Commissariat A L'Energie Atomique v. Watson

• Decision Date: 21 January 1960
• Docket Number: No. 14929.,14929.
• Citation: 274 F.2d 594,124 USPQ 126
• Parties: COMMISSARIAT A L'ENERGIE ATOMIQUE et al., Appellants, v. Robert C. WATSON, Commissioner of Patents et al., Appellees.
• Court: U.S. Court of Appeals — District of Columbia Circuit

124 USPQ 126, 274 F.2d 594 (1960)

COMMISSARIAT A L'ENERGIE ATOMIQUE et al., Appellants, v. Robert C. WATSON, Commissioner of Patents et al., Appellees.

No. 14929.

United States Court of Appeals District of Columbia Circuit.

Argued September 17, 1959.

Decided January 21, 1960.

Mr. James L. Morrisson, Washington, D. C., for appellants.

Mr. Joseph Schimmel, Atty. U. S. Patent Office, with whom Mr. Clarence W. Moore, Solicitor, U. S. Patent Office, was on the brief, for appellees.

Before EDGERTON, BAZELON and WASHINGTON, Circuit Judges.

WASHINGTON, Circuit Judge.

This is a patent case. Appellants (plaintiffs below) appeal from a decision of the District Court granting appellees' motion to dismiss appellants' complaint on the ground that it failed to state a cause of action and that the court lacked jurisdiction over the subject matter.

Appellants' complaint sought to review the refusal of the Commissioner of Patents to revive an application for a patent covering certain processes for the production of nuclear energy, and the refusal of the Board of Appeals of the Patent Office to reconsider its affirmance on November 17, 1950, of the Patent Examiner's original denial of the patent. Both the request for revival and the request for reconsideration were founded on alleged new evidence which would, appellants claimed, have shown that a patent should have been granted. In asking the District Court to review the denials of these requests to revive and reconsider, appellants maintained that the District Court had jurisdiction with respect to the revival decision because the Commissioner failed to make findings in accordance with Section 133 of Title 35 U.S.C. (1958).¹ It was asserted that these omissions involved failure to exercise the discretion required by statute and were reviewable in the District Court by writ of mandamus. With respect to the Board of Appeals' refusal to reconsider, appellants asserted that denial of this request constituted a final decision on the merits of a patent application which was reviewable by the District Court under Section 145 of Title 35 U.S.C. (1958).²

The background, in brief, is this: On April 5, 1940, appellants — members of an agency of the French Government — applied for a United States patent on an apparatus for the production of energy by a nuclear chain reaction. The Patent Examiner rejected the application on November 8, 1941, because the subject matter was not "sufficiently useful and important," given the then state of the art. On May 5, 1942 — before appellants' time for appeal to the Board of Appeals had expired — the application was placed under a Patent Office secrecy order and further proceedings were suspended until 1949. During this interval the application was vested in the Alien Property Custodian, and appellants claim that evidence which was relevant to the application was put under additional secrecy restrictions by the passage of the Atomic Energy Act of 1946, 60 Stat. 755, 42 U.S.C.A. §§ 1801-19^*. In 1949, while the application was still controlled by the Alien Property Custodian, and while the allegedly relevant information was still (according to appellants) under Atomic Energy Act secrecy restraints, the Patent Office lifted its secrecy order and resumed proceedings. On November 17, 1950, the Board of Appeals affirmed the Examiner's rejection of the application. For some time, no further action was taken by anyone. In 1954, the application was returned to appellants by the Alien Property Custodian. Appellants did not proceed immediately in the Patent Office, but waited until August 29, 1955, by which time, they claim, sufficient data restricted under the Atomic Energy Act had been declassified so that they could, for the first time, disprove the findings of the Patent Examiner and Board of Appeals. On that date appellants petitioned the Commissioner to revive their application, invoking Section 133 of Title 35 of the U.S.C. The petition was denied on July 10, 1956, and requests for reconsideration were denied on February 26, 1957, July 15, 1957, February 14, 1958, and May 2, 1958. Appellants filed their complaint in the District Court on July 1, 1958, and the proceedings in that court led to this appeal.

It is clear that at the time appellants' complaint was filed the District Court had no jurisdiction to consider the merits of the patent application under Section 145 of Title 35 U.S.C. Section 145 requires complaints to be filed in the District Court "within such time after the Board's decision, not less than sixty days, as the Commissioner appoints." The Commissioner has appointed sixty days.³ Whatever effect may be given to the fact that the application was vested in the Alien Property Custodian at the time of the Board's decision, much more than sixty days elapsed between the date of the return of the application to appellants and their filing of a complaint in the District Court. The time for bringing suit under Section 145 has thus long since run. There is nothing to indicate that appellants have ever made application to the Commissioner for an extension of time within which to bring suit. See Grady v. Watson, 1958, 104 U.S.App. D.C. 286, 261 F.2d 752; Eckey v. Watson, 1959, 106 U.S.App.D.C. 16, 268 F. 2d 891. The dismissal of the complaint insofar as it seeks relief under Section 145 will accordingly be affirmed, without prejudice to the making of an appropriate application to the Commissioner under the rule of the Eckey case, and without prejudice to such proceedings for reinstatement of the complaint as may be proper in the event the Commissioner grants the application.

However, with respect to the Commissioner's refusal to revive the application, after request made under Section 133 of Title 35, we think that appellants' complaint states a cause of action over which the District Court had jurisdiction. Section 133, impliedly permitting the Commissioner to revive a patent application, requires an applicant to show "to the satisfaction of the Commissioner that * * * delay in prosecuting the application was unavoidable": otherwise, the application "shall be regarded as abandoned." True, in the days when appeals from decisions of the Commissioner were taken directly to the Court of Appeals of the District of Columbia, it was held that the then governing statutes did not authorize an appeal from a decision denying revival of an application. In re Carvalho, 1918, 47 App.D.C. 584. Later, in a case where suit was brought in the Supreme Court of the District of Columbia under Section 4915 of the Revised Statutes (the predecessor of Section 145 of Title 35), it was held that the Commissioner's refusal to revive an application was not cognizable in such a suit. Chessin v. Robertson, 61 App.D.C. 376, 63 F.2d 267, certiorari denied, 1933, 289 U.S. 725, 53 S.Ct. 523, 77 L.Ed. 1475. A like decision was rendered in Cregier v. Coe, 1933, 62 App.D.C. 320, 67 F.2d 692, certiorari denied, 1934, 291 U.S. 683, 54 S. Ct. 560, 78 L.Ed. 1070. We have no quarrel with those holdings. As the court pointed out in the Cregier case, "The denial of a motion to revive an application is not equivalent to the refusal to grant a patent," and such refusal is the sole basis for a suit under Section 4915.⁴ Id. 62 App.D.C. at page 321, 67 F.2d at page 693. Dicta may be found in Chessin and Cregier that a denial by the Commissioner...