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PAGE Kentucky (cont.)

$ 4081..536, 556 § 4085.. 538

4086.. 538 88 4115–4120 521 § 4123

521 Louisiana.

1886, Act No. 59. 398 1888, Act No. 77. 398 1910, Act No. 3.

403 1910, Act No. 6.

138 Code of Practice, Art. 571...

403 Missouri.

Constitution, 1865, Art.
4, $ 32.

Constitution, 1875, Art.
4, § 28.

194 Art. 12, $ 12.

194 Art. 12, $ 14.

194 1872, Laws, p. 69. 194 1887, Laws,

194 Rev. Stats. 1909, § 2081 202

8 3173 194

3185 194 3193 194

3211 194 Montana.

Rev. Codes, $$ 4409–

Codes, 1907, 88 2284,

491 6115.

490 8 6870.

490 Nebraska.

1895, Laws, pp. 269, 277 330 Rev. Stats. 1913, § 3438 328

8 6300 516 New Jersey.

Constitution, Art. IV,
§ 7, par. 11..

260 1846, Laws, p. 17. 260 1910, Laws, p. 58. 260 1911, Laws, p. 29. 260

p. 15.

New Jersey (cont.)

1911, Laws, c. 95... 171

1912, Laws, p. 235. 258 New York

1913, Laws, c. 816. . 148, 154 1914, Laws, c. 41...148,

154, 209, 224 1914, Laws, c. 316. .148,

154, 209, 224 Consolidated Laws, c. 67

209, 256 General Business Law, $ 340...

472 Penal Law, $ 580, subd. 6 472 Ohio.

1911, Act May 31.... 203
Ohio Laws 103, pp. 405,

205 Gen. Code, $$ 1465–37 to 1465-70.

203 § 12,247.

205 Pennsylvania.

1873, Laws, p. 20. ... 588 1911, Laws, p. 599. 588 1911, Laws, p.

607. 586

586 $$ 7-9, 15.

587 South Dakota.

1911, Laws, c. 207, $ 10 621

1913, Laws, c. 304..... 626 Tennessee. Constitution.

516 1909, Acts, c. 479, $ 4.. 348 Texas.

Rev. Stats. 1911, Art.

34 Washington. Constitution.

591 Art. 11, § 10.

579 Art. 12, § 18.

579 1911, Laws, c. 74. 616 1911, Laws, c. 117. ..578

1915, Laws, p. 1. ...591, 597 Wisconsin.

1913, Laws, c. 663..... 605

§ 4.










No. 721. Argued April 17, 1917.-Decided May 7, 1917.

When an applicant for a patent admits that the invention shown in his.

application was made at a date subsequent to the date upon which another application for the same invention was filed, and by amendment of his application adopts the prior applicant's claims, he thereby concedes the priority of the other's invention, its utility and the

sufficiency of the claims. In such a case the Commissioner of Patents can not be required by

mandamus to declare an interference. Under Rev. Stats., § 4904, the duty of the Commissioner to declare an

interference arises only when, in the exercise of his judgment upon the facts presented, he is of opinion that a senior application will be interfered with by a junior one; the mere fact that the junior application covers the same ground or that the junior applicant asserts an

interference is not enough to require the Commissioner to act. The judicial remedy for determining priority of invention is by suit in

equity between the parties, not by mandamus against the Commissioner in an attempt to control the administrative discretion con

ferred upon him by Rev. Stats., $ 4904. 45 App. D. C. 185, reversed.

Statement of the Case.

244 U.S.

This writ is directed to a judgment of the Court of Appeals of the District of Columbia which affirmed a judgment of the Supreme Court of the District of Columbia in mandamus commanding the Commissioner of Patents "to declare or direct to be declared an interference between the application of William E. Fowler, Sr., filed May 22, 1915, for Improvements in Car Floor Construction, and the application for a similar invention" of an unnamed applicant "pursuant to the statute and rules in such cases made and provided.”

