An inventor whose application disclosed, but did not claim, an
invention which is later patented to another is allowed by the
patent law two years after such patent issues within which to file
a second or divisional application claiming the invention, and this
period may not be restricted by the courts upon the ground that so
much delay may be prejudicial to public or private interests. P.
252 U. S. 134.
Rev.Stats. § 4886.
Such a second application is not to be regarded as an amendment
to the original application and, so subject to the one-year
limitation of Rev.Stats. § 4894. P.
252 U. S.
138.
Nor can the right to make it be deemed lost by laches or
abandonment merely because of a delay not exceeding the two years
allowed by the statute. P.
252 U. S. 139.
47 App.D.C. 428 reversed.
The case is stated in the opinion.
Page 252 U. S. 132
MR. JUSTICE CLARKE delivered the opinion of the Court.
In 1909, Mathew T. Chapman and Mark C. Chapman filed an
application for a patent on an "improvement in deep well pumps."
The mechanism involved was complicated, the specification intricate
and long, and the claims numbered 34. The application met with
unusual difficulties in the Patent Office, and, although it had
been regularly prosecuted, as required by law and the rules of the
Office, it was still pending without having been passed to patent
in 1915, when the controversy in this case arose.
In 1912, John A. Wintroath filed an application for a patent on
"new and useful improvements in well mechanism," which was also
elaborate and intricate, with 12 combination claims, but a patent
was issued upon it on November 25, 1913.
Almost 20 months later, on June 6, 1915, the Chapmans filed a
divisional application, in which the claims of the Wintroath patent
were copied and on this application such proceedings were had in
the Patent Office that, on March 24, 1916, an interference was
declared between it and the Wintroath patent.
The interference proceeding related to the combination of a
fluid-operated bearing supporting a downwardly extending shaft, and
auxiliary bearing means for sustaining any resultant downward or
upward thrust of such shaft. It is sufficiently described in Count
3 of the notice of interference:
Page 252 U. S. 133
"3. In deep well pumping mechanism, the combination with pump
means including a pump casing located beneath the surface of the
earth and rotary impeller means in said casing, of a downwardly
extending power shaft driven from above and adapted to drive said
impeller means, a fluid operated bearing cooperating to support
said shaft, said fluid operated bearing being located substantially
at the top of said shaft so that the shaft depends from the fluid
bearing, and by its own weight tends to draw itself into a
substantially straight vertical line, means for supplying fluid
under pressure to said fluid bearing independently of the action of
the pump means, auxiliary bearing means for sustaining any
resultant downward thrust of said power shaft, and auxiliary
bearing means for sustaining any resultant upward thrust of said
power shaft."
Wintroath admits that the invention thus in issue was clearly
disclosed in the parent application of the Chapmans, but he
contends that their divisional application claiming the discovery
should be denied because of their delay of nearly 20 months in
filing, after the publication of his patent, and the Chapmans,
while asserting that their parent application fully disclosed the
invention involved, admit that the combination of the Wintroath
patent was not specifically claimed in it.
Pursuant to notice and the rules of the Patent Office,
Wintroath, on April 27, 1916, filed a statement declaring that he
conceived the invention contained in the claims of his patent "on
or about the first of October, 1910," and thereupon, because this
date was subsequent to the Chapman filing date, March 10, 1909, the
Examiner of Interferences notified him that judgment on the record
would be entered against him unless he showed cause within 30 days
why such action should not be taken.
Within the rule day, Wintroath filed a motion for judgment in
his favor "on the record," claiming that conduct on the part of the
Chapmans was shown which estopped
Page 252 U. S. 134
them from making the claims involved in the interference and
which amounted to an abandonment of any rights in respect thereto
which they may once have had. The Chapmans contended that such a
motion for judgment could not properly be allowed "until an
opportunity had been granted for the introduction of evidence." But
the Examiner of Interferences, without hearing evidence, entered
judgment on the record in favor of Wintroath, and awarded priority
to him on the ground that the failure of the Chapmans to make
claims corresponding to the interference issue for more than one
year after the date of the patent to Wintroath constituted
equitable laches which estopped them from successfully making such
claims. This holding, based on the earlier decision by the court of
appeals in
Rowntree v. Sloan, 45 App.D.C. 207, was
affirmed by the Examiner in Chief, but was reversed by the
Commissioner of Patents, whose decision, in turn, was reversed by
the court of appeals in the judgment which we are reviewing.
