In the matter of the application of John W. Oochranfor letters patent /or improvement in Breech-loading Guns.The question presented for decision In this case is one of great importance. I have considered it with care, for, I am advised that there are many pases pending and constantly arisina in the office the determination of which may be affected by my decision. Cocliran filed this application January 11,1859. It was rejected February 8,1859. On February 20,1860, he filed the following paper, and received M of his original fee: To th e Commissioner of Patents: Sie : I hereby withdraw my application for a patent, for fl rearms, now in your oflice, and request that twenty dollars may be refunded to me, agreeably to an act of Congress in sueh cases made and provided. J. W. Gochean. Washington, February 20,1860. Applicant did nothing further until May 6,1868, or more than eight years afterward, when he flled a new application, now under consideration. It contained three claims, all of which were rejected by the primary examiner. Upon appeal to the Board of Examiners-in-Chief the case was remanded to the primary examiner forinquiry, and report as to the nnmber of patents Granted after the withdrawal, and before the Becond application in wliich flic same invention, in other combinations, or as part of the descriptive rouponhis report, it appeared that the devices specified in the first and seeond claims were found in some eighteen different patents, granted within the period named, but that no patent was found showing the devices specified in the third claim; the board affirmed the decision of tlie primary examiner in rejecting the first and second claims, and reversed his decision m to the third claim, which they allowed. An appeal has been taken to mefrom the decision of the board in refusing to allow the first and second claims. The question before me may pe thus stated: Can an inventor withdraw his application, make no effort to renew it for eight years, daring which time the subject-matter of the invention has been Incorporated into the substance of many subsequent inventions, ajidthen file a new application and obtain a patent, which, to support the novelty of the invention, shall relate baek to the iirst aPHalnyconflicting opiniont bave been entertained npon this question. The ftractice of the office has not always been consistent. Patents may be ound doubtless, that have teen granted under circumstances similar to those of the present application, and similar cases may also be lo.ind where patents Have been refused. This is in part owing to the facs i..rt,of twenty examiners, any one may pass a patent for issue, and the -1; c.sion,if favorable to the patentee, is not the suoject of appeal. The decision of the appellate Judges and of the courts upon this subject have not been more uniform than those of the office. Authorities upon this question, relating to patent law, may readily be obtained upon both 81 Prima facie, it would seem, that an application, deliberately withdrawn, was abandoned and could no longer form a foundation for a second application; and that, if aucli second application was made, it must be entirely independent and could derive no support from the first. That, if public use intervened' between the withdrawal and the second application, and for more than two years before the filing of the latter, the patent, if granted, "TWs'wasttie opinion of the judge who tried the case of Godfrey m. Eames on cireuit. In this case the first application was withdrawn and the second TJnon'tke trial1 appeared tliat the invention had Been in public use for more than two years before the second application, but for less than two yThebCourt ehrSd the jury that the continuity of the application was broken by tlie withdrawal, and that the public use must date back from the 86Tne Supreme Court (Godfrey vs: Eames, 1. Wall, 311) held that this was error liut it is important to note the grounds of this decision. The Court says : " In our Judgment, if a party choose to withdraw his application for a patent and pay the forfeit, intending, at the time of such withdrawal, to file a new petition, and he accordingly does so, the two petitioners are to be considered as parts of the same transaction, and both as constituting one continuous application, within the meaning of the law. " The question of the continuity of the application should have been eub- mit 18*0 DviousThat'the courts do not mean to declare that the two petitions constitute one continuous application, no matter what mj- be the interval between them, and that the fact of the filing of th. second p.tition is evidence that tlie intention to do io existed when the first was withdrawn; for tlievsavth.it there is still a question of continuity to be ubmitted to the'jury and this obviously means, that the jury are to judge of the question of the intention of the patentee in withdrawing the first application, and whether th- interval is o long between the applications as \o destroy the continuity; or to retiut the presumption that upon withdrawing the fl rst application, the patentee intended to file the second The case of Godfrey vs. Eames, was a suit at law. If it had been m equity, the Question of intention and of continuity would liave been submitted to the judge to be determined like any other question of fact On an anplication for the issue of a patent, it is the duty of the Commissioner lo filcide all questions both of law and fact, which goto establish ffie right or the absence of right in the application to a patent, Marcy tw.Trotter, DliePquesttons of the intention of i.he applicant and of the continuity of the application are therefore submitted to the commissioner for his judgment. precisely as they could be submitted to a Court of Equity. Tne foundation of this judgement is, I think well set lorth by Judge Dunlapin Simpson ex narte, In 1K1. He says :'a rejected applicant who has withdrawn his application may renew it. provided the renewed application is made within a reasonable time after the withdrawal ol the fee. Nothing is more common than to submit the question of reasonable time or reasonable diligence as a question of fact or adjudication, 'ihe diftlculty of eoming to a conclusion, does not obviate the necessity of a decision, and no judge is justified in evading the responsibility of deciding any point WAmona tile analogies which might be referred to, is the ordinary case of the failure to present a draft for payment witlun a reasonable time after it becomes due The drawee fails and the drawer is discharged from ability, no time is fixed for the presentation of the draft but the/law declares that it must be present -d within a reasonable time, and submits to a court or jury the q uestion as to what is or what is not reasonable. I am satisfied that, in every