If the owner of a patent applies to the Patent Office for a
reissue of it and includes, among the claims in the application,
the same claims as those which were included in the old patent, and
the primary examiner rejects some of such claims.for want of
patentable novelty, by reference to prior patents, and allows
others, both old and new, the owner of the patent does not, by
taking no appeal and by abandoning his application for reissue,
hold the original patent (the return of which he procures from the
Patent Office) invalidated as to those of its claims which were
disallowed for want of patentable novelty by the primary examiner
in the proceeding for reissue; as the Patent Office, by the issue
of the original patent, had lost jurisdiction over it, and did not
regain it by the application for a reissue.
This was a question certified to this Court by the Circuit Court
of Appeals for the Sixth Circuit involving the authority of a
primary examiner of the Patent Office to reject as invalid claims
of an original patent which were incorporated in an application for
a reissue.
It appears that the McCormick Harvesting Machine Company filed a
bill in equity in the United States Circuit Court for the Northern
District of Ohio against C. Aultman
et al., and also one
against the Aultman-Miller Company, in each of
Page 169 U. S. 607
which it was sought to restrain the defendant from the future
infringement of two patents covering automatic twine binders for
harvesting machines. As the interests of the several defendants
were closely identified, the two cases were heard together.
The question certified involves only patent No. 159,506, issued
to Marquis L. Gorham, February 9, 1875, and the other patent sued
upon will therefore not be considered. The record shows that there
was filed in the Patent Office by the executrix of Gorham an
application for a reissue of this patent, in which were included
several claims of the original patent, as well as many new claims.
Upon consideration, the assistant or primary examiner decided that
claims 3, 10, 11, 25, and 26 of the original patent should be
rejected for want of patentable novelty, and reference was made to
prior patented devices. No appeal was taken from this decision, and
subsequently, in compliance with a request, the original patent was
returned to the plaintiff corporation, which had become the owner
thereof. Thereafter these suits were brought against the defendants
upon the original patent.
In the circuit court, it was decided that as the original claims
3, 10, 11, 25, and 26 had been determined by the examiner to be
invalid, and no appeal had been taken from that decision, but the
same had apparently been acquiesced in, the adverse action must be
regarded as fatal to the claims in question, and to the same extent
as if the rejection had been incident to the original application
for the patent. 58 F. 778.
Upon appeal, the circuit court of appeals decided that there was
no infringement by the defendants as to claims 25 and 26, but that
there was infringement of claims 3, 10, and 11 of the original
patent, unless it should be determined that they were invalidated
by their being rejected by the examiner upon an application for a
reissue of the same, and, desiring instruction upon this point, it
certified to this Court the following question:
"If the owner of a patent applies to the Patent Office for a
reissue of it, and includes among the claims in the application the
same claims as those which were included in
Page 169 U. S. 608
the old patent, and the primary examiner rejects some of such
claims for want of patentable novelty, by reference to prior
patents, and allows others, both old and new, does the owner of the
patent, by taking no appeal and by abandoning his application for
reissue, hold the original patent, the return of which he procures
from the Patent Office, invalidated as to those of its claims which
were disallowed for want of patentable novelty by the primary
examiner in the proceeding for reissue?"
MR. JUSTICE BROWN, after stating the facts in the foregoing
language, delivered the opinion of the court.
The validity of the claims in question depends upon the view
taken of the action of the examiner in rejecting them when
incorporated in an application for a reissue of the patent, upon
the ground that the claims were wanting in patentable novelty, as
evidenced by prior patents cited by him. No appeal was taken from
this decision, and the matter lay in abeyance for nearly two years
before the plaintiff corporation, which had in the meantime become
the owner of the patent, abandoned the application for a reissue,
and requested and obtained from the Patent Office the return of the
original patent.
It has been settled by repeated decisions of this Court that
when a patent has received the signature of the Secretary of the
Interior, countersigned by the Commissioner of Patents, and has had
affixed to it the seal of the Patent Office, it has passed beyond
the control and jurisdiction of that office, and is not subject to
be revoked or cancelled by the President or any other officer of
the government.
United States v. Schurz, 102 U.
S. 378;
United States v. Am. Bell
Telephone Co., 128
Page 169 U. S. 609
U.S. 315,
128 U. S. 363.
It has become the property of the patentee, and as such is entitled
to the same legal protection as other property.
Seymour v.
Osborne, 11 Wall. 516;
Cammeyer v. Newton,
94 U. S. 225;
United States v. Palmer, 128 U. S. 262,
128 U. S. 271,
citing
James v. Campbell, 104 U.
S. 356.
The only authority competent to set a patent aside, or to annul
it, or to correct it for any reason whatever, is vested in the
courts of the United States, and not in the department which issued
the patent.
Moore v. Robbins, 96 U. S.
530,
96 U. S. 533;
United States v. Am. Bell Telephone Co., 128 U.
S. 315,
128 U. S. 364;
Michigan Land & Lumber Co. v. Rust, 168 U.
S. 589,
168 U. S. 593.
And in this respect a patent for an invention stands in the same
position and is subject to the same limitations as a patent for a
grant of lands. The power to issue either one of these patents
comes from Congress, and is vested in the same department. In the
case of a patent for lands, it has been held that when one has
obtained a patent from the government, he cannot be called upon to
answer in regard to that patent before the officers of the Land
Department, and that the only way his title can be impeached is by
suit.
United States v.
Stone, 2 Wall. 525,
69 U. S. 535;
Iron Silver Mining Co. v. Campbell, 135 U.