In its decision, the court of appeals holds that an inventor
whose parent application discloses, but does not claim, an
invention which conflicts with that of a later unexpired patent may
file a second application making conflicting claims in order to
have the question of priority of invention between the two
determined in an interference proceeding, but only within one year
from the date of the patent, and that longer delay in filing
constitutes equitable laches which bars the later application. By
this holding, the court substitutes a one-year rule for a two-year
rule which had prevailed in the Patent Office for many years before
the
Rowntree decision, rendered in 1916, and the principal
reason given for this important change is that the second
application should be regarded as substantially an amendment to the
parent application, and that it would be inequitable to permit a
longer time for filing it than the one year allowed by
Rev.Stats.
Page 252 U. S. 135
§ 4894, for further prosecution of an application after office
action thereon.
The question presented for decision is, whether this conclusion
is justifiable and sound, and the answer must be found in the
statutes and rules of the Patent Office, made pursuant to statute,
prescribing the action necessary to be taken in order to obtain a
patent, for the whole subject is one of statutory origin and
regulation.
The statute, which is fundamental to all others in our patent
law (Rev.Stats. § 4886, as amended March 3, 1897, 29 Stat. 692, c.
391), provides with respect to the effect of a United States patent
upon the filing of a subsequent application for a patent on the
same discovery, which is all we are concerned with here, that any
discoverer of a patentable invention, not known or used by others
in this country before his invention or discovery, may file an
application for a patent upon it at any time within two years after
it may have been patented in this country. Such a prior patent is
in no sense a bar to the granting of a second patent for the same
invention to an earlier inventor, provided that his application is
filed not more than two years after the date of the conflicting
patent. The applicant may not be able to prove that he was the
first inventor, but the statute gives him two years in which to
claim that he was, and in which to secure the institution of an
interference proceeding in which the issue of priority between
himself and the patentee may be determined in a prescribed
manner.
This section, unless it has been modified by other statutes or
in effect by decisions of the courts, is plainly not reconcilable
with the decision of the court of appeals, and should rule it. Has
it been so modified?
The section of the Revised Statutes dealing with inventions
previously patented in a foreign country (Rev.Stats. § 4887, as
amended March 3, 1903, 32 Stat. 1225), provides that no patent
shall be granted on an
Page 252 U. S. 136
application for a patent if the invention has been patented in
this or any foreign country more than two years before the date of
the actual filing of the application in this country.
Section 4897 of the Revised Statutes (16 Stat. 202, c. 230, §
35), in dealing with the renewal of an application in case of
failure to pay the final fee within six months of notice that a
patent has been allowed, provides that another application may be
made for the invention, "the same as in the case of an original
application." But such application must be made within two years
after the allowance of the original application.
And in Rev.Stats. § 4920, providing for pleadings and proofs in
infringement suits, it is provided that, when properly pleaded and
noticed, the defendant may prove in defense that the patent
declared on had been patented prior to the plaintiff's supposed
invention "or more than two years prior to his application for a
patent therefor," and also that the subject matter of the patent
"had been in public use or on sale in this country for
more
than two years before the plaintiff's application for a
patent."
Thus, through all of these statutes runs the time limit of two
years for the filing of an application, there is no modification in
any of them of the like provision in Rev.Stats. § 4886, as amended,
and no distinction is made between an original and a later or a
divisional application with respect to this filing right.
A brief reference to the decisions will show that, until the
Rowntree case, the courts had left the filing right under
Rev.Stats. § 4886, as untouched as the statutes thus had left
it.
There is no suggestion in the record that the original
application of the Chapmans was not prosecuted strictly as required
by the statutes and the rules of the Patent Office, and therefore
it is settled their rights may not be denied or diminished on the
ground that such delay may
Page 252 U. S. 137
have been prejudicial to either public or private interests.
"A party seeking a right under the patent statutes may avail
himself of all their provisions, and the courts may not deny him
the benefit of a single one. These are questions not of natural,
but of purely statutory, right. Congress, instead of fixing
seventeen, had the power to fix thirty years as the life of a
patent. No court can disregard any statutory provisions in respect
to these matters on the ground that, in its judgment, they were
unwise or prejudicial to the interests of the public."
