The appeal must be in writing, and set forth the points of the decision upon which it is taken. (See Rule 133.) Upon the filing of the appeal it is submitted to the examiner who, if he finds it to be regular in form, must within fifteen days from the filing thereof, furnish the examiners-in-chief with a written statement of the grounds of his decision on all the points involved in the appeal, with copies of the rejected claims, and the references applicable thereto. The examiner must also furnish the applicant with a copy of his statement. If the appeal is not regular in form, the applicant may amend it, or take an interlocutory appeal from the finding of the examiner to the Commissioner. (See Rule 135.) The appellant must, before the day of hearing, file a brief of the authorities and arguments on which he will rely to maintain his appeal; and if he desires to be heard orally before the examiners-in-chief, he will so indicate when he files his appeal; a day of hearing will then be fixed, and due notice of the same given him; otherwise the appeal will be considered and decided by the examiners-in-chief upon the record and brief presented. (See Rules 136 and 137.) In contested cases the appellant has the right to make the opening and closing arguments unless otherwise ordered. (See Rule 138.)

The examiners-in-chief in their decision will affirm or reverse the decision of the primary examiner only on the points on which appeal shall have been taken. (See Rule 139a.) They must suggest anything they deem important either to the office or the applicant, see ex parte Dodge, 3 O. G. 179; but can make no recommendations as to points not within their jurisdiction, see ex parte Gillette, 44 O. G. 819. If they are of opinion that a different form of claim from that rejected should be allowed they should annex to their decision a statement to that effect, with such recommendation as they think best, but the examiner is not bound by such recommendation, see ex parte Dysart, 34 O. G. 1390. They are not required however to absolutely determine any form of claim to be passed on by the examiner, see ex parte Dysart, 34 O. G. 1390; primary examiners may refuse to act on the recommendation of the examiners-in-chief, but an appeal lies from such refusal, see ex parte Pearson, 40 O. G. 244. Where the examiners-in-chief make a recommendation," the party may proffer the recommended matter to the primary examiner, and if he refuses, the Commissioner may order it, or the party may, after acceptance of the matter and a new rejection, appeal, see ex parte Holt, 38 O. G. 227. If new references are cited by an examiner, after an appeal to the examiners-inchief, the applicant may again appeal without a new fee, unless the new references are based on his amendment, see ex parte Dysart, 34 O. G. 1390.

DILIGENCE IN FILING APPEAL.-In appealable cases in which no limit of appeal is fixed, no appeal will be entertained by any tribunal in the office unless taken within six months from the action which puts the case in condition for appeal, unless it be shown to the satisfaction of the Commissioner that such delay was unavoidable. (See Rule 134.)

APPEALS IN INTERFERENCE CASES.-In interference cases parties have the same remedy by appeal to the examiners-in-chief as in ex parte cases. Appeals in interference cases must be accompanied by brief statements of the reasons therefor; and parties will be required to file printed briefs of their arguments before the day of hearing.

FROM EXAMINERS-IN-CHIEF TO COMMISSIONER.

SEC. 4910.-If such party is dissatisfied with the decision of the examiners-in-chief, he may, on payment of the fee prescribed, appeal to the Commissioner in person.

Rules of Practice.-139 (c) (d), 140.

This appeal, like the former, is taken by a written petition setting forth the decision complained of and the reasons of appeal, and the procedure is practically the same.

If the Commissioner, in reviewing the decision of the examiners-in-chief, discovers any apparent grounds for granting or refusing letters patent not involved in the appeal, he will, before or after final judgment, and whenever in his opinion substantial justice shall require it, give reasonable notice to the parties; and if any amendment or action thereon be proposed, he will remand the case to the primary examiner for consideration, see ex parte Smoot, 11 O. G. 1010. The primary examiner may refuse to act on the recommendation of the Commissioner, and an appeal will lie from such refusal as in other cases, see ex parte Pearson, 40 O. G. 244.

DILIGENCE IN FILING APPEAL.-The same rule applies as in case of appeal to the examiners-in-chief. The appeal should be filed within six months from the action which puts the case in condition for appeal. (See Rule 134.)

APPEALS IN INTERFERENCE CASES.-Parties in interference may appeal from an adverse decision of the examiners-in-chief to the Commissioner of Patents, the procedure being the same as in other cases. Printed briefs should be filed before the day of hearing. See Act February 9, 1893, under Sec. 4914, post.

