Commissioner of Patents v. Whiteley
71 U.S. 522 (1866)

Annotate this Case

U.S. Supreme Court

Commissioner of Patents v. Whiteley, 71 U.S. 4 Wall. 522 522 (1866)

Commissioner of Patents v. Whiteley

71 U.S. (4 Wall.) 522

ERROR TO THE SUPREME COURT

OF THE DISTRICT OF COLUMBIA

Syllabus

1. Where an applicant for reissue of a patent has done all in his power to make his application effectual -- has filed his application with the acting Commissioner and paid the requisite amount of fees -- the application is to be considered as properly before the Commissioner.

2. Where a statute directed the Commissioner of Patents to grant a reissue of patents in certain cases to "assignees," it is the duty of the Commissioner to decide whether the applicant is an assignee with such an interest as entitled him to a reissue within the meaning of the statutory provision on the subject; and if he has thoroughly examined and decided that the applicant is not so, a mandamus will not lie commanding him to refer the application to "the proper examiner or otherwise examine or cause the same to be examined according to law." The preliminary question was within the scope of his authority. If the mandamus had ordered the Commissioner to allow an appeal, the order under which it issued would have been held correct.

3. Mandamus cannot be made to perform the functions of a writ of error.

4. Semble that an applicant for a reissue of a patent under the thirteenth section of the Patent Act of 1836, which allows a reissue in certain cases to a patentee "and in case of his death or any assignment by him made of the original patent" vests a similar right "in his executors, administrators, or assignees," must be an assignee of the whole interest in the patent, and not the assignee of a sectional interest only. At least where the Commissioner of Patents had thus decided, this Court, on the questions being raised in connection with other questions, whose decision rendered a decision on it unnecessary, say that "as at present advised they were not prepared to say that the decision of the Commissioner was not correct."

Whiteley, the defendant in error, was the assignee of a sectional interest in a patent granted to Hains, on the 4th of September, 1855, for an improvement in mowing machines. He held, by virtue of several assignments, all the territory embraced in the patent, except the state of Ohio and the northern half of the State of Illinois; and in all the territory, except as just mentioned, was assignee of all the rights of the patentee.

In 1863, he applied to the Commissioner of Patents for a reissue of the patent, according to the thirteenth section of the Patent Act of 1836, a section which enacts that:

Page 71 U. S. 523

"Whenever any patent &c., shall be inoperative or invalid, by reason of a defective or insufficient description or specification &c., if the error has or shall have arisen by inadvertency, accident, or mistake &c., it shall be lawful for the Commissioner, upon the surrender to him of such patent &c., to cause a new patent to be issued to the said inventor 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. And in case of his death, or any assignment by him made of the original patent, a similar right shall vest in his executors, administrators, or assignees."

The assignees for the State of Ohio, and of the northern half of Illinois, did not join in the application.

The Commissioner of Patents, after a laborious investigation of the law and comparison of various sections of the patent acts, decided that the applicant, not being the assignee of the whole interest in the patent, was not entitled to the reissue asked for.

Whiteley took no appeal from the Commissioner's decision to the "board of examiners," but setting forth that his application for reissue was filed with the acting Commissioner, and the refusal, petitioned the Supreme Court of the District of Columbia for a mandamus to send the application to an examiner to be acted upon by him as though made by the patentee.

The Commissioner, in reply -- premising that for the reason that the proposed applicant was not such an assignee as the law contemplates, and that the application, therefore, was not filed, or entered upon the books of the office, and never had been, and that the fees required on such application, which had been paid by the relator to the chief clerk of the office, on the presentation of said application, had not been placed to the credit of the patent fund, but remain in the hands of the chief clerk, personally, and subject to the order of the relator -- replied, among other reasons, against the mandamus:

1. That the object of it was to carry by appeal a preliminary question solely cognizable by him, to the Supreme Court of the District, and that such a mandamus would be nugatory.

Page 71 U. S. 524

2. That he had decided rightly in rejecting the application, the relator not coming within the meaning of the term "assignee," as contemplated in the thirteenth section of the act of 1836. And in support of this view he submitted as part of his answer a full law argument, which now came up in the record.

The Supreme Court of the District granted the mandamus,

"commanding the Commissioner of Patents to refer said application to the proper examiner, or otherwise examine or cause the same to be examined according to law."

The case was now here on writ of error, brought by the Commissioner of Patents, to remove the proceeding to this Court. Two principal questions were raised:

1. Supposing the decision of the Commissioner to have been erroneous, and that the assignee of a sectional interest in a patent was entitled to a reissue, did a mandamus such as that above mentioned lie to correct the decision?