United States v. American Bell Telephone Co.,
167 U. S. 224,
167 U. S.
247.
In reissue cases, where there was no statutory time prescribed
for the making of an application for the correction of a patent,
and although unusual diligence is required in such cases, this
Court adopted the two-year rule as reasonable by analogy to the law
of public use before an application for a patent.
Mahn v.
Harwood, 112 U. S. 354,
112 U. S. 363;
Wollensak v. Reiher, 115 U. S. 96,
115 U. S.
101.
To this we must add that not only have later or divisional
applications not been dealt with in a hostile spirit by the courts,
but, on the contrary, designed as they are to secure the patent to
the first discoverer, they have been favored to the extent that,
where an invention clearly disclosed in an application, as in this
case, is not claimed therein, but is subsequently claimed in
another application, the original will be deemed a constructive
reduction of the invention to practice and the later one will be
given the filing date of the earlier, with all of its priority of
right.
Smith & Griggs Manufacturing Co. v. Sprague,
123 U. S. 249,
123 U. S. 250;
Von Recklinghausen v. Dempster, 34 App.D.C. 474,
476-477.
These, a few from many, suffice to show that, prior to the
Rowntree case, the decisions did not tend to modification
of the statutory two-year rule.
The court of appeals recognizes all this law as applicable to an
original application, but it finds warrant for
Page 252 U. S. 138
cutting the time limit to one year in the case of later
applications in three reasons,
viz., because it is
inequitable to allow so long a time as two years for filing a new
application, claiming a discovery for which a patent has issued,
because such a time allowance is contrary to public policy, as
unduly extending the patent monopoly if the new application should
prevail, and, finally and chiefly, as we have pointed out, because,
regarding such a later application as substantially an amendment to
the original application, the court discovers, in analogy to the
time allowed by statute for amendment to applications (Rev.Stats. §
4894), a reason for holding that the failure for more than one year
to make a later, in this case a divisional, application, amounts to
fatal laches.
However meritorious the first two of these grounds may seem to
be, they cannot prevail against the provisions of the statutes
(
United States v. American Bell Telephone Co., supra), and
the third does not seem to us persuasive because of the difference
in the kind of notice which is given to the applicant cant under
Rev.Stats. § 4894 and that given him when a patent is issued
conflicting with his application.
The one-year provision of Rev.Stats. § 4894, as amended March 3,
1897, c. 391, 29 Stat. 693, is that an applicant for a patent who
shall fail to prosecute his application within one year after
Patent Office action thereon, "of which notice shall have been
given" him, shall be regarded as having abandoned his application
unless the Commissioner of Patents shall be satisfied that such
delay was unavoidable. But when a conflict between inventions
disclosed in applications escapes the attention of the Patent
Office Examiners, Rev.Stats. § 4904, and a patent is issued, with
claims conflicting with the disclosures of a pending application,
the applicant receives only such notice of the conflict as he is
presumed to derive from the publication of the patent. In the one
case. the notice
Page 252 U. S. 139
is actual and specific, in the other, it is indefinite and
constructive only. When the great number of patents constantly
being issued is considered, many of them of a voluminous and
complicated character, such as we have in this case, with many and
variously worded claims, such an implied notice must necessarily be
precarious and indefinite to a degree which may well have been
thought to be a sufficient justification for allowing the longer
two-year period to inventors who must, at their peril, derive from
such notice their knowledge of any conflict with their
applications.
As has been pointed out, the Examiner of Interferences did not
permit the introduction of any evidence with respect to laches or
abandonment, and the court of appeals rests its judgment, as he
did, wholly upon the delay of the Chapmans in filing their
divisional application for more than one year after the Wintroath
patent was issued, as this appeared "on the face of the record."
While not intending to intimate that there may not be abandonment
which might bar an application within the two-year period allowed
for filing, yet, upon this discussion of the statutes and
decisions, we cannot doubt that, upon the case disclosed in this
record, the Chapmans were within their legal rights in filing their
divisional application at any time within two years after the
publication of the Wintroath patent, and therefore the judgment of
the court of appeals must be
Reversed.
MR. JUSTICE McREYNOLDS dissents.