FROM THE COMMISSIONER TO THE SUPREME COURT, D. C.*

SEC. 4911.-If such party, except a party to an interference, is dissatisfied with the decision of the Commissioner, he may appeal to the Supreme Court of the District of Columbia, sitting in banc.*

NOTICE OF SUCH APPEAL.

SEC. 4912-When an appeal is taken to the Supreme Court of the District of Columbia,* the appellant shall give notice thereof to the Commissioner, and file in the Patent Office within such time as the Commissioner shall appoint, his reasons of appeal, specifically set forth in writing.

PROCEEDINGS ON APPEAL TO SUPREME COURT.*

SEC. 4913. The court shall, before hearing such appeal, give notice to the Commissioner of the time and place of the hearing, and on receiving such notice the Commissioner shall give notice of such time and place in such manner as the court may prescribe, to all parties who appear to be interested therein. The party appealing shall lay before the court certified copies of all the original papers and evidence in the case, and the Commissioner shall furnish the court with the grounds of his decision, fully set forth in writing, touching all the points involved by the reasons of appeal. And at the request of any party interested, or of the court, the Commissioner and the examiners may be examined under oath, in explanation of the principles of the thing for which a patent is demanded.

DETERMINATION OF SUCH APPEAL AND ITS EFFECT.

SEC. 4914.-The court, on petition, shall hear and determine such appeal, and revise the decision appealed from in a summary way, on the evidence produced before the Commissioner, at such early and convenient time as the court may appoint; and the revision shall be confined to the points set forth in the reasons of appeal. After hearing the case the court shall return to the Commissioner a certificate of its proceedings and decision, which shall be entered of record in the Patent Office, and shall govern the further proceedings in the case. But no opinion or decision. of the court in any such case shall preclude any person interested from the right to contest the validity of such patent in any court wherein the same may be called in question.

ACT OF FEBRUARY 9, 1893.

AN ACT TO ESTABLISH A COURT OF APPEALS FOR THE DISTRICT OF COLUMBIA, AND FOR OTHER PURPOSES.

Sec. 9. That the determination of appeals from the decision of the Commissioner of Patents, now vested in the general term of the Supreme Court of the District of Columbia, in pursuance of the provisions of section seven hundred and eighty of the Revised Statutes of the United

*Now Court of Appeals of the District of Columbia, see Act of February 9, 1893, under Sec. 4914, p. 48, post.

States, relating to the District of Columbia, shall hereafter be and the same is hereby vested in the court of appeals created by this act; and in addition, any party aggrieved by the decision of the Commissioner of Patents in any interference case may appeal therefrom to said court of appeals.

Sec. 17. That all acts and parts of acts inconsistent herewith are hereby repealed.

See Rules of Practice, 1892.-148 to 150.

This appeal is taken by a written petition, duly signed and filed with the clerk of the court, accompanied by certified copies from the Patent Office of all the original papers and evidence in the case.

The petition should be filed and the docket-fee paid at least ten days before the commencement of the term of court at which the appeal is to be heard. Pro forma proceedings will not be had in the Patent Office for the purpose of securing to applicants an appeal to the Court of Appeals of the District of Columbia.

The hearing of appeals are subject to the usual rules of the court.

PATENTS OBTAINABLE BY BILL IN EQUITY.

SEC. 4915. Whenever a patent on application is refused, either by the Commissioner of Patents or by the *Supreme Court of the District of Columbia upon appeal from the Commissioner, the applicant may have remedy by bill in equity; and the court having cognizance thereof, on notice to adverse parties and other due proceedings had, may adjudge that such applicant is entitled, according to law, to receive a patent for his invention, as specified in his claim, or for any part thereof, as the facts in the case may appear. And such adjudication, if it be in favor of the right of the applicant, shall authorize the Commissioner to issue such patent on the applicant filing in the Patent Office a copy of the adjudication, and otherwise complying with the requirements of law. In all cases, where there is no opposing party, a copy of the bill shall be served on the Commissioner; and all the expenses of the proceeding shall be paid by the applicant, whether the final decision is in his favor or not. (See § 629, ། 9.)