case like the present, the Commissioner must thoritv In the case of Simpson ex parte, above cited, the learned judge says "'Section 7, of the aefof 1839, fires what Is a reasonable time. There is no reason why a renewed application should have more than two years allowed it, computing the time from the date of the withdrawal. Botficlasses of applications, original and renewed, are applications lor patents, and come within tlie letter and spirit of the statute." This view is enforced by the fact that, by tlie act of March S, 1861, the applicant is required to complete and prepare his application for examination within two years after the filing of the petition, and that, in default, of such preparation, the application shall be regarded as abandoned. These provisions of the patent law seems to establish a quasi statute of limitations, which may safely form a guide for toe Commissioner m determining the question of reasonable diligence. It must be remembered that withdrawn applications were those which had been but once rejected. The inventor might nave insisted upon a second examinationmk'ht have appealed to the Commissioner, to one of the Justices of the Circuit Oourt. He didnone of these things: while claiming to havebeen rejected by the fault of the (Mice he took no sintjle step to correct the action of whieh he complained. He withdrew his application, waited eight years, an'l now applies a'ain. Meanwhile his device has been copied in various forms in no less than eighteen subsequent patents. If his application takes date from the lilins of the new petition, he is clearly anticipated by these patents. If it is to date baeR to the tiling of the first petition, these subsequent patentees will be inf rinnrcrs. tt is not a sufficient answer to say that; the first re-leetion was Improperly made, andtliat therefore all the evils which ii.svf ollow tlie irrantinif of his patent at the present time, arc the fault ol iheofflc. and must be chanted to the Commissioner. This is a fallacy. If the Office was yi fault in tlie original rejection, the law provided a mode of correcting tnc fault, which it was as mueh 'the duty of tne applicant to pursue, as it was to file his oriKinal application The law neither points out nor reeognizes such a mode of correction as a withdrawal of the application for the purpose of endeavor-in" under some new Commissioner, to obtain reversal of tlie sentence. If the patentee refuses to adopt the remedy given by the law, and.substitutes o ne of his own makiuij, he does so at His peril; and, wlien lip, a.pnl * agai \ it is as mueh the duty or the Commissioner to proteet subsequent oomijidein-ventors and the innoeent public againts his laches, as to nrotect him against the errors of former examiners. The remarks of Chief Justiee Carter-, in Goodyear and Bacon vs. Hills, 3 Fisher, 134, in commenting upon the Cummings patent ave strongly in point. It is to b e noted that alui.) ugli in tms ease tne seeond application nadbeen made eight years after the first, yet, tliat the first lad never been withdrawn. Judge Carter says: " The law makers have admonished inventors and the public, that if before an application they suffer more than two years to elapse in the use of the invention, they shall absolutely forfeit all right and title thereto. It is true the legislative admonition relates to the period preceding the application. But, it appears to me, as far as the Court ean be guided by its own judgment, that the inventor is left under the dominion of common law principles, in regard to any laches by which the application may be followed. Is it the law beeause an inventor flies his application, which is refused by the Office, he may sleep upon his rights indefinitely, andtliat at any period in his lifetime, or tliat of hisrepresentatives the application maybe revived, as against the public? , 1 think not. Prima fade, I think he woulcl have to show a reason why he should be so permitted. The judgment nf condemnation by the Office advertises to the country, at least, that? he stands in no lr.-tter position than before the application was made. The country is advised by the deliberation of the only tribunal provided by law for the ascertainment, at that stage of the invention, of his ritfht, that ho has none. More especially is he himself advised ol tliat fact for he is a party to the proceedings, and more immediately damnified bythe rejection of tlie application. That rejection would at least be rewarded in the' logie of equity as a notice to him to proceed with diligence to traverse and reverse the judgment of the Office.". In Rich vs Lippincott, 2 Fisher, 1, Mr. Justiee.Grier says, in his ehargeto the jury "If you find that the application of 1836, renewed in 1S37, was for tins same subject-matter now patented, and if such applieation was not withdrawn by Fitzgerald, but the delay was caused by tlie conduct oi the Commissioner of Patents in refusing to tcrant the patent lor the same invention since patent-ed, then Fitzgerald should not be eonsiilered to have abandoned his invention to the public. On the contrary, if you believe that the application of 18.J6 and 1837 was not for the same invention with that patented.and.wastherclore, refused by the Commissioner, or was withdrawn and abandoned by the applicant, aiid continued so until Enos Wilder got up an application for the present patent and, in the meanwhile, the invention had gone into public use for more tin i two years, tlion you will find this point for the defendants. S " also Bell vs. Daniels, 1 "Fisher, 372. Mr. Justice Fisher, who now sits, in anneals from this Office to the Supreme Court of this District, has, in the late easa of Rowley i's. Mason, made a de ciaion , the reasoning of whieh logically leads to the conclusion which I lave a rj-ived hi the present case. It the applicant hud been put into interference with one ot the eighteen Inventors who have shown hid devise I" ilieii' patents, Rttd hiM attempted to Move an invea-iWfttulo oiKhiyaam bntoreand dropped,- he Would, under;to authority erf; tliat CUM, belwa to liftYe abandoned Mo Invention! A f onion must tM?)9 ! so, when we fl nd that instead of using diligence to obtain a patent, he deliber-ately and formally withdrew his application from the Office and gave no sign oflife for eight years, while eighteen patents were granted more or less aflect-ing his rights. While it need not be asserted that the present applicant was setting a trap for these subsequent patents, it is obvious that, to sustain the present application, would be to offer strong inducements to others to set such traps hereafter. Tne decision of the Board of Examiners in Chief is affirmed. (Signed) S. S. FISHEK, Commissioner June 9, 1869
This article was originally published with the title "Important Decision about Rejected Cases"