conclusiveness, in suits for infringements of patents, of the decisions of the commissioner on questions of fact necessary to be decided before issuing such patents, except as the statute gives specific defenses in that regard. But the statutory defenses are not the only defenses which may be made against a patent. Where it is evident that the commissioner, under a misconception of the law, has exceeded his authority in granting or reissuing a patent, there is no sound principle to prevent a party sued for its infringement from availing himself of the illegality, independently of any statutory permission so to do. This is constantly done in land cases where patents have been issued which the land officers had no authority to issue; as, where the lands have been previously granted, reserved from sale, or appropriated to other uses. Stoddard v. Chambers, 2 How. 318; Easton v. Salisbury, 21 How. 426; Reichart v. Felps, 6 Wall. 160; Silver v. Ladd, 7 Wall. 219; Meader v. Norton, 11 Wall. 442; Best v. Polk, 18 Wall. 112; Morton v. Nebraska, 21 Wall. 660; Leavenworth R. Co. v. U. S. 92 U. S. 733; Newhall v. Sanger, Id. 761; Sherman v. Buick, 93 U.S. 209.

In cases of patents for inventions, a valid defense, not given by the statute, often arises where the question is whether the thing patented amounts to a patentable invention. This being a question of law, the courts are not bound by the decision of the commissioner, although he must necessarily pass upon it. See Brown v. Piper, 91 U. S. 38; Glue Co. v. Upton, 97 U. S. 3; Dunbar v. Myers, 94 U. S. 187, 197-199; Atlantic Works v. Brady, 107 U. S. 199; S. C. 2 SUP. CT. REP. 225; Slawson v. Grand St. R. Co. Id. 652; S. C. 2 SUP.CT. REP. 663; King v. Gallun, 109 U. S. 101; S. C. 3 SUP. CT. REP. 85. In this very matter of reissued patents it has also been frequently decided that it is a good defense in a suit on such a patent to show that the commissioner exceeded his authority in granting it. Such a defense is established by showing that the reissued patent is for a different invention from that described in the original; inasmuch as the statute declares that it must be for the same invention. Burr v. Duryee, 1 Wall. 531, 574; Gill v. Well, 22 Wall. 1; Collar Co. v. Van Dusen, 23 Wall. 530, 560; Wood Paper Patent, Id. 566; and many other subsequent cases. The same defense may be established by showing from the record that there was no inadvertence, accident, or mistake in drawing up the specification of the original patent; for the statute only gives a reissue when the original is defective by inadvertence, accident, or mistake. Thus, in Leggett v. Avery, 101 U. S. 259, the reissued patent embraced a claim which had been presented on the application for the original patent and rejected. It was apparent, therefore, that the omission of that claim in the original was not, and could not have been, the result of inadvertence, accident, or mistake, but was the result of design on the part of the commissioner and acquiescence on the part of the patentee; and, so far as that claim was concerned, the reissued patent was properly held to be void. See, also, James v. Campbell, 104 U. S. 368. The proper remedy of the patentee, when a claim applied for is rejected, is an appeal, and not an application for a reissue.

Such are some of the instances in which a patent issued contrary to law is held to be void. And it is no doubt a general rule that where the commissioner has exceeded his authority in granting or reissuing a patent, such fact furnishes a good defense to a suit brought for its infringement. There are stronger reasons for this defense against patents for inventions, which directly affect the citizen, than exist in the case of patents for land, which directly affect the government, and only indirectly the citizen. Now, in our judgment, a patent for an invention cannot lawfully be reissued for the mere purpose of enlarging the claim, unless there has been a clear mistake inadvertently committed in the wording of the claim, and the application for a reissue is made within a reasonably short period after the original patent was granted. The granting of such reissues after the lapse of long periods of v.58-12

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time is an abuse of the power, and is founded on a total misconception of the law. The commissioner of patents has evidently proceeded, in these cases, on the view that a patent may be reissued after any lapse of time, for the purpose of making a broader claim, by merely showing that the claim might have been broader than it was, and that it was inadvertently made too narrow at the time. In this we think he has been entirely in error. Lapse of time may be of small consequence on an application for the reissue of a patent on account of a defective specification or description, or where the original claim is too broad. But there are substantial reasons, not applicable to these cases, why a claim cannot be enlarged and made broader after an undue lapse of time. The rights of the public here intervene, which are totally inconsistent with such tardy reissues; and the great opportunity and temptation to commit fraud after any considerable lapse of time, when the circumstances of the original application have passed out of mind, and the monopoly has proved to be of great value, make it imperative on the courts, as a dictate of justice and public policy, to hold the patentees strictly to the rule of reasonable diligence in making applications for this kind of reissues.

