New-York tribune. [volume] (New York [N.Y.]) 1866-1924, 1895-10-05
IT PLEASES LAWYERS.
EFFECT OF THE NEW ORDER OF THE COM
MISSIONER OF PATENTS.
SOME AUTHORITIES THINK THAT THE SHORTEN
ING OF THE PERIOD OF DELAY" is GOOD
THING. But THAT ACTION BY con-
GREss Is NECESSARY TO

GREss Is NECESSARY TO
MAKE 1T LEGAL
The interest of inventors and patent lawyers
in the new rule shortening the period OF delay pro-
mulgated by Commissioner Seymour. OF the Patent
Office at Washington. becomes more acute every
day as the date of its enforcement, October TO- APP
proaches. In explaining the matter to tribune
reporter recently A. Parker Smith patent law
yer OF No POI Broadway, said:
THE facts In the these Section NO. 1894
of the Revised Statutes relating to patents. reads
as follows:
"All applications for patents shall be completed and
prepared examination within two years after the
upon failure of the applicant prosecute the same
within two years after any action therein, OF wnicn
shall be regarded abandoned by the parties there
to- unless 1t be shown to the satisfaction Oh t,e III
missioner Of Patents that such delay was uhdVoio-
able
The Patent Office has always construed this stat
ute heretofore as giving the inventor two years IN
which to consider any rejection Of his application
for a patent before amending the same or appealing
from the decision of the examiner to the Board OF
Appeas In the ma jorty of cases the inventor IL
anxious TO get his patent and acts with prompness
in the effort to push it through after each ADVERSE
ruling OF the Patent Office upon II. In some cases.
however as in that of the famous Berliner patent
the owners OF that and Of other patents already
covering the invention in different way have been
interested in prolonging it's tendency in the Patent
Office so as 10 delay the issuance OF the second
patent and prolong their monopoly. Thus the
Bell patent, which covered the TRANSMISSION OF
speech By an undulatory electric current, ran us
seventeen years and expired In 1893 The Bell Com
pany owning the Berner application, which COW
cred broadly the production OF this undulatory cur
rent by variable resistance in the transnitter,
and which Is the only practical. commercial method
Of the patent to Beriner Until about the time the
Bell patent expired so that tney practicay seIu,ed
patent is sustained. This practice OF permitting
which always arises between the applicant for a
broad patent and the Patent Office cut large figure
In the delay In this and other similar cases
FIRST DECLARED INVALID.
when the Berner patent issued it was a.
tackled by the Attorney General OF the United
States the ground that this delay was VIOLA
ton of the spirit of the law. and of the equities OF
the question: and Judge Carpenter declared the pat
ent invalid on that ground The Court OF Appeals
for the First District has since reversed Judge
Carp decision this point and the matter has
gone up TO the supreme Court Of the United States.
Commissioner Seymour. however acting on the au-
thorlty OF Judge Carpenters decision. assumed thai
he had the right to shorten the limit OF delay from
two years to six months. and issued the following
amended rules OF practice for the office;
mo s.. An applicant will be considered TO per
sst n clam Sr he to in
OF the same for six months after the office action
thereon. and thereupon the examiner will make
re-eXaminatiOn OF the case.
NO; 1874. In appealabe cases in which no limit of
appeal is fixed appeal Will be entertained by
any tribunal in the office unless taken within SIX
dtion for appeal unless it be- shown to the tsfac-
ton Of the Commissioner that such delay was I'M
No 6S In every pending before the Office
more than I'VE years. IN which the record raises
delays in prosecution. the examiner may require the
applicant to show cause why the case was not more
mid cd md fha hpftr fhara
upon failure OF the applicant TO appear the exam
,her WI dsefne undef an me crcumstsnGes Oh
unreasonable delays in prosecution. and upon find
Ing the fact 10 bs so, he Will reject the case for
that
WHEN THE RULES WENT INTO EFFECT.
THE foregoing rules went in,o effect on April H.
1880 and the SIX months period Will expire Octo
Der 10. and all applications which have not been
acted on by the applicant in The way Of amendment
or aPpe pea s1 Irps thr neryFnnS PeId VIII be
II will be seen that this cuts down the period OF
delay for each action from two years TO six months
applicant. who. however prompt and vigorous his
get his pater' out of the office within "a total period
Of FIVE years after filing his application. Il fire.
that vexatious contests arise in the Patent Office
between TWO or more applicants for patents on sub
quire the taking OF voluminous testimony and argu-
ments on appeals before three or four different
tribunals These contests sometimes exceed five
years in lepgth and the rule viii apply harshiy
unless enforced with great delicacy In such cases
applications the rule does conhc, with the
statute which have cited above. and this question
As promptly az possible While looking at the
matter generally. il might that the rule was
a good one on the broad question Of equity it is
evident that will operate only against patents for
are usually put through with a reasonable degree
OF prompness. the applicant accepting the exami-
ned with any kind OF patent Wherever much is
at stake however, The contest is likely 10 be d long
and il is In these cases that the rule will come
into play"
AN EX-COMM SSIONER'S VIEW
Among other patent lawyers was ex-Paten,
Commissioner Charles f. Mitchell RE said: II
think that the six months limit will be very bene-
neal to the public ana In no way prejudieal 70
ample time to enable all necessary amendments
and actions to be taken. There IL difference OF
the Commissioner to make such a rule Several
former Commissioners have considered the subject,
and have declined to adopt any such rule because
they believed mat afon y GCSgress WAS nsees
Statutes. which has been construed to allow an In
adverse action by the Patent 0ce The question
to whether the action of the Commissioner was
opinion is that the present Commssioner has done
a wise thing I'm causing the new rule 10 be adopted.
pass upon lis validity 1t should be said that the
Plient Committee OF the American Bar Assoca,
tion recommended to that body an amendment to
the statutes by Congress action. having the same
object in view. and that the Bar Association. a. ts
recent meeting in Detroit. approved the same.
Samuel r. Belts. Of the firm of Belts Hyde &
Belts. No. l2O Broadway. said: The only differ
ence the rule will make is to enforce speedier
action the part Of inventors u was made Dy
the Commissioner. | believe. TO prevent an ABUSE
that has been perpetrated many times IN the past
by inventors In keeping an action before ue
courts many years by presenting amendments On
the whole the rule IS n good move, as II VIII
expedite matters in the Patent once ooth Tor III
yentors and others"
Taomas b. Kerr Of Kerr Curtis, attorneys s, for
No 100 Broadway He said: The new rule max
ing time limit OF SIX months IL good thng 10y
inventors in that j. prevents undue delays IN thr
Patent Office which under the old limit. might d.
worked TO the disadvantage OF both pubic ana
inventor. ! believe. my own personal OPINION
that the acton OF the Commissioner is not IN
consistent with the patent statutes ana NOR