The judgment was rendered upon motion of petitioner's attorney upon the petition, rule to show cause and answer. It was affirmed by the Court of Appeals.

As the Fowler Car Company and Ewing, Commissioner of Patents, were petitioner and respondent, respectively, in the court below, we shall so designate them here.

The facts as stated by the petition are as follows:

William E. Fowler, Sr., was the first and original inventor of certain new and useful improvements in car floor construction.

On May 22, 1915, he applied for a patent in the usual form and manner and his application was accepted and became known and designated as application serial No. 29794.

On May 19, 1915, he duly assigned his right, title and interest in the invention to the Fowler Car Company, which company appointed Charles C. Linthicum its attorney.

On November 18, 1915, the Commissioner of Patents wrote to Linthicum stating that “there is another application pending, claiming substantially the same invention as that defined" in certain of the claims which were set out. He further stated: “In order to determine whether it is necessary to declare an interference you are requested to obtain a statement from Fowler setting forth when he conceived the invention defined in the above quoted claims, when he disclosed it to others, and when he re

244 U.S.

Statement of the Case.

duced it to practice. This statement will not be made a part of the record and will be returned to you.'

Fowler replied that he had conceived the subject-matter of the claim quoted in the Commissioner's letter on or about April 16, 1915, disclosed the same to others and made drawings on or about the same date but had not reduced the same to practice by constructing any fullsized devices.

On November 23, 1915, Linthicum filed an amendment to Fowler's application in which all of the claims suggested by the Commissioner were inserted. Of these claims Linthicum said: “It is thought that these claims appear in a co-pending application and they are inserted at this time with the request that, if such claims do appear in a co-pending application an interference be declared.”

To this communication the Commissioner replied as follows:

“Sir: Enclosed please find the statement of William E. Fowler, Sr., made in response to the request in my letter of November 18, 1915.

"The dates of invention claimed by Fowler are subsequent by several months to the filing date of the application of the other party. The other party's case will be passed to issue as soon as possible and when patented will be cited as a reference against such claims in Fowler's application as it may be found to anticipate. An interference will not be declared."

Section 483, Rev. Stats., provides: “The Commissioner of Patents, subject to the approval of the Secretary of the Interior, may from time to time establish regulations, not inconsistent with law, for the conduct of proceedings in the Patent-Office.”

Pursuant to this authority regulations known as “Rules of Practice in the United States Patent Office” have been established by the Commissioner by and with the approval of the Secretary of the Interior and now govern

Statement of the Case.

244 U.S.

the declaration of interferences between pending conflicting applications and have the force and effect of law, binding as well upon the Commissioner as upon the applicant for patents.

It is further alleged that it clearly appears from the correspondence recited and under the statute and rules that an interference exists between the Fowler application and that of the applicant unknown to petitioner, which applications disclose and claim the same patentable invention and it is the duty of the Commissioner to declare an interference and to call upon each applicant for the sworn preliminary statement required by Rule 110.

That if the unknown applicant receive a patent and thereafter petitioner's (Fowler's) application is put in interference with it and petitioner afterwards be awarded priority over the unknown applicant and receive a patent, in order to get rid of the menace of the outstanding patent to such unknown applicant petitioner will have to file a bill in equity under the provisions of $ 4918, Rev. Stats., for the cancellation of such patent or the owner of the outstanding patent may file such bill against petitioner, all of which possibility of litigation may be prevented if the Commissioner be required to discharge his plain duty under the statute and rules and declare an interference when the rights of both parties are in the application stage and before either party receives a patent. That conduct of the Commissioner is a matter of public concern and for over a quarter of a century his predecessors have, without exception, regarded the interference rules as imposing upon them the legal duty of declaring an interference under the circumstances detailed. And petitioner is advised and believes that unless the Commissioner be restrained a patent in due course will be issued to the unknown applicant and petitioner is without remedy unless the court by writ of mandamus shall interpose in its behalf.

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