reason of the patentee claiming as his own invention. or discovery more than he had a right to claim as new, if the error has arisen by inadvertence, accident, or mistake, and without any fraudulent or deceptive intention, the Commissioner shall, on the surrender of such patent and the payment of the duty required by law, cause a new patent for the same invention and in accordance with the corrected specification, to be issued to the patentee, or, in the case of his death or of an assignment of the whole or any undivided part of the original patent, then to his executors, administrators, or assigns, for the unexpired part of the term of the original patent. Such surrender shall take effect upon the issue of the amended patent. The Commissioner may, in his discretion, cause several patents to be issued for distinct and separate parts of the thing patented, upon demand of the applicant, and upon payment of the required fee for a reissue for each of such reissued letters patent. The specifications and claim in every such case shall be subject to revision and restriction in the same manner as original applications are. Every patent so reissued, together with the corrected specifications, shall have the same effect and operation in law, on the trial of all actions for causes thereafter arising, as if the same had been originally filed in such corrected form; but no new matter shall be introduced into the specification, nor in case of a machine patent shall the model or drawings be amended, except each by the other; but when there is neither model nor drawing, amendments may be made upon proofs satisfactory to the Commissioner that such new matter or amendment was a part of the original invention, and was omitted from the specification by inadvertence, accident or mistake, as aforesaid."

81. Invention Claimable in a Reissue Patent According to the Former Construction of the Act.

The reissue patent is required to be "for the same invention" as the original patent; but the judicial interpretation of these words has varied greatly in different ages of the United States Supreme Court. Under the practice of the United States circuit courts and of the United States Supreme Court prior to about 1877, it was settled law that the reissue patent was to be for the same invention which the patentee intended to be secured by the original patent. Thus, in the case of O'Reilly v. Morse, 56 U. S. 15 How. 62, 14 L. ed. 601, in which the reissue patent of Morse was in suit and had a specification and claims materially different from those of the original patent, Chief Justice Taney (an admitted strict constructionist) delivered the decision of the Supreme Court in reference to the reissue of the Morse patent with "additional specifications" to those contained in the original patent, in the following language:

"We do not think it necessary to dwell upon the objections taken to the proceedings upon which the first patent was issued or to the additional specifications of the reissued patent of 1848. In relation to the first, if there was any alteration at the suggestion of the commissioner, it appears to have been a matter of form, rather than of substance; and, as regards the second, there is nothing in the proof or on the face of the reissued patent to show that the invention therein described is not the same with the one intended to be secured by the original patent. It was reissued by the proper lawful authority; and it was the duty of the Commissioner of Patents to see that it did not cover more than the original invention. It must be presumed, therefore, that it does not, until the

contrary appears. Variations from the description given in the former specification do not necessarily imply that it is for a different discovery. The right to surrender the old patent and receive another in its place, was given for the purpose of enabling the patentee to give a more perfect description of his invention, when any mistake or oversight was committed in his first. It necessarily, therefore, varies from it."

The words "intended to be secured by the original patent" are worthy of note, as well as the last sentence above quoted.

Under this construction of the law any patentee who had a patent that was inoperative to protect him in the use of his entire invention by reason of insufficient claims was properly permitted to surrender his original patent and to take out a reissue patent for the residue of the term of the original patent, and with claims broader in scope than those of the original patent, provided it was shown to the satisfaction of the commissioner of patents that the broader claims were embodied in the original invention at the date of the original application, and provided that the defect of the specification of the original patent had arisen from inadvertence, accident or mistake, and without any fraudulent or deceptive intention. Reissue patents so taken out were sustained by the courts.

§ 82. Evidence as to the Original Invention.

In some cases parol evidence as to omissions in the specification of the original patent was admitted; but as such evidence was liable to be fraudulent, it was received with great caution. In the majority of cases the fact that the subject-matter of the new claims of the reissue was

found embodied in the patentee's model filed in the Patent Office with the application for the original patent, or in the patentee's original drawings on file in the Patent Office, or was described (although not claimed) in the specification of the original patent, was considered conclusive evidence that such subject-matter formed part of the invention intended to be patented by the original patent, and for which the law authorized him to receive a reissue patent.

§ 83. Examples of Reissue Patents with Enlarged Claims. Thus in the case of the Woodworth planing machine (patent dated December 27th, 1828) the specification of the original patent did not describe or claim pressure rollers for holding the rough boards to the bed of the planing machine against the tendency of the revolving planing blades to draw it from that bed; yet in the reissue patent "for the same invention," granted July 8th, 1845 (during the extended term of the patent), the administrator of the patentee was permitted to describe and base two claims upon these pressure rollers upon the ground that there was satisfactory evidence that they formed part of the invention of Woodworth at the date of his application for the original patent. The validity of the reissue patent was subsequently affirmed by the United States Supreme Court in the cases of Wilson v. Rousseau, 45 U. S. 4 How. 646, 11 L. ed. 1141, and Woodworth v. Wilson, 45 U. S. 4 How. 712, 11 L. ed. 1171.

Another instance of the enlargement by reissue of the scope of the claims of the original patent is found in the case of the patent of Charles Goodyear for the manufacture of vulcanized india rubber. The language of the claim of the original patent was:

"I claim the preparing and curing the compound of india rubber, sulphur, and a carbonate or other salt or oxide of lead, by subjecting the same to the action of artificial heat, substantially as herein described."

This claim, although perfectly operative to protect as much as was recited in it, rendered the patent inoperative to protect the full or entire invention made by Goodyear because it was limited in scope to the use of "a carbonate or other salt or oxide of lead," and it was undoubtedly the fact that each of these substances was absolutely useless and inoperative in the vulcanizing process and amounted to a mere adulterant. infringers of the entire invention of Goodyear escaped the purview of the claim by leaving out the adulterants recited therein. The patent was divided upon the reissue and the claim to one of these reissue patents was as follows, viz:

Hence.

66 What is claimed as the invention of Charles Goodyear, deceased, is the new manufacture of vulcanized india rubber (whether with or without other ingredients) chemically altered by the application of heat, substantially as described."

The scope of the claim in the reissue was thus greatly enlarged or broadened as compared with that of the claim of the original patent; but as there was no reasonable doubt that the subject of the reissue claim was within the invention or discovery of Goodyear at the date of his application for the original patent, the reissue patent was sustained on appeal by the United States Supreme Court. Providence Rubber Co. v. Goodyear, 76 U. S. 9 Wall. 788, 19 L. ed. 566. In this case one of the grounds of appeal was that Goodyear's two reissue patents were invalid, "because they are broader than