tain a specific statement of any and all matter relied upon for this purpose. Service of noand filing of rea 190. Any person desiring to oppose an extension must 1887-183. serve his notice of opposition, and file his reasons therefor, tice of opposition at least ten days before the day fixed for the closing of the sons. testimony; but parties who have not entered formal opposition in time to put in testimony may, at the discretion of the Commissioner, be permitted to appear on the day of hearing and make argument upon the record in opposition to the grant of the extension. In such case good cause for the neglect to make formal opposition must be shown. Rules for tak ,191. In case of opposition to the extension of a patent 1887-182. both parties may take testimony, each giving reasonable ing testimony. notice to the other of the time and place of taking the same. The testimony will be taken according to the rules hereinbefore prescribed. 1887-184. Testimony ex 192. In contested cases no testimony will be received, unless by consent, which has been taken within thirty days cluded. next after the filing of the petition for the extension. (See Rule 154 (4).) 1887-185. Service of no mony. 193. Service of notice to take testimony must be made as provided in Rule 154 (2). Where notice to take testimony tice to take testihas already been given to an opponent, and a new opponent subsequently gives notice of his intention to oppose, the examination need not be postponed, but notice thereof may be given to such subsequent opponent by mail or by tele- New opponent. graph. But this rule does not apply to ex parte examinations, nor to those of which notice is not given before service of notice of opposition. 194. In the notice of application for extension a day will be fixed for the closing of testimony, and the day of hearing will also be named. Applications for postponement of the day of hearing, or for further time for taking testimony, must be made and supported in accordance with the rules to be observed in other contested cases; but no postponement will be granted whereby any risk may be incurred of delaying the decision until the expiration of the patent. Upon the closing of the testimony the application will be referred without delay to the examiner in charge of the class to which the invention belongs for the report required by law; and such report shall be made not less than five days before the day of hearing. As this report is intended for the information of the Commissioner, neither the parties nor 1887-186. 4925. Rev. Stat., sec. Rev. Stat., sec. 4926. Reference to examiner. their attorneys will be permitted to make oral arguments Arguments. before the examiner. In contested cases briefs are deemed Briefs. desirable, and these should always be filed at least five days before the day of hearing. 1887-187. Rev. Stat., secs. 4917, 4922. Grounds, form, and effect. 1887-188. Different kinds of disclaimers. 1887-189. Definition. 1887-190. Rev. Stat., sec. 1902. Qualification of caveator. DISCLAIMERS. 195. Whenever, through inadvertence, accident, or mistake, and without any fraudulent or deceptive intention, a patentee has claimed as his invention or discovery more than he had a right to claim as new, his patent shall bo valid for all that part which is truly and justly his own, pro vided the same is a material or substantial part of the thing patented; and any such patentee, his heirs or assigns, whether of the whole or any sectional interest therein, may, on payment of the fee required by law (ten dollars), make disclaimer of such parts of the thing patented as he or they shall not choose to claim or to hold by virtue of the patent or assignment, stating therein the extent of his interest in such patent. Such disclaimer shall be in writing, attested by one or more witnesses, and recorded in the Patent Office; and it shall thereafter be considered as part of the original specification to the extent of the interest possessed by the claimant and by those claiming under him after the record thereof. But no such disclaimer shall affect any action pending at the time of filing the same, except as to the question of unreasonable neglect or delay in filing it. 196. Such disclaimer must be distinguished from those which are embodied in original or reissue applications, as first filed or subsequently amended, referring to matter shown or described, but to which the disclaimant does not choose to claim title, and also from those made to avoid the continuance of an interference. Such disclaimers must be signed by the applicant in person and must be duly witnessed, and require no fee. (See Rule 107. For forms of disclaimers, see Appendix, Forms 27, 28.) CAVEATS. 197. A caveat, under the patent law, is a notice given to the Patent Office of the caveator's claim as inventor, in order to prevent the grant of a patent to another person for the same alleged invention upon an application filed during the life of the caveat without notice to the caveator. 198. Any citizen of the United States who has made a new invention or discovery and desires further time to mature the same may, on payment of a fee of ten dollars, file in the Patent Office a caveat setting forth the object and the distinguishing characteristics of the invention, and praying protection of his right until he shall have matured his invention. Such caveat shall be filed in the confidential secrecy. Renewal. archives of the office and preserved in secrecy, and shall be Preserved operative for the term of one year from the filing thereof. 199. The caveat may be renewed, on request in writing, 1887-197. by the payment of a second caveat fee of ten dollars, and it will continue in force for one year from the date of the payment of such second fee. Subsequent renewals may be made with like effect. If a caveat be not renewed, it will still be preserved in the secret archives of the office. in 1887-191. Resident alien. 4902. 200. An alien has the same privilege, if he has resided in the United States one year next preceding the filing of his Rev. Stat., sec. caveat, and has made oath of his intention to become a citizen. Requisites. 201. The caveat must comprise a specification, oath, and, 1887-192. when the nature of the case admits of it, a drawing, and, like an application for a patent, must be limited to a single invention or improvement. Rev. Stat., sec. 202. The same particularity of description is not required 1887-193. Particularity in a caveat as in an application for a patent; but the caveat of description. must set forth the object of the invention and the distin- 4902. guishing characteristics thereof, and it should be sufficiently precise to enable the office to judge whether there is a probable interference when a subsequent application is filed for a similar invention. If, upon examination, a caveat be found defective in this respect, amendment will be required. Amendment. Without compliance with Rules 198, 201, 202, and 204, the caveator will not be entitled to the notice provided for in Rule 205. 