Conceding that it is for the commissioner of patents to determine whether the insertion of too narrow a claim rose from inadvertence, accident, or mistake, unless where the matter is manifest from the record, the question whether the application for correction and reissue is or is not made within reasonable time is, in most, if not all, of such cases, a question which the court can determine as a question of law by comparing the patent itself with the original patent, and, if necessary, with the record of its inception. The reason for this was fully explained in the case of Miller v. Brass Co. The taking out of a patent which has, as the law requires it to have, a specific claim is notice to all the world, of the most public and solemn kind, that all those parts of the art, machine, or manufacture set out and described in the specification, and not embraced in such specific claim, are not claimed by the patentee; at least, not claimed in and by that patent. If he has a distinct patent for other parts, or has made application therefor, or has reserved the right to make such application, that is another matter not affecting the patent in question. But, so far as that patent is concerned, the claim actually made operates in law as a disclaimer of what is not claimed; and of all this the law charges the patentee with the fullest notice. Then, what is the situation? The public is notified and informed, by the most solemn act on the part of the patentee, that his claim to invention is for such and such an element or combination, and for nothing more. Of course, what is not claimed is public property. The presumption is, and such is generally the fact, that what is not claimed was not invented by the patentee, but was known and used before he made his invention. But, whether so or not, his own act has made it public property, if it was not so before. The patent itself, as soon as it is issued, is the evidence of this. The public has the undoubted right to use, and it is to be presumed does use, what is not specifically claimed in the patent. Every day that passes after the issue of the patent adds to the strength of this right, and increases the barrier against subsequent expansion of the claim by a reissue under a pretense of inadvertence and mistake. If any such inadvertence or mistake has really occurred, it is generally easily discernible by an inspection of the patent itself, and any unreasonable delay in applying to have it corrected by a surrender and reissue is a just bar to such correction. If the specification is complicated, and the claim is ambiguous or involved, the patentee may be entitled to greater indulgence; and of this the court can rightfully judge in each case. No precise limit of time can be fixed and laid down for all cases. The courts will always exercise a proper liberality in favor of the patentee. But, in any case, by such delay as the court may deem unnecessary and unreasonable, the right to a reissue will be regarded as having been abandoned and lost, and the commissioner will be held to have

exceeded his authority in granting it. Whenever it is manifest from the patent itself, compared with the original patent and cognate documents of record, or from the facts developed in the case, that the commissioner must have disregarded the rules of law by which his authority to grant a reissue in sucn cases is governed, the patent will be considered as void to the extent of such illegality. It is, then, a question of law, not a question of fact. As before stated, the case is entirely different from that of a reissue by reason of a defective specification or description, or on account of the claim being too broad. In these cases, the public interest is promoted by the change; while a reissue for the purpose of making a claim more broad and comprehensive is injurious to the public, since it takes from the public the use of that which it previously enjoyed, and which the original patent acknowledged its right to enjoy. We repeat, then, if a patentee has not claimed as much as he is entitled to claim, he is bound to discover the defect in reasonable time, or he loses all right to a reissue; and if the commissioner of patents, after the lapse of such reasonable time, undertakes to grant a reissue for the purpose of correcting the supposed mistake, he exceeds his power, and acts under a mistaken view of the law; and the court, seeing this, has a right, and it is its duty, to declare the reissue pro tanto void in any suit founded upon it.