2. Did the Commissioner, in deciding as he did that the applicant as owner of but a sectional interest was not entitled to a reissue, decide correctly?

In order to judge of the first question it is necessary to state:

1. That the Patent Act of 1836, by its seventh section, provides that on the filing of any application for a patent, "The Commissioner shall make or cause to be made an examination of the alleged new invention or discovery," and if on such examination it does not appear that the same had been invented or discovered by any other person &c., he shall issue the patent. But if, on the contrary, he shall decide that the applicant was not the original and first inventor &c., and the applicant shall insist on his claim,

"such applicant may on appeal have the decision of a board of examiners to be composed of three disinterested persons who shall be appointed by the Secretary of state for that purpose,"

which board shall have power "to reverse the decision of the Commissioner, either in whole or in part."

2. That by an act of 1837, in addition to the former act, it is provided that in cases of application to the Commissioner

Page 71 U. S. 525

for reissue, the applicant, if dissatisfied with the decision of that officer, "shall have the same remedy and be entitled to the same privileges and proceedings as are provided by law in the case of original applications."

Page 71 U. S. 530

MR. JUSTICE SWAYNE delivered the opinion of the Court.

This case was brought here by a writ of error to the Supreme Court of the District of Columbia.

On the 4th of September, 1855, a patent was issued to Jonathan Haines for an improvement in mowing machines.

On the 22d of November, 1856, Haines sold and assigned to Ball, Aultman & Co., an exclusive right to the invention and patent, within the limits of the state of Ohio.

On the 13th of April, 1858, upon the surrender of the original patent by Haines, and upon his application, without the assent of Ball, Aultman & Co., a reissue of the patent was granted to him.

On the 15th of January, 1860, Jonathan Haines sold and assigned to his brother, Ansel Haines, one undivided third part of his interest in the patent.

On the 25th of January, 1860, Jonathan and Ansel Haines sold and granted to Isaac and Wm. C. Hawley the exclusive right to the invention and patent in certain counties in the State of Illinois.

On the 10th of April, 1863, Ansel Haines reassigned to Jonathan Haines all his interest in the patent.

On the 17th of April, 1863, Jonathan Haines sold and assigned all his interest in the patent to Andrew Whiteley, the defendant in error. Haines, at the same time, delivered

Page 71 U. S. 531

the patent to Whiteley, in order that he might surrender it and procure another reissue.

Ball, Aultman & Co. were applied to, but declined to concur. It does not appear that the Hawleys were advised upon the subject.

On the 25th of January, 1863, Whiteley filed his application for a reissue in the Patent Office, in conformity with the provisions of the thirteenth section of the act of 1836.

The Commissioner of Patents declined to entertain the application, upon the ground that the applicant was only the grantee of an exclusive sectional interest, and not of the entire patent. He also declined to allow an appeal to be taken from this decision. An application was thereupon made to the Supreme Court of the District of Columbia for a writ of mandamus. That court awarded a peremptory writ, commanding the Commissioner "to refer said application to the proper examiner, or otherwise examine or cause the same to be examined according to law." This writ of error is prosecuted to reverse that order. Did the court err in making it?

The thirteenth section of the act of 1836 declares that, under the circumstances therein stated,

"it shall be lawful for the Commissioner, upon the surrender to him of such patent, . . . to cause a new patent to be issued to the said inventor, 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 specifications, and in case of his death or any assignment by him made of the original patent, a similar right shall vest in his executors, administrators, or assigns."

The seventh section of this act provides that on the filing of any application for a patent and the payment of the duty required, "the Commissioner shall make, or cause to be made, an examination of the alleged new invention or discovery" &c.

The eighth section of the act of 1837 provides, in regard

Page 71 U. S. 532

to applications for the reissue of patents, and the decisions of the Commissioner, that

"in all such cases the applicant, if dissatisfied with such decision, shall have the same remedies, and be entitled to the benefit of the same privileges and proceedings as are provided by law in case of original applications for patents."

This renders it necessary to recur to the act of 1836, and to consider carefully its provisions touching the applications to which it relates.

Both acts should be liberally construed to meet the wise and beneficent object of the legislature. Patentees are a meritorious class, and all the aid and protection which the law allows, this Court will cheerfully give them.

