When an applicant for a patent admits that the invention shown
in his application was made at a date subsequent to the date upon
which another application for the same invention was filed, and by
amendment of his application adopts the prior applicant's claims,
he thereby concedes the priority of the other's invention, its
utility, and the sufficiency of the claims.
In such a case, the Commissioner of Patents cannot be required
by mandamus to declare an interference.
Under Rev.Stats., § 4904, the duty of the Commissioner to
declare an interference arises only when, in the exercise of his
judgment upon the facts presented, he is of opinion that a senior
application will be interfered with by a junior one; the mere fact
that the junior application covers the same ground, or that the
junior applicant asserts an interference, is not enough to require
the Commissioner to act.
The judicial remedy for determining priority of invention is by
suit in equity between the parties, not by mandamus against the
Commissioner in an attempt to control the administrative discretion
conferred upon him by Rev.Stats., § 4904.
45 App.D.C. 185 reversed.
Page 244 U. S. 2
This writ is directed to a judgment of the Court of Appeals of
the District of Columbia which affirmed a judgment of the Supreme
Court of the District of Columbia in mandamus commanding the
Commissioner of Patents
"to declare or direct to be declared an interference between the
application of William E. Fowler, Sr., filed May 22, 1915, for
Improvements in Car Floor Construction, and the application for a
similar invention"
of an unnamed applicant "pursuant to the statute and rules in
such cases made and provided."
The judgment was rendered upon motion of petitioner's attorney
upon the petition, rule to show cause, and answer. It was affirmed
by the Court of Appeals.
As the Fowler Car Company and Ewing, Commissioner of Patents,
were petitioner and respondent, respectively, in the court below,
we shall so designate them here.
The facts as stated by the petition are as follows:
William E. Fowler, Sr., was the first and original inventor of
certain new and useful improvements in car floor construction.
On May 22, 1915, he applied for a patent in the usual form and
manner, and his application was accepted, and became known and
designated as application Serial No. 29794.
On May 19, 1915, he duly assigned his right, title, and interest
in the invention to the Fowler Car Company, which company appointed
Charles C. Linthicum its attorney.
On November 18, 1915, the Commissioner of Patents wrote to
Linthicum stating that "there is another application pending,
claiming substantially the same invention as that defined" in
certain of the claims which were set out. He further stated:
"In order to determine whether it is necessary to declare an
interference, you are requested to obtain a statement from Fowler
setting forth when he conceived the invention defined in the
above-quoted claims, when he disclosed it to others, and when he
reduced
Page 244 U. S. 3
it to practice. This statement will not be made a part of the
record, and will be returned to you."
Fowler replied that he had conceived the subject matter of the
claim quoted in the Commissioner's letter on or about April 16,
1915, disclosed the same to others and made drawings on or about
the same date, but had not reduced the same to practice by
constructing any full-sized devices.
On November 26, 1915, Linthicum filed an amendment to Fowler's
application in which all of the claims suggested by the
Commissioner were inserted. Of these claims, Linthicum said:
"It is thought that these claims appear in a co-pending
application, and they are inserted at this time with the request
that, if such claims do appear in a co-pending application, an
interference be declared."
To this communication, the Commissioner replied as follows:
"Sir: Enclosed please find the statement of William Fowler, Sr.,
made in response to the request in my letter of November 18,
1915."
"The dates of invention claimed by Fowler are subsequent by
several months to the filing date of the application of the other
party. The other party's case will be passed to issue as soon as
possible, and, when patented, will be cited as a reference against
such claims in Fowler's application as it may be found to
anticipate. An interference will not be declared."
Section 483, Rev.Stats., provides:
"The Commissioner of Patents, subject to the approval of the
Secretary of the Interior, may, from time to time, establish
regulations, not inconsistent with law, for the conduct of
proceedings in the Patent Office."
Pursuant to this authority, regulations known as "Rules of
Practice in the United States Patent Office" have been established
by the Commissioner, by and with the approval of the Secretary of
the Interior, and now govern
Page 244 U. S. 4
the declaration of interferences between pending conflicting
applications, and have the force and effect of law, binding as well
upon the Commissioner as upon the applicant for patents.