An applicant in an ex parte case is not entitled to a bill in equity until he has exhausted his remedies by appeal, see Kirk v. Commissioner, 37 O. G. 451. Mandamus will lie where a patent is allowed by the office, but the Commissioner, without denying the right of the applicant, refuses to issue it, see Butterworth v. Hoe, 29 O. G. 615. Where the Patent Office rejects an application, and the remedies by appeal are exhausted, the remedy is by bill in equity, see Hull e. Commissioner, 7 O. G 559. The power of the Circuit Court to grant a patent is independent of the powers of the Patent Office, see Whipple v. Miner, 23 O. G. 2236. It has been decided by the Supreme Court of the United States in Butterworth v. Hill, 31 O. G. 1043, that the Commissioner's official residence is at Washington, that he can be sued only in the District of Columbia, and that he cannot waive the question of jurisdiction by appearance, consent or default Further, that a bill to obtain a patent must be brought in the Circuit Court for the District of Columbia, the courts of other districts having no power to enforce decrees against the Commissioner, see Prentiss v. Ellsworth, 27 O. G. 623. For the form of a bill to obtain a patent after rejection by the Patent Office, and other proceedings, see ex parte Greeley, 6 Fisher, 575.

A bill in equity may be heard on any issues and with any evidence, see Butler v. Shaw, 21 Fed. Rep. 321.

Delay in suing in equity for a patent is delay in prosecuting an application, and a petitioner, after a delay of more than two years since the last action, must allege and prove that the delay was unavoidable, see Gandy r. Marble, 39 O. G. 1423.

*Now Court of Appeals of the District of Columbia.

APPEALS FROM COMMISSIONER OF PATENTS.

SEC. 780.-The Supreme Court, sitting in banc, shall have jurisdiction of and shall hear and determine all appeals from the decisions of the Commissioner of Patents, in accordance with the provisions of section forty-nine hundred and eleven to section forty-nine hundred and fifteen, inclusive, of chapter one, Title LX, of the Revised Statutes, "Patents. Trademarks, and Copyrights." (See R. S. U. S., p. 958. See R. S. U. S., Sec. 699.)

These appeals are now heard by the Court of Appeals for the District of Columbia, see amending act of February 9, 1893, creating Court of Appeals for the District of Columbia, under Sec. 4914, ante.

See Rules of Practice, 1892.-148 to 150.

RE-ISSUE OF DEFECTIVE PATENTS.

SEC. 4916. Whenever any patent is inoperative or invalid, by reason of a defective or insufficient specification, or by reason of the patentee claiming as his own invention or discovery more than he had a right to claim as new, if the error has arisen by inadvertence, accident, or mistake, and without any fraudulent or deceptive intention, the Commissioner shall, on the surrender of such patent and the payment of the duty required by law, cause a new patent for the same invention, and in accordance with the corrected specification, to be issued to the patentee, or, in the case of his death or of an assignment of the whole or any undivided part of the original patent, then to his executors, administrators, or assigns, for the unexpired part of the term of the original patent. Such surrender shall take effect upon the issue of the amended patent. The Commissioner may, in his discretion, cause several patents to be issued for distinct and separate parts of the thing patented, upon demand of the applicant, and upon payment of the required fee for a re-issue for each of such re-issued letters patent. The specifications and claim in every such case shall be subject to revision and restriction in the same manner as original applications are. Every patent so re-issued, together with the corrected specifications, shall have the same effect and operation in law, on the trial of all actions for causes thereafter arising, as if the same had been originally filed in such corrected form; but no new matter shall be introduced into the specification, nor in case of a machine patent shall the model or drawings be amended, except each by the other; but when there is neither model nor drawing, amendments may be made upon proof satisfactory to the Commissioner that such new matter or amendment was part of the original invention, and was omitted from the specification by inadvertence, accident, or mistake, as aforesaid.

Rules of Practice, 1892.-53, 63, 85 to 92, 94, 170.

Amendment of a patent by way of re-issue was introduced into the patent law as early as 1832; the act of 1836 introduced some slight changes but no substantial modification in the spirit or meaning of the law; the act of 1870 and the Revised Statutes of 1874 introduced other changes in the phraseology of the provisions of the law, but the conditions and procedure are substantially identical with those of the earlier acts.

RE-ISSUES DEFINED.-Defects in existing patents which may be cured by amendment fall into three classes: (1) Clerical errors. These may be corrected, without surrender and re-issue, by the action of the Patent Office, see Reed v. Street, 34 O. G. 339; Rule 170. (2) Errors consisting of an excess of claim. These may also be cured

without surrender and re-issue of the patent, by way of disclaimer, see Section 4917 and notes, post. (3) Errors relating to the substance of the grant, whether excess, deficiency or misstatement. Errors of the latter kind can be removed only by re-issue.

