When letters patent are surrendered for the purpose of reissue,
they continue valid until the reissue takes place, and if the
reissue is refused they stand as if no application had been
made.
Whether, if the reissue be void, the patentee may fall back on
his original patent is not decided.
This was an action originally instituted in the Court of Common
Pleas for the County of Philadelphia by the defendant in error,
Andrew J. Culp, against Alonzo W. Allen, to recover half of the
profits made by the defendant from a certain
Page 166 U. S. 502
patent for a cop and bobbin winding machine, granted jointly to
Culp and Allen, and subsequently assigned to the defendant
Allen.
The alleged consideration for the transfer of plaintiff's half
interest was a promise on the part of the defendant that he would
divide with him the profits made by the sale of the device, of
which they were the joint owners, and also all damages which might
be recovered against infringers of the patent, the principal object
of the transfer being to enable the defendant to have title thereto
for the purpose of prosecuting these infringers. It seems that in
November, 1892, the defendant was advised by his counsel to apply
for a reissue in order to more fully protect the invention, and he
thereupon obtained the signature of the plaintiff, his co-inventor,
to the application, by renewing the promises he had already made.
Both parties joined in the surrender of their patent and in the
application for a reissue, which, however, was rejected on the
ground of unreasonable delay and also upon the further ground that
the new claims of the reissue had been anticipated by other
patents. Counsel for the defendant, who appears to have had
absolute control of the reissue proceedings, made no effort to meet
the formal objection of the examiner, and permitted the application
to lapse by his failure to prosecute it within two years. He also
neglected to take an appeal from the rejection of the
application.
In January, 1893, defendant informed the plaintiff that he did
not intend to take any further proceedings with reference to the
patent, and refused to fulfill his promise with reference to the
division of profits.
Thereafter, plaintiff began this suit to recover, under his
contract with the defendant, the half of the profits which the
latter had made out of the patent. The suit resulted in a verdict
for the plaintiff for $225. A new trial being refused, defendant
carried the case to the Supreme Court of Pennsylvania, by which the
judgment of the court of common pleas was affirmed, and the record
remitted to that court. 166 Penn.St. 286. Thereupon defendant sued
out this writ of error.
Page 166 U. S. 503
MR. JUSTICE BROWN, after stating the facts in the foregoing
language, delivered the opinion of the Court.
Upon the trial, the plaintiff having offered evidence in support
of his case, the defendant put in evidence a certified copy of the
application for a reissue of the letters patent in question, and
also a model of the tension device made and sold by the defendant.
The application for a reissue was made by Culp and Allen jointly,
who prayed that they might be allowed to surrender the patent, and
that the same might be reissued to Allen for the same invention
upon an amended specification. To the specification was appended
the usual affidavit to the effect that the deponents believed that
the patent surrendered was inoperative or invalid by reason of a
defective and ineffective specification, in that it failed to
properly describe the essential and important features of the
invention, and that such errors arose from inadvertency, accident,
and mistake, and without any fraudulent or deceptive intention. The
record also contained a communication from the examiner refusing
the reissue upon the ground of unreasonable delay, and also because
the new claims had been substantially anticipated by other
patents.
Thereupon the court charged the jury at the request of the
plaintiff, that
"where the reissue of letters patent is applied for, the
surrender takes effect only upon the issue of the amended patent,
and if the issue is refused, the original patent is returned to its
owner,"
and that
"the action of the Patent Office in refusing to reissue the
patent in suit did not affect its validity, and the contract
between the plaintiff and defendant in reference thereto was not
rendered invalid by such action."
In this connection, the court also refused to charge the
jury,
Page 166 U. S. 504
at the request of the defendant, that
"the joint act of the parties in surrendering the patent in
question and applying for a reissue thereof on November 18, 1892,
amounted to a cancellation of the patent, and, being followed by a
refusal on the part of the government to grant the reissue,
operated to end and determine the contract sued upon, as to any of
the patented machines made after such surrender."
The first statutory provision for the reissue of letters patent
made its appearance in the Act of July 3, 1832, repeated and
expanded in the thirteenth section of the patent act of 1836, which
provided generally that whenever any patent should be inoperative
or invalid by reason of a defective description or specification,
or by reason of the patentee's claiming more than he had a right
to, if the error arose from inadvertency, accident, or mistake, and
without any fraudulent or deceptive intention, it should be lawful
for the commissioner, upon the surrender to him of such patent, to
cause a new one to be issued for the same invention for the residue
of the period then unexpired for which the original patent was
granted, in accordance with the patentee's corrected description
and specification. This was but little more than putting in
statutory form a power which this Court had already held to exist,
prior to the act of 1832, in the Secretary of State in the absence
of a statute.
Grant v.
Raymond, 6 Pet. 218. But in construing this
statute, it was uniformly held by this Court that the surrender of
the patent for reissue was a legal cancellation and extinguishment
of it, that no rights could afterwards be asserted upon it, and
that suits pending for an infringement of such patent fell with its
surrender, because the foundation upon which they were begun no
longer existed.
Moffitt v.
Garr, 1 Black 273;
Reedy v.
Scott, 23 Wall. 352,
90 U. S. 364;
Peck v. Collins, 103 U. S. 660.
To obviate the injustice to inventors occasioned by the
peremptory requirement that the patent should be treated as
extinguished from the moment it was surrendered for a reissue, it
was provided in section 53 of the Patent Act of 1870, amending the
thirteenth section of the act of 1836, that upon the surrender of a
patent for that purpose, a reissue should be
Page 166 U. S. 505
granted "for the unexpired part of the term of the original
patent, the surrender of which shall take effect upon the reissue
of the amended patent." These words were obviously inserted for the
purpose of preventing the surrender taking immediate effect, and to
postpone its legal operation until the patent should be reissued.
When a patent is thus surrendered, there can be no doubt that is
continues to be a valid patent until it is reissued, when it
becomes inoperative; but if a reissue be refused, it is entirely
clear that the surrender never takes effect, and the patent stands
as if no application had ever been made for a reissue. Whether, if
the reissue be void, the patentee may fall back on his original
patent has never yet been decided by this Court, although the
question was raised in
Eby v. King, 158 U.
S. 366; but, as the original patent in that case was
also held to be void, it did not become necessary to express an
opinion upon the question. But if the original application for a
reissue be rejected, the original patent stands precisely as though
a reissue had never been applied for, unless, at least, the reissue
be refused upon some ground equally affecting the original patent.
If it were otherwise, every patentee who applies for a reissue
would do so at the peril not only of having his application
refused, but of losing what he already possessed. This was the very
contingency the act of 1870 was designed to provide against.
It is true that, in making his surrender, the patentee declares
that his patent is inoperative and invalid; but this is not
necessarily so for all purposes, but for the purpose for which he
desires to have it reissued. Such a patent might be inoperative and
invalid as against certain persons who had pirated the underlying
principle of the patent, and avoided infringing the exact language
of the claims, and yet be perfectly valid as against others, who
were making machines clearly covered by their language. Such was
the case here, since the defendant in his affidavit of defense
admitted that
"after the dissolution of said firm, each party, on his
individual account, continued the same business, deponent having
made some of said patented machines."
But, in addition to this, the court charged the jury that unless
the devices
Page 166 U. S. 506
made by the defendant were essentially the same as that covered
by the patent, there could be no recovery, and the verdict
necessarily established their identity.
There was no error in the ruling of the court below, and its
judgment is therefore
Affirmed.