It is further alleged that it clearly appears from the
correspondence recited and under the statute and rules that an
interference exists between the Fowler application and that of the
applicant, unknown to petitioner, which applications disclose and
claim the same patentable invention, and it is the duty of the
Commissioner to declare an interference and to call upon each
applicant for the sworn preliminary statement required by rule
110.
That, if the unknown applicant receive a patent and thereafter
petitioner's (Fowler's) application is put in interference with it,
and petitioner afterwards be awarded priority over the unknown
applicant and receive a patent, in order to get rid of the menace
of the outstanding patent to such unknown applicant, petitioner
will have to file a bill in equity under the provisions of §
4918, Rev.Stats., for the cancellation of such patent, or the owner
of the outstanding patent may file such bill against petitioner,
all of which possibility of litigation may be prevented if the
Commissioner be required to discharge his plain duty under the
statute and rules and declare an interference when the rights of
both parties are in the application stage, and before either party
receives a patent. That conduct of the Commissioner is a matter of
public concern, and, for over a quarter of a century, his
predecessors have, without exception, regarded the interference
rules as imposing upon them the legal duty of declaring an
interference under the circumstances detailed. And petitioner is
advised and believes that, unless the Commissioner be restrained, a
patent in due course will be issued to the unknown applicant, and
petitioner is without remedy unless the court, by writ of mandamus,
shall interpose in its behalf.
Page 244 U. S. 5
Mandamus was prayed.
A rule to show cause was issued and the Commissioner's action
stayed until the determination of the cause.
The Commissioner, in his answer, admitted the filing of the
applications as alleged and the correspondence with Linthicum, but
denied the legal conclusion drawn by petitioner therefrom. He
alleged that an interference, as defined by the rules of the Patent
Office, is a proceeding for the purpose of determining the question
of priority of invention, and that, when an applicant informs the
office that the invention shown in his application was made at a
date which was subsequent to the date upon which another
application for the same invention was filed, the statute does not
require that an interference be established between his application
and the prior application. That, in asking the later applicant to
inform the office of the date of its invention, the Commissioner
was only asking for information upon which he might form, as
required by § 4904, Rev.Stats.Comp.Stat. 1913, § 9449, an
opinion whether a situation existed where the statute required that
the later application should be put into interference with the
earlier application, and that the rules do not require or
contemplate a declaration of interference where it is known that
the later applicant made his invention subsequently to the filing
of the earlier application; in other words, they do not contemplate
the declaration of an interference except where there is a possible
conflict in the dates of invention.
The answer further denied that petitioner had shown injury or
threatened injury, and alleged that the only injury averred in the
petition was that, if the application of petitioner be put in
interference with the patent granted upon the other application,
and if priority should be awarded to petitioner and a patent
granted to it, a bill in equity under § 4918, Rev.Stats.,
would be necessary to get rid of the menace of the outstanding
patent. That, the date of Fowler's invention being subsequent to
the filing
Page 244 U. S. 6
date of the other party, there would be no ground of awarding
priority to Fowler. That, even if interference should be
declared,
"a litigation to be conducted between the application owned by
the petitioner and the patent issued to the other party would be no
longer or more expensive than a litigation to be conducted between
the two applications. No suit could be brought under § 4918 of
the Revised Statutes, either by or against this petitioner, unless
it were proved that Fowler was the first inventor and a patent
issued to him; but, as above stated, the date upon which Fowler
states he conceived the invention is subsequent to the date upon
which the other application was filed."
There was detail of the business of the Patent Office and of the
inconvenience to its administration if the right insisted upon by
petitioner were allowed.
A discharge of the rule was prayed.
MR. JUSTICE McKENNA, after stating the case as above, delivered
the opinion of the court:
The case is not in broad compass. It depends upon a few simple
elements. Section 4904, Rev.Stats., provides:
"Whenever an application is made for a patent which,
in the
opinion of the Commissioner, would interfere with any pending
application, or with an unexpired patent, he shall give notice
thereof to the applicants, or applicant and patentee, as the case
may be, and shall direct the primary examiner to proceed to
determine the question
Page 244 U. S. 7
of priority of invention. And the Commissioner may issue a
patent to the party who is adjudged the prior inventor, unless the
adverse party appeals from the decision of the primary examiner, or
of the board of examiners-in-chief, as the case may be, within such
time, not less than twenty days, as the Commissioner shall
prescribe."
