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.