The truth is (as was shown in Miller v. Brass Co.) that this class of cases, namely, reissues for the purpose of enlarging and expanding the claim of a patent, was not comprised within the literal terms of the law which created the power to reissue patents. But since the purpose of the statute undoubtedly was to provide that kind of relief which courts of equity have always given in cases of clear accident and mistake in the drawing up of written instruments, it may fairly be inferred that a mistake in a patent whereby the claim is made too narrow, is within the equity if not within the words of the statute. Yet no court of equity, considering all the interests involved, would ever grant relief in such a case without due diligence and promptness on the part of the patentee in seeking to have the error corrected. It is just one of those cases in which laches and unnecessary delay would be held to be a bar to such relief. And in extending the equity of the statute so as to embrace the case, the courts should not overlook or disregard the conditions on which alone courts of equity would take any action, and also on which alone the commissioner of patents has any power to grant a reissue. As we have already stated, no invariable rule can be laid down as to what is reasonable time within which the patentee should seek for the correction of a claim which he considers too narrow. In Miller v. Brass Co., by analogy to the law of public use before an application for a patent, we suggested that a delay of two years in applying for such correction should be construed equally favorable to the public. But this was a mere suggestion by the way, and was not intended to lay down any general rule. Nevertheless, the analogy is an apposite one, and we think that excuse for any longer delay than that should be made manifest by the special circumstances of the case.

In the present case there was a delay of nearly four years. The application for a reissue, though made in the name of the patentee and signed by him, was not made for his benefit, but for the benefit and apparently at the instance of his assignee, the present appellant. The specification is very plain and free from complexity, and, as we have already stated, the claims in the original patent were clear and explicit. There was no ambiguity, and nothing to prevent the patentee from seeing at once, on inspecting his patent, whether his whole invention was claimed or not. We can see no possible excuse, and none has been attempted to be shown, for allowing the patent to stand the length of time it did without any attempt to have it amended. The reissue was made against law apparent on its face, and nothing is shown in the record to remove this illegality. The case is clearly within the principle laid down in Miller v. Brass Co., and the patent must be regarded as void so far as the

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new and expanded claims are concerned. As this leaves only the fourth claim to be considered, and as it is clear from the evidence in the case that the appellants did not infringe that claim, the decree of the circuit court must be affirmed.

(112 U. S. 396)

BATCHELOR v. BRERETON and another.

(December 1, 1884.)

POWER OF APPOINTMENT-DEED-EXECUTION OF POWER-TRUST.

S, the wife of B., joined with him in a deed to H. of land of B., in trust, for the use of S. during her life, and at any time, on the written request of S., and the written consent of B., to convey it to such person as S. might request or direct in writing, with the written consent of B. Afterwards B. made a deed of the land to W., in which H. did not join, and in which B. was the only grantor, and S. was not described as a party, but which was signed by S. and bore her seal, and was acknowledged by her in the proper manner. Held, that the latter deed did not convey the legal title to the land, and was not made in execution of the power reserved to S.

Appeal from the Supreme Court of the District of Columbia.

J. H. Bradley and A. B. Duvall, for appellant. A. S. Worthington and Leigh Robinson, for appellees.

BLATCHFORD, J. The question in this case relates to the proper distribution of the proceeds of the sale of a parcel of land in lot 9, in square 455, in the city of Washington, under a decree of the supreme court of the District of Columbia. William H. Brereton and Samuel Brereton, (also hereinafter called Samuel Brereton, Jr.,) being tenants in common of the land, Samuel and Sarah A., his wife, executed to Peter Hannay a deed dated September 29, 1859, of the land in *question, with some other land in lot 9, which was duly recorded. The deed names Samuel and his wife as the parties of the first part. It recites that Samuel, being seized of the one-half undivided interest in the land, desires to assign and convey the same in such manner that the said one-half interest shall inure to the benefit of the said Sarah A. during her natural life, and that to that end he executes the deed. By it, he conveys to Hannay, and to his heirs and assigns, forever, all his title to one-half of the land, "to have and to hold the said undivided one-half interest in the said lands and premises, to him, the said Peter Hannay, his heirs and assigns, in and upon the trusts hereinafter mentioned and declared, and for no other use, trust, or purpose whatsoever, in trust for the sole use and benefit of Sarah A. Brereton, * * the wife of the said Samuel Brereton, during her natural life, free from all ownership, control, and obligation to and for her said husband, except so far as herein provided for; to permit the said Sarah A. Brereton to receive the rents, issues, and profits of the said undivided one-half interest of said Samuel Brereton in and to said described lands and tenements, and the same to apply to and for her sole use and benefit; and upon this further trust, at any time hereafter, upon the written request of said Sarah A. Brereton, and the written consent of said Samuel Brereton, to sell, dispose of, or convey the said undivided pieces or parcels of ground and premises, absolutely, in fee-simple, in trust, or for such term or time, and for such uses and purposes, and to such person and persons, as the said Sarah A. Brereton, with the written consent of the said Samuel Brereton, may request or direct, in writing, as aforesaid." The deed further provides that, if Samuel shall survive Sarah A., the land shall revert to him; and that, if she shall survive him, the land, after her death, shall go to his heirs, or according to his direction given by will or other instrument in writing. Neither in the granting clause nor in the habendum is there any mention of the grant of any interest except the interest of Samuel.

