when there is neither model nor drawing accompanying the application for the original patent, new matter or amendment may be introduced into the specification of the reissue patent upon proof satisfactory to the commissioner that the same was part of the original invention and was omitted from the specification by inadvertence, accident, or mistake.

§ 90. Grounds for the Understanding of the Mechanic.

This view of the law is founded upon what is believed to be a strict construction of the language of the Patent Act as a whole; the determination of what is meant by the words "the same invention " in section 4916, upon the subject of reissues, appearing plain upon a consideration of the preceding sections of the Act; and it being presumed that unless the word "invention" in any section is qualified (which is not the case in section 4916 relating to reissues) it means the same thing in one section as it does in the others.

Thus, section 4886 recites that—

"Any person who has invented or discovered any new and useful art, etc., may * obtain a patent

therefor."

*

*

The language of the next section, 4887 is,

"No person shall be debarred from receiving a patent for his invention or discovery," etc.

And the language of section 4888 is

"Before any inventor or discoverer shall recive a patent for his invention or discovery, he shall make application therefor in writing," etc.

Lastly, section 4916 (on reissues) provides that

"Whenever any patent is inoperative, etc., * * * the commissioner shall, on the surrender of such patent

* *

to be

and the payment of the duty required by law, cause a new patent for the same invention issued * * * to the patentee."

With the light which the said earlier sections of the Patent Act shed upon section 4916, can there be a reasonable doubt that "the same invention " mentioned in section 4916 (relating to reissues) is the "invention or discovery" to which the preceding section 4887 and 4888 relate, and is the thing "invented or discovered,” as recited in section 4886, before the application for the patent is made by filing it in the Patent Office? That "invention or discovery" is undoubtedly the one for which the inventor has the right under conditions prescribed in the law to "obtain a patent;" and having that right, it necessarily follows that the scope of the patent shall be commensurate with the invention or discovery "invented or discovered" by him previous to making his application for the patent. If the original patent falls short of this, or gives the inventor more than this, then in either case the inventor has not received a patent "for the same invention" which he "invented or discovered;" and which section 4886 states he "may obtain a patent" for; and in equity he is entitled to a reformation of the instrument (that is, the patent) so as to relieve him of the injury done him in case the patent is "inoperative" by reason of the description and claims. of the specification being "defective or insufficient" to protect the entire invention, or is "invalid by reason of the patentee claiming as his own invention or discovery more than he had a right to claim as new.”

Can there also be a reasonable doubt that the words "the same invention," as used in section 4916 relating to reissues, is the "invention or discovery" (recited in

sections 4887 and 4888) which the inventor "invented or discovered" (as recited in section 4886) before he made application for his original patent, as distinguished from the thing erroneously described, or defectively or insufficiently claimed in the specification of his original patent by inadvertence, accident, or mistake?

This construction of the law makes all the provisions. of section 4916 harmonious and logical, because if the reissue patent is to be "for the same invention" which the patentee "invented or discovered" previous to making his application for the original patent, and which the patentee had the right to "make application" for and to "obtain," then so long as the reissue patent is issued for that invention it will be "for the same invention" specified in the Act, whether the scope of the reissue claims be enlarged, or be the same as in the original patent, or be reduced (when the patentee in the original patent has claimed "more than he had a right to claim as new"), or be enlarged by the making of amendments or the introduction of new matter, as provided in certain cases in the last clause of section 4916.

§ 91. Understanding of the Mechanic Same as Courts Prior to about 1878.

The foregoing construction of the words "the same invention" as used in the section relating to reissues appears to be that which was taken by the great exponents of the law who formed the United States Supreme Court prior to 1877, as well as by the judges of the United States circuit courts, as appears from the typical decisions referred to in § 83 and from numerous other

cases.

In the case of Grant v. Raymond, the Chief Justice (Marshall) used the following language: "But the new"

[reissue]"patent and the proceedings on which it issues have relation to the original transaction." Grant v. Raymond, 31 U. S. 6 Pet. 218, 8 L. ed. 376. He does not say the claim of the original patent, or the statement of invention made therein.*

§ 92. Fraudulent Reissues.