If the Commissioner should hold that a party applying originally for a patent "was not the original and first inventor," and should decide against him upon that ground, the applicant could undoubtedly take an appeal from his decision. The Commissioner having reached this conclusion, would be under no obligation to go further and examine any other question arising in the case, and it would not be necessary to the right of appeal that he should do so.

Here an assignee applied for the reissue of a patent. It was clearly competent for the Commissioner, and it was his duty, to decide whether the applicant was an assignee at all, and if so whether he was an assignee with such an interest as entitled him to a reissue within the meaning of the statutory provision upon the subject. The latter question is an important one. It is as yet unsettled, and awaits an authoritative determination.

The Commissioner says in his answer to the rule that he could not examine the application because none had been filed in the Patent Office.

This position is untenable. It is averred in the petition, and not denied in the answer -- and therefore as in other like cases of pleading, to be taken as conceded -- that the application was filed with the acting Commissioner. It is also admitted in the answer that the requisite amount of fees had been paid by the relator, but, it is added, that it

Page 71 U. S. 533

had not been placed to the credit of the office, and was in the hands of the chief clerk, subject to the relator's order.

The relator had done all in his power to make his application effectual, and had a right to consider it properly before the Commissioner.

It was so. If it was not, a mandamus would clearly lie to compel the Commissioner to receive it. It was his first duty to receive the application, whatever he might do subsequently. Without this initial step there could be no examination, and, indeed, no rightful knowledge of the subject on his part. Examination and the exercise of judgment, with their proper fruit, were to follow, and they did follow.

The Commissioner found the question, whether the assignee was such a one as the law entitled to a reissue, lying at the threshold of his duties? It required an answer before he could proceed further. His decision was against the appellant. His examination of the subject was thorough, and his conclusion is supported by an able and elaborate argument. It was made a part of his reply to the rule, and is found in the record.

From this decision, whether right or wrong, the relator had a right, under the statute, to appeal.

If the mandamus had ordered the Commissioner to allow the appeal, we should have held the order under which it was issued to be correct. But the order was that he should proceed to examine the application. That he had already done. The preliminary question which he decided was as much within the scope of his authority as any other which could arise. Having resolved it in the negative, there was no necessity for him to look further into the case. Entertaining such views, it would have been idle to do so. The question was vital to the application, and its resolution was fatal, so far as he was concerned. Only a reversal by the tribunal of appeal could revive it, and cast upon him the duty of further examination.

The principles of law relating to the remedy by mandamus are well settled.

Page 71 U. S. 534

It lies where there is a refusal to perform a ministerial act involving no exercise of judgment or discretion.

It lies also where the exercise of judgment and discretion are involved and the officer refuses to decide, provided that if he decided, the aggrieved party could have his decision reviewed by another tribunal.

It is applicable only in these two classes of cases. It cannot be made to perform the functions of a writ of error.

In Decatur v. Paulding,* referring to an act of Congress under which the relator in that case claimed a pension which had been refused her by the Secretary of the Navy, this Court said:

"If a suit should come before this Court which involved the construction of any of these laws, the court certainly would not be bound to adopt the construction given by any head of a department; and if they supposed his decision to be wrong, they would of course so pronounce their judgment. But their construction of a law must be given in a case in which they have jurisdiction, and in which it is their duty to interpret the act of Congress in order to ascertain the rights of the parties in the cause before them. The Court could not entertain an appeal from the decision of one of the secretaries, nor reverse his judgment in any case where the law authorizes him to exercise discretion or judgment; nor can it by mandamus act directly upon the officer, and guide or control his judgment or discretion in the matters committed to his care in the ordinary discharge of his official duties. . . . The interference of courts with the performance of the ordinary duties of the executive department of the government would be productive of nothing but mischief, and we are quite satisfied that such a power was never intended to be given to them."

This case, as presented to the court below, was within neither of the categories above mentioned. The Court therefore erred in making the order to which the Commissioner objected.

The main question passed upon by the Commissioner, and

Page 71 U. S. 535

which was supposed to underlie this case, is not before us for consideration. If it were, as at present advised, we are not prepared to say that the decision of the Commissioner was not correct.

The order of the court below awarding the mandamus is reversed with costs, and it is ordered by this Court that the application of the relator be by that court overruled and dismissed.

* 39 U. S. 14 Pet. 515.

Official Supreme Court caselaw is only found in the print version of the United States Reports. Justia caselaw is provided for general informational purposes only, and may not reflect current legal developments, verdicts or settlements. We make no warranties or guarantees about the accuracy, completeness, or adequacy of the information contained on this site or information linked to from this site. Please check official sources.