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TERRY v. WEBSTER.

(Court of Appeals of District of Columbia.

Submitted November 7, 1925.

Decided April 5, 1926.)

No. 1785.

1. Patents '<§=5107 — Commissioner of Patents has exclusive authority to revive abandoned application, and revivor cannot be collaterally attacked in interference proceeding (Rev. St. § 4894 [Comp. St. § 9438]).

Under Rev. St. § 4894 (Comp. St. § 9438), Commissioner of Patents has exclusive power to revive an abandoned application, and bis revivor is conclusive and binding on Examiner of Interferences and Board of Examiners in Chief, and cannot be collaterally attacked in interference proceeding.

2. Patents <§=3107 — Commissioner of Patents, on appeal in interference proceeding, has no power to vacate prior order reviving abandoned application (Rev. St. § 4894 [Comp. St. § 9438]).

In interference proceeding, after revivor of an abandoned application by tbe Commissioner of Patents, under Rev. St. § 4894 (Comp. St. § 9438), Commissioner, on appeal from decision of Examiner of Interferences and Board of Examiners in Chief, has no power to vacate his prior order of revivor.

Appeal from Commissioner of Patents.

Interference proceeding between Joseph T. Terry and Milton F. Webster. From a decision of the Commissioner of Patents, awarding priority to the latter on the ground that the former’s application had been improperly revived, the former appeals.

Reversed.

Melville Church and H. P. Brown, both of Washington, D. C., and T. H. Sheridan, of Chicago, Ill., for appellant.

Archibald Cox and H. A. English, both of New York City, and W. G. Henderson, of Washington, D. C., for appellee.

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

SMITH, Acting Associate Justice.

Joseph T. Terry, in October, 1914, applied to the Patent Office for letters patent to a process for the extraction of copper from its ores. On December 30, 1916, Martin E. Webster filed an application in which he prayed for a patent to substantially the same process as that applied for by Terry. Terry failed to prosecute his application for a patent for more than a year after notice of official action thereon, and in consequence his application stood abandoned by operation of law until it was shown to the satisfaction of the Commissioner of Patents that his delay was unavoidable. Section 4894, Revised Statutes (Comp. St. § 9438).

On September 3, 1921, the Metal Recovery Company, assignee of the rights accruing or to accrue under Terry’s application, filed a petition in the Patent Office, in which petition the company set forth the reasons for the delay in prosecuting Terry’s claim. The petition prayed that Terry’s application for a patent he revived by the Commissioner, and that an amendment to the application filed with the petition to revive should be allowed. The Examiner reported that no formal objections had been made to the petition for revival, and that the amendment filed would render the claims allowable.

The petition to revive and the evidence submitted in support thereof satisfied the First Assistant Commissioner of Patents that Terry’s delay in prosecuting his application for a patent was unavoidable, and accordingly, on September 14, 1921, the Commissioner revived the application and allowed the amendment as prayed for in the petition. By virtue of the revivor the application passed from the hands of the Commissioner to the tribunals of the Patent Office charged with the duty of disposing of it and of determining whether the applicant was or was not entitled to letters patent. Accordingly on the 3d day of May, 1922, an interference was officially declared, and in consequence thereof the Examiner of Interferences acquired jurisdiction of the parties involved and of the subject-matter of the application, for the purpose of determining at first instance whether priority of invention should he awarded to Terry or Webster, both of whom claimed substantially the same invention.

[1] On the 1st of August, 1922, Webster, by counsel, moved to dissolve the interference, on the ground, among others, that Terry had abandoned his application and the invention thereby disclosed. The Law Examiner denied the motion to dissolve, and the Examiner of Interferences very properly held that the revivor of the application could not be collaterally attacked in an interference proceeding, and awarded priority to Terry on the ground that he had the earlier filing date, the legal effect of which was not overcome by Webster. On appeal, the decision of the Examiner of Interferences was affirmed by the Board of Examiners in Chief.

Section 4894 of the Revised Statutes, as *140amended, confers on the Commissioner of Patents the exclusive power to revive an abandoned application, and his ruling in that behalf is conclusive and absolutely binding on the Examiner of Interferences and the Board of Examiners in Chief. Billings v. Field, 36 App. D. C. 16, 21. From the decision of the Board of Examiners in Chief an appeal was taken to the Commissioner, who sustained the Board as to Terry’s priority on the merits, but held that the application had been improperly revived, and that priority should therefore be awarded to Webster.

[2] As the Examiner of Interferences and the Board of Examiners in Chief had no authority whatever to review the action of the Commissioner in reviving the application of Terry, they were wholly without jurisdiction to entertain and decide on the merits a motion which was designed to accomplish that result. ' Whether or not Terry’s application had been abandoned was finally determined in Terry’s favor, and the Commissioner had no right otherwise to determine that . question in a proceeding in which his original decision as to abandonment had to be accepted as final and could not be collaterally attacked. Whether the Commissioner could have set aside his order reviving Terry’s application before an interference was declared, and before the judicial tribunals of the Patent Office had lawfully assumed jurisdiction of the parties involved and of the subject-matter, we are not called upon to decide. We are certain, however, that after an interference was declared the Commissioner had no power to vacate his order of revivor, thereby determining a matter which was not in issue and could not be put in issue in an interference proceeding. The Commissioner had no more power to set aside his order of revivor in an interference proceeding than had the Examiner of Interference or the Board of Examiners in Chief.

The Commissioner had the power to revive the application, but he had- no power to kill it after it had been revived and transmitted to the appropriate officials of the Patent Office to be dealt with as prescribed by law. While he had jurisdiction to pass upon the issues legally involved or presented in the interference proceeding, he erred in reversing the Board for respecting his order and entertaining an application which the revivor made it the imperative duty of the judicial tribunals of the Patent Office to hear and decide.

The decision of the Commissioner is re•versed.

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