Cases have undoubtedly occurred in which the claims of a reissue patent have been broadened beyond the scope of the original invention made or discovered by the patentee. Such reissues are fraudulent, and as the courts not only have the power to declare them as such, but have frequently exercised that power, and no doubt will

* See also: Stimpson v. West Chester R. Co., 45 U. S. 4 How. 380, 11 L. ed. 1020; Wilson v. Rousseau, 45 U. S. 4 How. 646, 11 L. ed. 1141; O'Reilly v. Morse, 56 U. S. 15 How. 62, 14 L. ed. 601; Battin v. Taggert, 58 U. S. 17 How. 74, 15 L. ed. 37; Gibson v. Harris, 1 Blatchf. 167 (Nelson); Potter v. Holland, 4 Blatchf. 238 (Ingersoll); Hussey v. Bradley, 5 Blatchf. 134 (Hall); Goodyear v. Wait, 5 Blatchf. 468 (Nelson); Blake v. Stafford, 6 Blatchf. 195 (Shipman); Morris v. Royer, 2 Bond, 66 (Leavitt); Providence Rubber Co. v. Goodyear, 76 U. S. 9 Wall. 788, 19 L. ed. 566; Seymour v. Osborne, 78 U. S. 11 Wall. 516, 20 L. ed. 33; Jordon v. Dobson, 2 Abb. U. S. 398 (Strong); Woodward v. Dinsmore, 4 Fish. Pat. Cas. 163 (Giles); Parham v. American Buttonhole, O. & S. M. Co., 4 Fish. Pat. Cas. 468 (McKennan); Bailey Washing & W. Mach. Co. v. Lincoln, 4 Fish. Pat. Cas. 379 (Lowell); Seymour v. Marsh, 9 Phila. C. C. 380 (McKennan); Wheeler v. Clipper Mower & Reaper Co., 10 Blatchf. 181 (Woodruff); Black v. Thorne, 10 Blatchf. 66 (Blatchford); Dorsey Harvester R. R. Co. v. Marsh, 6 Fish. Pat. Cas. 387 (McKennan); Eickemeyer Hat Blocking Mach. Co. v. Pearce, 10 Blatchf. 403 (Blatchford); Bantz v. Elsas, 1 Bann. & Ard. 351 (Swing); Reedy v. Scott, 90 U. S. 23 Wall. 352, 23 L. ed. 109; Westinghouse v. Gardner & Ranson Air-Brake Co., 2 Bann. & Ard. 55 (Swayne & Walker); Calkins v. Bertraud, 6 Biss. 494 (Blodgett); Marsh v. Seymour, 97 U. S. 348, 24 L. ed. 963.

always exercise that power when the occasion requires, it is not perceived that the fact of such occasional frauds should deprive honest patentees of a right which is not only plainly given them by the statute, but is also due them independently of the statute as a matter of equity.

§ 93. Period Allowed for a Reissue.

As to the period in the term of the patent at which a reissue may be legally applied for and received, the statute (§ 4916) has the following language: "Whenever any patent is inoperative or invalid * * * It is worthy

of notice that this word "whenever" occurs in the first Patent Act on the subject (Act of 1832, § 3), and occurs also in every subsequent Act (Act 1836, § 13; 1870, § 53) up to and including the Act now in force. The same word "whenever" also occurs in the sections relating to the filing of disclaimers to such things as may be claimed in a patent but which the patentee or his assignee may not choose to claim after his patent has been issued and in force.

The common meaning of the word "whenever" is "at whatever time" or "if at any time," and when applied to disclaimers it has always been held that it gives the patentee or his assignee the right to file a disclaimer at any time during the term of the patent, even after a suit under it has been commenced. This common meaning of the term "whenever" also was the one held by the courts in their decisions upon reissue patents prior to about 1877. Thus in the case of the Woodworth Planing Machine, the original patent was granted the 27th of December, 1828, for fourteen years. The term of this patent was extended twice, so that it remained in force for twenty-eight years. On the 8th day of July, 1845, a re