In re Jollenbeck

• Decision Date: 01 March 1926
• Docket Number: No. 1807.,1807.
• Citation: 11 F.2d 561,56 App. DC 175
• Parties: In re JOLLENBECK.
• Court: U.S. Court of Appeals — District of Columbia Circuit

56 App. DC 175, 11 F.2d 561 (1926)

In re JOLLENBECK.

No. 1807.

Court of Appeals of District of Columbia.

Submitted January 14, 1926.

Decided March 1, 1926.

H. C. Robb, of Washington, D. C., for appellant.

T. A. Hostetler, of Washington, D. C., for Commissioner of Patents.

Before MARTIN, Chief Justice, ROBB, Associate Justice, and BLAND, Judge of the United States Court of Customs Appeals.

MARTIN, Chief Justice.

This is an appeal from a decision of the Commissioner of Patents, rejecting appellant's application for a patent, upon the ground that his claims were anticipated by a British patent to Schuch, and a French patent to Hoffman, both assignees of appellant, covering the same invention. The Commissioner held that the applications for the foreign patents had been filed more than 12 months prior to the filing of appellant's application in this country, and accordingly that his application should be refused under section 4887, Rev. St. (Comp. St. § 9431).

The appellant claimed that on August 24, 1916, he had filed an application for a patent in Germany for the same invention, and that under section 4887, R. S., he was entitled to that filing date in case he filed a similar application in this country within 12 months after the date of the German application. He claimed that the limitation of 12 months was afterwards extended by the Nolan Act (41 Stat. 1313 Comp. St. Ann. Supp. 1923, §§ 9431a-9431h), so that said priority of filing date was allowed in case his application was filed in this country at any time prior to the expiration of 6 months after the passage of that act. Appellant claimed that his present application was filed within that period, to wit, on June 26, 1920; the Nolan Act having been approved on March 3, 1921. Appellant accordingly claimed that he was entitled to a filing date of August 24, 1916, and that his application should not be refused because of the subsequent issue of patents to his assignees in Great Britian and France. The Commissioner overruled this contention; hence this appeal.

It appears that on August 24, 1916, the appellant, a German subject, filed an application in Germany in the name of his assignee, Schuch, for a patent upon this invention. A corresponding application was filed in the same name in Great Britain on April 26, 1920, upon which a patent was issued on July 26, 1921. A similar application was filed in the name of Hoffman, another assignee of appellant, in France, on November 7, 1919, a patent issuing on May 15, 1920. Afterwards, to wit, on June 26, 1920, appellant filed an application in his own name in the United States Patent Office, covering the same invention. The application was complete in every particular, except that the formal oath, although signed by appellant, was not sworn to by him.

An affidavit by the appointed attorney, however, was filed with the application, alleging that the statements of the applicant were true, and that his failure to make oath thereto was due to the fact that at that time there was no consular officer of the United States available who was authorized to administer such oaths. It appears from the record that, for a certain period ending with June 15, 1920, it was the practice of the Patent Office to accept applications verified by the attorney instead of the applicant, but the practice was discontinued after that date. Inasmuch as this application was filed 11 days after this change of practice, the Commissioner of Patents held it to be incomplete for want of an oath by the applicant, and at once gave notice that it would not be given a filing date until an oath, properly signed and executed, had been filed. No other oath was filed within the ensuing year, whereupon the application was regarded as abandoned, and the papers were sent to the abandoned files.

On March 3, 1921, the Nolan Act was passed, entitled "An act to extend temporarily the time for filing applications for letters patent, for taking actions in the United States Patent Office with respect thereto, for the reviving and reinstatement of applications...