244 U.S. 1 (1917), 721, Ewing v. Fowler Car Company

Docket Nº:No. 721
Citation:244 U.S. 1, 37 S.Ct. 494, 61 L.Ed. 955
Party Name:Ewing v. Fowler Car Company
Case Date:May 07, 1917
Court:United States Supreme Court

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244 U.S. 1 (1917)

37 S.Ct. 494, 61 L.Ed. 955



Fowler Car Company

No. 721

United States Supreme Court

May 7, 1917

Argued April 17, 1917




When an applicant for a patent admits tat 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 cannot 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 conferred upon him by Rev.Stats., § 4904.

45 App.D.C. 185 reversed.

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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 reduced

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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 full-sized devices.

On November 26, 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 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 [37 S.Ct. 495] 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

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the declaration of interferences between pending conflicting...

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