the reissued patent. (Ib.) 377. PETITION for a Reissue, (BY THE INVENTOR.)— To the Commissioner of Patents. Your petitioner prays that he may be allowed to surrender the letters patent for an improvement in coal-scuttles, granted to him May 16, 1867, whereof he is now sole owner, [or, "whereof Henry Bates, on whose behalf and with whose assent this application is made, is now sole owner, by assignment," and that letters patent may be reissued to him for the same invention, upon the annexed amended specification. RICHARD JONES. 378. PETITION FOR A REISSUE, (BY ASSIGNEES.)— [To be used only when the inventor is dead.] To the Commissioner of Patents: Your petitioners pray that they may be allowed to surrender the letters patent for an improvement in coal-scuttles, granted May 16, 1867, to Richard Jones, now deceased, whereof they are now owners, by assignment, of the entire interest, and that letters patent may be reissued to them for the same invention, upon the annexed amended specification. JOHN TOWERS. 379. OATH BY AN APPLICANT FOR A REISSUE, (INVENTOR.) STATE OF PENNSYLVANIA, City and County of Philadelphia, I 88. Thaddeus Tompkins, the above-named petitioner, being duly sworn, (or affirmed,) deposes and says that he verily believes that, by reason of an insufficient and defective specification, his aforesaid letters patent are inoperative and invalid; that the said error has arisen from inadvertence, accident, or mistake, and without any fraudulent or deceptive intention, to the best of his knowledge or belief; that he is the sole owner of said letters patent, [or, "that Henry Bates is the sole owner of said letters patent, and that this application is made on the behalf and with the consent of said Bates;"] and that he verily believes himself to be the first and original inventor of the improvement set forth in this amended specification. THADDEUS TOMPKINS. Sworn to and subscribed before me this 26th day of July, 1869. CHARLES CANDID, [NOTARIAL SEAL.] Notary Public. 380. OATH BY AN APPLICANT FOR A REISSUE, (ASSIGNEE.) [To be used only when the inventor is dead.] Martin Halstead and Norris Brown, the above-named petitioners, being duly sworn, (or affirmed,) depose and say they verily believe that, by reason of an insufficient and defective specification, the aforesaid letters patent granted to Amos Mygatt are inoperative and invalid; that the said error has arisen from inadvertence, accident, or mistake, and without any fraudulent or deceptive intention, to the best of their knowledge and belief; that the entire title to said letters patent is vested in them; and that they verily believe the said Amos Mygatt to be the first and original inventor of the invention set forth and claimed in the foregoing amended specification; and that the said Amos Mygatt is now deceased. MARTIN HALSTEAD. Sworn to and subscribed before me this 14th day of November, 1869. MORRISON WHITE, Alderman and Justice of the Peace ex officio. SEC. XXII. Extension. 381. Résumé of the law. 385. When application must be filed. 388. Reference to examiner. 390. Testimony in contested cases. 391. Service of notice to take testi mony. 392. Hearing. 393. Applicant to furnish statement under oath. 394. Divisions of a reissue. SEC. 397. As to value and importance. 400. Granting the extended term. 402. Action of Commissioner. 404. Extension by special act of 405. Rights of assignees. 407. Petition by administrator. 410. Oath by executor. 411. Reasons for opposing exten. sion. 395. Questions considered and proof 412. Reasons by a corporation. required. 396. As to novelty. 413. Oath to loss of letters patent. 414. Certificate of extension. 381. RÉSUMÉ OF THE LAW.-The Secretary of State, Commissioner of Patents, and Solicitor of the Treasury Department were, by the act of July 4, 1836, § 18, constituted a board of commissioners to hear evidence for and against the extension of patents, and to decide whether, having due regard for the public interest therein, it is just and proper that the term of the patent should be extended because the patentee has failed to obtain a reasonable remuneration. The commissioners being satisfied that the patent ought to be renewed, it was made the duty of the Commissioner of Patents to make a certificate on the original patent, showing that it extended |