The duty prescribed by this section and the other duties of the
Commissioner, it was provided (§ 483, Rev.Stats.), might be
regulated by rules established by the Commissioner, subject to the
approval of the Secretary of the Interior. And rules were
established. They define an interference to be a proceeding
instituted for the purpose of determining the question of priority
of invention between two or more parties claiming the same
patentable invention (Rule 93), and provide that an interference
shall be declared between two or more original applications
containing conflicting claims (Rule 94). Before the declaration of
an interference, all preliminary questions must be settled by the
primary examiner, the issue clearly defined, and the claims put in
such condition that they will not require alteration (Rule 95).
Whenever the claims of the co-pending applications differ in
phraseology, they must be brought to expression substantially in
the same language, and claims may be suggested to the applicants,
and, if not followed, the invention covered by them shall be
considered as disclaimed. The declaration of an interference will
not be delayed by the failure of a party to put his claim in
condition for allowance (Rule 96). Each party to the interference
will be required to file a concise statement, under oath, showing
(1) the date of original conception of his invention, (2) the date
upon which a drawing of it was made, (3) the date of its disclosure
to others, (4) the date of its reduction to practice, (5) the
extent of its use, and (6) the date and number of any foreign
application. If a drawing has not been made or the invention has
not been reduced to practice or disclosed
Page 244 U. S. 8
to others or used to any extent, the statement must specifically
disclose these facts (Rule 110).
Priority of invention is necessarily the essential thing, and,
to determine it, interference proceedings are provided. But are
they considered as a matter of course on the mere assertion or
appearance of a conflict? Upon the answer to the question the
controversy here turns. The Commissioner contends for a negative
answer and supports the contention by the language of § 4904,
reinforced by the assertion that there is no necessity for
proceedings to determine what is already apparent, as in the
pending case, by the admission of respondent. The mere fact of
asserted antagonism does not put the proceedings in motion, is the
contention. There must be the precedent and superintending judgment
of the Commissioner. The law requires, it is said, his opinion to
be exercised upon the effect of a conflict in applications, and
such, indeed, is the language of § 4904. It provides that
"whenever an application is made for a patent which,
in the
opinion of the Commissioner,
would interfere with any
pending application, . . . he shall give notice thereof . . .
and shall direct the primary examiner to proceed to determine the
question of priority of invention."
In opposition to this view, petitioner replies that the only
fact upon which the Commissioner is to exercise an opinion is the
fact of the conflict in the applications, and, that fact
ascertained, the duty is imperative upon the Commissioner to
declare an interference. "Interference," it is said, "is a question
of fact; it exists or it does not exist. If it exists, then
priority must be determined in the way pointed out by the statute
and rules." Other conditions than priority in time determine
priority of invention, it is insisted; that the rules of the Patent
Office and the motions for which they provide contemplate such
conditions, and that, in twenty-five years of practice under
them,
"the question of interference, in fact the question
Page 244 U. S. 9
of seniority of the parties, the patentability of the claim to
one or the other, and a number of other questions,
became inter
partes, and it often happens that the interference is
dissolved because of mistake in declaring it, or the burden of
proof shifted on the ground that the senior party is not entitled
to his original filing date as his effective date for the reason
that he did not disclose the invention in his case as originally
filed, or that his application discloses an inoperative embodiment
of the invention, or that he was not entitled to make the claims,
or that the junior party had an earlier filed case disclosing the
invention, or that the issues as formed did not apply to the
structures of the two parties."
The result of the practice is declared to be that it
"provides a judgment of record based solely upon an
ex
parte consideration by the Commissioner, and affords each of
the parties an opportunity to contest the right of the other party
to a judgment."
If there are such possibilities in some interferences, they are
precluded in petitioner's case. Seven claims of a prior application
were adduced by the Commissioner as making a conflict with the
invention claimed by petitioner. The latter, through its attorney,
adopted six of the claims and directed that they be inserted in its
application. It did not intimate the existence of any circumstances
which would overcome the priority of invention as determined by the
difference in times of the conceptions of the contending
applicants.