1887-194. Oath. 4902. 203. The oath of the caveator must set forth that he is a citizen of the United States, or, if he be an alien, that he Rev. Stat. sec has resided for one year next preceding within the United States, and has made oath of his intention to become a citizen thereof, and that he believes himself the original and first inventor of the art, machine, or improvement set forth in his caveat. 204. The caveat should be accompanied, when practicable, by full and accurate drawings, separate from the specification, well executed on tracing muslin or paper, that may be folded. (See Rule 51.) 1887-195. Drawings. 1887-196. Rev. Stat., sec. 205. If at any time within one year after the filing or renewal of a caveat another person shall file an application 4902. for an invention which would in any manner interfere with the invention set forth in such caveat, then such application will be suspended and notice thereof will be sent to Notice of interthe person filing the caveat. If the caveator shall file a complete application within the time prescribed, and if the invention be found patentable, he will be entitled to an interference with fering application. caveator. the previous application, for the purpose of proving priority of invention, and obtaining the patent if he be adjudged the prior inventor. The caveator, if he would avail himself of Application by his caveat, must file his application within three months from the expiration of the time regularly required for the transmission to him of the notice deposited in the post-office at Washington. The day on which the time for filing expires will be mentioned in the notice or indorsement thereon. 206. The caveator will not be entitled to notice of any ap application pend-plication pending at the time of filing his caveat, nor of any expiration of one application filed after the expiration of one year from the date of the filing or renewal thereof. 1887-197. No notice of ing or filed after year. 1887-198. Effect of caveat. 1887-199. Assignment. 1887-200. Withdrawal. Copies. 1887-201. 4898. 207. A caveat confers no rights and affords no protection except as to notice of an interfering application filed during its life, giving the caveator the opportunity of proving priority of invention if he so desires. It may be used as evidence in contests, as provided in Rule 154 (6). 208. There is no provision of law making the caveat assignable, although the alleged invention therein set forth is assignable, and the caveat may be used as means of identifying the invention transferred in an assignment. 209. Caveat papers can not be withdrawn from the office after they have been filed; but copies of the papers may be obtained at the usual rates by the caveator or any person duly authorized by him. Additional papers, if containing new matter, must be filed as a separate caveat, with another fee. (For caveat forms, see Appendix, Forms 10, 16.) ASSIGNMENTS. 210. Every patent or any interest therein shall be assignRev. Stat., sec. able in law by an instrument in writing; and the patentee Assignability or his assigns or legal representatives may, in like manner, grant and convey an exclusive right under the patent to the whole or any specified part of the United States. of patents. 1887-202. In whom may be vested. Assignees. Grantees. 211. Interests in patents may be vested in assignees, in grantees of exclusive sectional rights, in mortgagees, and in licensees. (1) An assignee is a transferee of the whole interest of the original patent or of an undivided part of such whole interest, extending to every portion of the United States. The assignment must be written or printed and duly signed. (2) A grantee acquires by the grant the exclusive right, under the patent, to make and use, and to grant to others the right to make and use, the thing patented within and throughout some specified part of the United States, excluding the patentee there- (3) A mortgage must be written or printed and be duly Mortgages. (4) A licensee takes an interest less than or different Licensees. written, or printed, and if written or printed, must be duly signed. Rev. Stat., sec. Record. 212. An assignment, grant, or conveyance of a patent will 1887-203. be void as against any subsequent purchaser or mortgagee 4898. for a valuable consideration without notice unless recorded in the Patent Office within three months from the date thereof. Record 213. No instrument will be recorded which does not, in 1887-204. the judgment of the Commissioner, amount to an assignment, grant, mortgage, lien, incumbrance, or license, or which does not affect the title of the patent or invention to which it relates. Such instrument should identify the patent by date and number; or, if the invention be unpatented, the name of the inventor, the serial number, and date of the application should be stated. Conditional as 214. Assignments which are made conditional on the per- 1887-205. formance of certain stipulations, as the payment of money, signments. if recorded in the office, are regarded as absolute assignments, until canceled with the written consent of both parties, or by the decree of a competent court. The office has no means for determining whether such conditions have been fulfilled. Issue to as 215. In every case where it is desired that the patent shall 1887-206. issue to an assignee, the assignment must be recorded in signee. the Patent Office at a date not later than the day on which the final fee is paid. (See Rule 26.) The date of the record,Date of receipt is the date of the receipt of the assignment at the office. is date of record. Receipt, record, and return of as signments. 216. The receipt of assignments is generally acknowledged 1887-207. by the office. They are recorded in regular order as promptly as possible, and then transmitted to the persons entitled to (For form of assignment, see Appendix, Forms them. 37-42.) OFFICE FEES. 1887-208. 217. Nearly all the fees payable to the Patent Office are positively required by law to be paid in advance—that is, vance. upon making application for any action by the office for which a fee is payable. For the sake of uniformity and con- 4893. venience, the remaining fees will be required to be paid in the same manner. Rev. Stat., sec. ་ |