S. 286;
Noble v. Union River Logging Railroad,
147 U. S. 165. But
a suit may be maintained by the United States to set aside a patent
for lands improperly issued by reason of mistake or fraud, but only
in the case where the government has a direct interest or is under
obligation respecting the relief invoked.
United States v.
Missouri, Kansas & Texas Railway, 141 U.
S. 358.
While a patent for a grant of lands is absolutely free from the
future control of the officers of the Land Department after it has
once issued, and jurisdiction over the matter cannot again be
obtained, this is subject to a single qualification in the case of
a patent for an invention where the patentee, his legal
representatives or assigns, find the original patent inoperative or
invalid by reason of a defective or insufficient specification, or
by reason of the patentee claiming as his invention or discovery
more than he had a right to claim as new (provided the error has
arisen through inadvertence,
Page 169 U. S. 610
accident, or mistake, and without fraudulent or deceptive
intention). In such case, a reissue will be granted by the
commissioner upon the surrender of the patent, but such surrender
takes effect only upon the issue of the amended patent. This
provision is embodied in Rev.Stat. § 4916, which also declares
that
"the specifications and claim in every such case shall be
subject to revision and restriction in the same manner as original
applications, . . . but no new matter shall be introduced into the
specifications."
The plain purpose of this section is to give the patentee an
opportunity to make valid and operative that which was before
invalid and inoperative -- invalid, because it claimed as new that
which had been previously invented or used by the public;
inoperative, because the specification was defective or
insufficient. New matter cannot be introduced, nor can the scope of
the invention be enlarged. All that the applicant can do is to so
amend his patent as to enable him to receive some practical and
beneficial result from his actual invention of which he has been
deprived by defects or omissions in the original patent. The object
of a patentee applying for a reissue is not to reopen the question
of the validity of the original patent, but to rectify any error
which may have been found to have arisen from his inadvertence or
mistake. But until the amended patent shall have been issued, the
original stand precisely as if a reissue had never been applied for
(
Allen v. Culp, 166 U. S. 501,
166 U. S.
505), and must be returned to the owner upon demand. The
fact that the rules of the Patent Office require that the original
patent should be placed in its custody for the purpose of
surrendering it upon the issue of an amended patent gives that
department no right to the possession of it upon the rejection of
the application for a reissue. If the patentee abandoned his
application for a reissue, he is entitled to a return of his
original patent precisely as it stood when such application was
made, and the Patent Office has no greater authority to mutilate it
by rejecting any of its claims than it has to cancel the entire
patent.
In
Peck v. Collins, 103 U. S. 660, an
application for reissue made under the laws in force in 1866 was
held to absolutely
Page 169 U. S. 611
extinguish the original patent. Subsequent to that time, the law
of 1870, of which Rev.Stat. § 4916, forms a pat , was passed.
Mr. Justice Bradley, in discussing the clause in that section which
declares that the surrender "shall take effect upon the issue of
the amended patent," said:
"What may be the effect of this provision in cases where a
reissue is refused it is not necessary now to decide. Possibly it
may be to enable the applicant to have a return of his original
patent if a reissue is refused on some formal or other ground which
does not affect the original claim. But if his title to the
invention is disputed and adjudged against him, it would still seem
that the effect of such a decision should be as fatal to his
original patent as to his right to a reissue."
This same question was considered, but not decided, in
Eby
v. King, 158 U. S. 366, and
in
Allen v. Culp, 166 U. S. 501,
166 U. S. 505,
it was held that, if the original application for a reissue be
rejected, the original patent stands precisely as though a reissue
had never been applied for; but the effect of the refusal of the
reissue upon some ground equally affecting the original patent was
not considered.
In neither of these cases was this Court called upon to decide
the question which has been certified, and the expression of
opinion in
Peck v. Collins, relied upon by the defendants,
must be considered merely a
dictum, and lacking the force
of a judicial determination.
In the case under consideration, the examiner acted upon the
application as if it were a new proceeding, and dealt with it as
the evidence before him seemed to warrant, but his action in
rejecting some of the claims which had been repeated from the
original patent did not affect that patent. It is true that it was
within his power to reject any claims contained in the application
for a reissue which he judged to be invalid, whether contained in
the original patent or not. It is also true that the reasons given
for the rejection of such claims might apply equally to the same
claims contained in the original patent, but with respect to such
claims, he was
functus officio. His opinion thereon was
but his personal opinion, and, however persuasive it might be, did
not oust the
Page 169 U. S. 612
jurisdiction of any court to which the owner might apply for an
adjudication of his rights, and, as the examiner had no authority
to affect the claims of the original patent, no appeal was
necessary from his decision.
Had the original patent been procured by fraud or deception, it
would have been the duty of the Commissioner of Patents to have had
the matter referred to the Attorney General with the recommendation
that a suit be instituted to cancel the patent; but to attempt to
cancel a patent upon an application for reissue when the first
patent is considered invalid by the examiner would be to deprive
the applicant of his property without due process of law, and would
be in fact an invasion of the judicial branch of the government by
the executive.
Our conclusion upon the whole case is that, upon the issue of
the original patent, the Patent Office had no power to revoke,
cancel, or annul it. It had lost jurisdiction over it, and did not
regain such jurisdiction by the application for a reissue. Upon
application's being made for such reissue, the Patent Office was
authorized to deal with all its claims, the originals as well as
those inserted first in the application, and might declare them to
be invalid, but such action would not affect the claims of the
original patent, which remained in full force if the application
for a reissue were rejected or abandoned.
The validity of the claims, so far as their merits are
concerned, has been sustained by the circuit court of appeals, and,
as the original patent must stand precisely as though a reissue had
never been applied for,
The question certified to this Court must be answered in the
negative.