The particular question in this case depends on the effect of a subsequent deed, dated June 1, 1874, and duly recorded. That deed begins thus: "This

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Indenture, made this first (1st) day of June, in the year of our Lord one thousand eight hundred and seventy-four, (1874,) between Wm. H. and Sam. Brereton, of the city of Washington, District of Columbia, parties of the first part, and Wm. H. Ward, of same city and district, of the second part. It then recites that William H. and Samuel owe to Charles Batchelor $3,500, on a promissory note made by them, payable to him three years after June 1, 1874, with interest at 10 per cent. per annum. It then proceeds: "Now, therefore, this indenture witnesseth that said parties of the first part" have conveyed and do convey to the party of the second part, his heirs and assigns, the land in question, with some land in lot 8, describing it, and all the title of the parties of the first part to it, to have and to hold in trust for the payment of said note, and with power, on default in its payment, to sell the land at auction, and convey it, and out of the proceeds of sale to pay the note. The deed concludes as follows: "In testimony whereof, the said parties of the first part have hereunto set their hands and seals;" and is signed thus: “WM. H. BRERETON, [L. 8.] SAM. BRERETON, [L. S.] S. A. BRERETON, [Seal.]"

To this deed is appended the following certificate:

"District of Columbia, County of Washington-ss.: I, B. W. Ferguson, a justice of the peace in and for the county aforesaid, do hereby certify that W. H. Brereton, Samuel Brereton, and Sarah A. Brereton, parties to a certain deed, bearing date on the first (1st) day of June, A. D. 1874, and hereto annexed, personally appeared before me, in the county aforesaid, the said W. H. Brereton, Samuel Brereton, and Sarah A. Brereton, his wife, being personally known to me to be the persons who executed the said deed, and acknowledged the same to be their act and deed; and the said Sarah A. Brereton, being by me examined privily and apart from her husband, and having the deed aforesaid fully explained to her, acknowledged the same to be her act and deed, and declared that she had willingly signed, sealed, and delivered the same, and that she wished not to retract it.

*“Given under my hand and seal, this twenty-third day of June, A. D. 1874. "B. W. FERGUSON, [Seal.] "Justice of the Peace."

On the thirtieth of May, 1876, Samuel Brereton died intestate, leaving him surviving his widow, the said Sarah A., and an infant son, James I., his only heir at law. Subsequently, Ward, the trustee under the deed of trust of June 1, 1874, and under another and prior deed of trust to him in favor of the same Charles Batchelor, advertised the land for sale at auction. Batchelor had died, and Mary Ann Batchelor had been appointed his executrix. To prevent this sale, Sarah A. Brereton, on the fourth of February, 1879, filed the bill in this suit, making as defendants James I. Brereton, William H. Brereton, Peter Hannay, William H. Ward, Mary Ann Batchelor, as executrix, and some other parties who claimed an interest in or lien on the land. The bill, after setting forth the trust deed to Ward, of June 1, 1874, avers: "Your oratrix further shows unto this honorable court that, although she sealed, signed, and acknowledged the conveyance" of June 1, 1874, "she did not otherwise join in it, nor is she mentioned therein as a party thereto; that said conveyance does not convey nor purport to convey any right, title, interest, or estate of your oratrix in and to said property, or the right, title, interest, or estate of any person or persons other than that of the said William and Samuel, whose alleged indebtedness said conveyance was designed to secure; and your oratrix is advised and believes, and so charges, that, except to renounce her dower interest in said property, to which your oratrix would have been entitled in case said deed from Samuel Brereton, Senior, to the defendants William Brereton and Samuel Brereton, Junior," (being the

668.