In the recent cases of Le Roy v. Hopkins and Edison v. Nicholson, I understand the honorable Secretary to have held, though it is not so expressed, that amendments of the character here presented should be allowed at any stage of the proceedings, if thereby substantial justice shall be promoted.

I do not think that there is any sufficient excuse for Brown's misunderstanding of the issue, nor of his delay in presenting his amendment, and if the motion were to be adjudicated on the principles which heretofore governed in like cases, the decision of the Examiner of Interferences should be affirmed. Nevertheless, it appears from the affidavits that the invention in controversy was made by him long prior to the time fixed in his preliminary statement, and although not excusable in not understanding what was embraced in this issue at once, now that he does comprehend the issue he should be permitted to prove when he made the invention.

On the cases above cited I must hold that where it is made reasonably certain that a mistake has been made in the preliminary statement, and that the party governed by such statement would not be permitted to introduce testimony which would develop the real facts in his case, that amendments will be allowed permitting the introduction of such testimony at any time before the testimony is closed. If such amendment makes it necessary for the opposite party to take further testimony, either on his direct examination or in rebuttal, he must be permitted to do so on a proper motion. The testimony here sought to be introduced would be material in determining the controversy between these parties, and, having been brought to the attention of the Office before the closing of the testimony, must be admitted.

The amendment offered, therefore, will be received, and Mr. Brown will be permitted to introduce testimony in support of the statements therein contained. Mr. Moore, on the other hand, if he desires to introduce further testimony in support of his case, will be permitted to do so.

The decision of the Examiner of Interferences is overruled.

EX PARTE SNYDER.

Decided July 25, 1882.

22 O. G., 1975.

1. AMENDMENTS OF APPLICATION WHEN FILED MUST CONFORM TO RULE 69.

An application cannot be amended at the will of the applicant before it is taken up for examination. Rule 69 attaches upon the filing of the application, which occurs when the applicant has completed his application, as provided in Rule 31. 2. AMENDMENT-RULE 47.

The case of McDougall (21 O. G., 1783) was not intended to open the door to the admission into an application once completed of any and all inventions made prior to the date of filing the original application.

3. SAME-SAME-MAY CORRECT BUT NOT CHANGE THE APPLICATION.

The applicant may be permitted, upon proper occasion, to supplement his description or drawing by restoring features of the original invention which were inadvertently omitted or incorrectly shown in the original disclosure through a clerical error of the draftsman or the unfamiliarity of the inventor with official forms. He cannot be permitted, however, to change and alter his application to represent a different invention.

APPEAL from Primary Examiner.

CREAMERS.

APPLICATION filed May 11, 1882.

Mr. S. J. Parker for applicant.

MARBLE, Commissioner:

This appeal is taken from the refusal of the Examiner to consider on the merits a substitute drawing and specification filed in the case on the ground that they present a different invention from that which was shown and described in the original specification and drawing, and are therefore inadmissible under Rule 69. There is no reason to doubt applicant's good faith in the matter, as his amendment was filed before the application was taken up for examination, and before, therefore, there was any adverse action upon his claims.

In his request for the return of the drawings applicant says:

The drawings are requested to be returned before examination is begun on them, as the drawings are not only informal but do not fully represent the invention.

The applicant excepts to the ruling of the Examiner primarily upon the ground that the practice is universal, as he represents, of allowing amendments at will before the application is taken up for examination. I am not aware of such a practice.

Rule 69 provides that

In original applications fication

*

all amendments of the model, drawings, of specimust conform to at least one of them as they were at the time of the

filing of the application.

This rule, then, attaches upon the filing of the application, which occurs when the applicant has completed his application, as provided in Rule 31. The application then receives its serial number, and is placed upon the files for examination. It is then an application in full standing, and thereafter amendments offered must conform with the rules governing the amendment of applications. The time when an application is taken up for examination is a variable and arbitrary date, and depends solely upon the state of business. It is further contended by the applicant that his amendment is admissible under Rule 47, as he has filed a supplemental oath to the effect that the subject-matter of his proposed amendment was a part of his invention, and was invented before he filed his original application.