The conceptions were thus established to be identical, and that
that of Fowler did not come to him until some months after the
filing of the other application. And it is to be observed that the
priority was complete. There was not only the precedent conception,
but there was its expression in claims, and that it was practical,
a useful gift to the world, petitioner concedes by adopting the
claims. There were therefore all of the elements of a completed
Page 244 U. S. 10
invention -- one perfected before the filing of petitioner's
application -- all that the preliminary statement required by Rule
110 could disclose.
This, then, was the situation presented to the Commissioner.
There was nothing shown to change it, there is nothing alleged in
the petition for mandamus to change it, and there is only urged
that an experience of twenty-five years has demonstrated that, in
interference proceedings, circumstances may be shown that determine
against the date of filing or the claim of invention.
If it could be conceded that there is antagonism between §
4904 and the rules, the former must prevail.
United States ex
rel. Steinmetz v. Allen, 192 U. S. 543,
192 U. S. 565.
But there is no antagonism. The former provides that
"whenever an application is made for a patent which,
in the
opinion of the Commissioner, would interfere with any pending
application . . . , he . . . shall direct the primary examiner to
proceed to determine the question of priority of invention."
The section therefore commits to the opinion (judgment) of the
Commissioner the effect of an application upon a pending one --
whether it will interfere with a pending one; something more,
therefore, than the fact of two applications -- something more than
the mere assertion of a claim. The assertion must be, in the
opinion of the Commissioner, an interference with another. And it
is this other that is first in regard, not to be questioned except
at the instance of the Commissioner by an exercise of judgment upon
the circumstances. And there is no defeat of ultimate rights; there
may be postponement of their assertion remitted to a suit in equity
under § 4918.
But, anterior to such relief, petitioner contends that
"there is a fundamental and basic right of opposition on the
part of any applicant, whether junior or senior, to prevent the
wrongful grant of a patent to his opponent."
It is further contended that the declaration of an interference
and the motions which are permitted to be made
Page 244 U. S. 11
under the rules,
"provide a judgment of record based solely upon an
ex
parte consideration by the Commissioner, and affords each of
the parties an opportunity to contest the right of the other party
to a judgment."
There indeed seems to be a less personal right claimed -- the
right of opposition in the interest of the public, displacing the
superintendency of the Commissioner constituted by the law. It is
to be remembered that the law gives the Commissioner both initial
and final power. It is he who is to cause the examination of an
asserted invention or discovery and to judge of its utility and
importance; [
Footnote 1] it is
he who is to judge (be of opinion) whether an application will
interfere with a pending one; [
Footnote 2] and it is he who, after an interference is
declared and proceedings had, is the final arbiter of its only
controversy -- priority of invention. [
Footnote 3]
The contentions of petitioner put these powers out of view --
put out of view the fact that the so-called "judgment of record"
is, as the action of the Commissioner may be said to be, but a
matter of administration. A suit in equity may follow and be
instituted by either party, and even in it, nothing can be
determined but priority of invention.
"There is but one issue of fact in an interference suit. That
issue relates to the dates wherein the interfering matter was
respectively invented by the interfering inventors. If the
complainant's invention is the older, the defendant's interfering
claim is void for want of novelty. And the complainant's
interfering claim is void for want of novelty if the defendant's
invention is found to antedate the other."
Walker, Patents, § 317, 3d ed.
Such suit therefore is the judicial remedy the law provides.
Section 4904 concerns and regulates the administration of the
Patent Office, and the utility of the discretion
Page 244 U. S. 12
conferred upon the Commissioner is demonstrated by his answer in
this case.
Judgment reversed and case remanded with instructions to
reverse the judgment of the Supreme Court of the District of
Columbia, and direct it to discharge the rule and dismiss the
petition.
[
Footnote 1]
Section 4893, Rev.Stats.;
Butterworth v. United States,
112 U. S. 50.
[
Footnote 2]
Section 4904.
[
Footnote 3]
Section 4910.
