Annotate this Case
112 U.S. 354 (1884)
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U.S. Supreme Court
Mahn Harwood, 112 U.S. 354 (1884)
Submitted October 16, 1884
Decided November 3, 1884
112 U.S. 354
A patent for ball covers issued to James A. Osgood May 21, 1872, reissued April 11, 1876, held invalid as to the new and enlarged claims, because there was unreasonable delay in applying for it, the only object of the reissue being to enlarge the claims.
The principles announced in the case of Miller v. The Brass Company, 104 U. S. 350, in reference to reissuing patents for the purpose of enlarging the claims, reiterated and explained.
It was not intended in that case to question the conclusiveness, in suits for infringement, of the decisions of the Commissioner of Patents on matters of fact necessary to be decided before issuing the patent except as the statute gives specific defenses; but those defenses are not the only ones that may be made; if it appears that the Commissioner has granted or reissued a patent without authority of law, this will be a good defense, as, where the thing patented is not a patentable invention, or where a reissue is for a different invention from that described in the original patent, &c.
A patent cannot be lawfully reissued for the mere purpose of enlarging the claim, unless there has been a clear mistake inadvertently committed in the wording of the claim, and the application for reissue is made within a reasonably short time. Whether there has been such an inadvertent mistake is, in general, a matter of fact for the Commissioner to decide; but whether the application is made in reasonable time is matter of law, which the court may determine by comparing the reissued patent with the original, and, if necessary, with the records in the Patent Office when presented by the record.
The application for a reissue in such cases must be made within a reasonable time, because the rights of the public, conceded by the original patent, are directly affected and violated by an enlargement of the claim, and the patentee's continued acquiescence in the public enjoyment of such right for an unreasonable time justly deprives him of all right to a reissue, and the Commissioner of lawful authority to grant it.
No invariable rule can be laid down as to what is a reasonable time within which the patentee must seek for the correction of a claim which he considers too narrow. It is for the court to judge in each case, and it will exercise proper liberality toward the patentee. But as the law charges him with notice of what his patent contains, he will beheld to reasonable diligence. By analogy to the rule as to the effect of public use before an application for a patent, a delay of more than two years would, in general, require special circumstances for its excuse.
As, in the present case, there was a delay of nearly four years, and the original patent was plain, simple, and free from obscurity, it was held that the delay in seeking a correction by reissue was unreasonable, and that the Commissioner had therefore no authority to grant it, and the patent was held invalid so far as the claims were broader than those in the original patent.
This was a suit in equity for alleged infringement of a patent praying for an accounting, for damages, and a perpetual injunction. Decree below for defendants, dismissing the bill, and appeal to this Court by plaintiff. The facts are stated in the opinion of the Court.