The case of McDougall (21 O. G., 1783) was not intended to open the

door to the admission into an application once completed of any and all inventions made prior to the date of filing the original application. It was there expressly stated that the matter sought to be introduced by amendment under Rule 47 must be "a part of the original invention." The applicant will not be permitted, under the guise of an amendment, to introduce into his application a wholly different invention, nor to change the construction and operation of an invention which has been fully described and shown, nor to present a different or preferable form of his invention. He may be permitted, upon proper occasion, to supply suitable connections, to add a spring to a pawl, a handle to a crank, a belt to a pulley, teeth to a wheel, an outlet to a closed receptacle, or other manifest defects or omissions in features essential to the operation of the invention or to the completeness of the disclosure, and which were caused by a clerical error of the draftsman or the unfamiliarity of the inventor with official forms. These amendments, supplemental in their nature, may be made as completing the invention imperfectly shown and described. They add to the invention disclosed some part or feature which agrees with the construction and operation already presented. An applicant cannot be permitted, however, to erase the lines of his drawing and delineate anew the construction and operation of a part fully shown and described, or replace a well described but inferior arrangement by a preferable form of his invention.

Within the limits above mentioned, I am of the opinion that it is a just exercise of the discretionary power of the Commissioner to permit an applicant to include and give effect in his patent to the whole invention imperfectly presented in his original application.

the decision of McDougall:

As said iu

In other words, he ought to be allowed to particularly describe the whole of his invention, and to claim it in one application, if it can be done before the case has passed beyond the control of the Office, and within two years from the filing of the first papers in the case.

In this case I find that the applicant has departed materially in his proposed amendment from the invention presented in the original drawings and specification to such an extent that he has been obliged to substitute an entirely new drawing, every figure of which differs from the corresponding figure of the original drawing. The cans which in the original drawings were represented as having a flat bottom are now represented as having a V-shaped bottom, for a particular purpose. In the new drawing alternate cans are arranged further to the front, and abutting against the side of the vat, thereby dispensing with certain of the gates shown in the original drawing. Figure 2 shows as a new feature two of the cans with contracted sides. Figure 5 of the new drawing shows as an entirely new feature-the projection b. Figure 6 is a substitute device for drawing off the water from the vat, and, as the Examiner holds, forms proper subject-matter for a separate application. None of these changes or modified forms were referred to in the original ap

plication. In such a case as this it is apparent upon a comparison of the two drawings that the amendment is not for subject-matter which was a "part of the original invention" and "which might have been claimed in the original application." The purpose of the amendment is not to supplement the original application so far as to present the whole of the invention, but to alter certain features of the invention as origi. nally described and shown and substitute in place of other features of the invention clearly set forth in the original application different and preferable forms of the invention. These features are not a partof the original invention within the meaning of Rule 47 as construed in Er parte McDougall.

The action of the Examiner is sustained.

OPINION OF SECRETARY OF THE INTERIOR.

1882.

21 O. G., 1197.

1. SECTION 4887 OF THE REVISED STATUTES CONSTRUED.

Under section 4887 of the Revised Statutes the Commissioner of Patents should limit the duration of patents issued by him to the term of foreign patents previously issued for same invention.

2. RULE 39 OF PRACTICE IN THE UNITED STATES PATENT OFFICE.

To this end he may require of the applicant, under oath, all his knowledge upon the subject.

DEPARTMENT OF THE INTERIOR,

Washington, April 10, 1882.

SIR: I acknowledge the receipt of your letters of the 4th of January last and the 9th ultimo relative to the execution by the Patent Office of the provision of section 4887 of the Revised Statutes, which directs that every patent granted for an invention which has been previously patented in a foreign country shall be so limited as to expire at the same time with the foreign patent, or, if there be more than one, with the one having the shortest time to run, provided that in no case shall a patent be enforced more than seventeen years.

It is the policy of the law to have patents granted in this country for inventions previously patented in foreign countries expire in this country at the time at which they expire in the countries in which they have the shortest term to run. It is the duty of the department to give effect to this policy so far as it can so do.

It has been suggested that the Patent Office has not sufficient means of learning whether in fact inventions for which patents are claimed have been patented abroad. That is doubtless true; but still the Patent Office should use what means it has to that end. Now, it can search the conscience of the applicant and require from him all his knowledge on the subject. It is true he may falsify, but so may all witnesses, and yet we must in all controversies rely on sworn testimony. The testimony of the applicant here and the transcripts of patents in foreign countries filed in the Patent Office are, perhaps, the only means by which the Commissioner of Patents can learn the existence of a foreign patent and the date at which it was granted, and it does not seem wise to have the Office reject either of the modes of ascertaining the fact..