The doctrines of the law with reference to re-issues may be resolved into the following propositions: (1) The sole object of a re-issue is to so amend an imperfect existing patent that it may disclose and protect the invention which it was the purpose of that patent to secure to its inventor. (2) It being an amendment of an existing patent, not the grant of a new patent, it must be confined to the invention which the patentee attempted to describe and claim in his original patent. (3) This amendment cannot be allowed unless the imperfections in the original patent arose without fraud, and from inadvertence, accident or mistake. (4) When the amendment is allowable it can be made in any form, and to any extent that may be necessary to render the patent effective for the protection of the original invention. (5) If the re-issue is allowed the original patent must be surrendered and cancelled, and an amended patent will be issued in place thereof, see Robinson on Patents, $ 659. See also Rule 85.

"Inadvertence," signifies want of attention; "mistake," want of knowledge; "accident," circumstances against which the inventor cannot guard.

Matter shown and described in an unexpired patent, and which might have been lawfully claimed therein, but which was not so claimed by reason of a defect or insufficiency in the specification, arising from inadvertence, accident or mistake, and without fraud or deceptive intent, cannot be subsequently claimed by the patentee in a separate patent, but only in a re-issue of the original patent. (See Rule 92.)

A re-issued patent supersedes the original; it is a new contract between the United States and the party who obtains it, see Goodyear . Providence Rubber Co., 2 Clifford, 351; it is not a new patent however, it is a continuation of the original patent, see Shaw v. Colwell Lead Co., 11 Fed. Rep. 711.

APPLICANTS FOR RE-ISSUE, WHO MAY BE.-The application for a re-issue must be made by the inventor if he be alive, see Section 4895, Rule 85; on his own behalf if he is still the owner of the entire patent, and on behalf of the real owners if he has assigned the whole or any part of the patent, and in the latter case the application must be accompanied by the written assent of such assignee, see ex parte Wright, 10 O. G. 587; Rule 85. If the inventor be dead, the application may be made by the executor, see Carew v. Boston Elastic Fabric Co., 1 O. G. 91; the administrator, see Northwestern Fire Extinguisher Co. v. Phila. Fire Ex. Co., 6 O. G. 34; or by an assignee of any degree, however remote from the original inventor, see Selden v. Self-Lighting Gas Burner Co., 20 O. G. 1377. A re-issue may, if the inventor be dead, be obtained in his own name by the assignee of the executor or administrator of the patentee, see Carew v. Boston Elastic Fabric Co., 1 Holmes, 45. A patentee cannot affect the interest of his assignee by any surrender for re-issue, see Burns v. Morgan, 3 Hun., 703, as the surrender of an assigned patent is not valid unless made by the assignee, or with his consent, see ex parte Wright, 10 O. G. 587. No re-issue can affect the rights of nonassenting owners or other third parties, see Potter v. Braunsdorf, 7 Blatch., 97. A reissue obtained by an inventor without the assent of the assignees is valid or invalid as they may elect. They may ratify it and enjoy the advantages arising from it, though issued only in his name, or they may repudiate it, and compel him to obtain another, or they may insist upon their privileges under the original patent, see Potter v. Holland, 4 Blatch., 206. A re-issue to the patentee is, however, a bar to a re-issue to an unrecorded assignee, see Whitely v. Fisher, 4 Fisher, 248. It should also be noted that third parties ratify the re-issue by using or selling goods under it, see Meyer v. Bailey, 8 O. G. 437.

THE APPLICATION.-A complete application for the re-issue of a patent comprises: (1) A petition, with power of attorney, if an attorney is appointed. (2) A specification, signed by the applicant and two witnesses. (3) A drawing, if the invention can be illustrated, made upon the same or a larger scale than the original drawing, unless a reduction of scale is authorized by the Commissioner, see Rule 53. (4) An oath which must fulfill all the requirements prescribed for oaths in case of original applications, and in addition it must also aver:

(a.) That applicant verily believes the original patent to be inoperative or invalid, and the reason why.

(b.) When it is claimed that such patent is so inoperative or invalid "by reason of a defective or insufficient specification," particularly specify. ing such defects or insufficiencies.

(c.) When it is claimed that such patent is inoperative or invalid "by reason of the patentee claiming as his own invention or discovery more than he had a right to claim as new," distinctly specifying the part or parts so alleged to have been improperly claimed as new.