In re Mattullath
38 App. D.C. 497
D.C. Cir.
1912
Check Treatment
Mr. Chief Justice Shepard

delivered the opinion of the Court:

1. The right to appeal from a final decision of the Commissioner of Patents is determinable by its substance and effect, rather than its form. Moore v. Heany, 34 App. D. C. 31-39; Re Selden, 36 App. D. C. 428-431. The appeal in Set den’s Case was from a decision holding that the application had been abandoned for lack of prosecution within two years. The right to appeal was maintained. Discussing the point, Mr. Justice Robb, delivered the opinion of the court, said: “The question, is whether the striking down of an application on the ground of abandonment amounts to a rejection of the claims thereof, within the meaning of the statute. Of course, if such action on the part of the Commissioner is in effect a rejection of the claims *509óf the application, the court will look to such result rather than to the manner in which it is reached. Substance should never be sacrificed to form.” In that case, as in this, the lapse of time rendered the order tantamount to a complete rejection of the claims, as a new, original application would be practically unavailing.

2. Sec. 4894, Rev. Stat., U. S. Comp. Stat. 1901, p. 3384, governs the abandonment and renewal of applications for patents. It requires that all applications for patents shall be completed and prepared for examination within one year after filing, and in default thereof, or upon failure to prosecute the same within one year after any action therein, of which notice shall have been given to the applicant, they shall bo regarded as abandoned by the parties thereto, unless it be shown to the satisfaction of the Commissioner of Patents, that such delay was unavoidable.

It is contended on behalf of the Commissioner that the question of unavoidable delay is one for the exclusive determination of the Commissioner, and his decision is conclusive. The decisions relied on were made in infringement suits where the Commissioner’s decision that delay was unavoidable was the subject of collateral attack. On direct appeal from his decision denying renewal, and therefore substantially rejecting the application, the situation is very different. While, ordinarily, the exercise of discretion in matters arising in the course of the litigation will not be disturbed unless it has been abused, nevertheless it is subject to review along with other rulings affecting the rights of the parties, and will be disturbed where the error in its exercise is plainly shown, and works material hardship and injustice. Kinsman v. Strohm, 31 App. D. C. 581 — 585. In that case, it is true, the exercise of discretion in reviewing an application was not disturbed, for the reasons given, but the opinion recognizes the power to do so upon sufficient grounds. Sec. 4894, Rev. Stat. does not, in terms, limit this power of review as was the case in some decisions cited. But it is not necessary to discuss this particular question further. In view of the opinion expressed in Selden’s Case, (36 App. D. C. p. *510435), it is admitted by counsel for the Commissioner, that where the question of abandonment is one of law, and not of fact, the action of the Commissioner is not conclusive. In this case the facts are specifically presented in the supporting affidavits. They are clear in their application to every point, and have not been denied. They are, in fact, substantially admitted to be true in both of the decisions heretofore quoted. It appears from the record of proceedings in the Office that the objections to the claims of the application were formal and might, it is reasonable to believe, have been met by amendment. The substantial ground of rejection was inoperativeness, because it was then seriously doubted, if not generally denied, that aerial flight could' be accomplished in heavier-than-air machines. During the time that has elapsed since that objection was made, the doubt has been removed. As said by the Commissioner: “In the meantime dynamic flight, the age-long dream of man, had become an accomplished fact. Others had succeeded in actually flying in heavier-than-air machines, had obtained patents on their inventions, and were reaping the just rewards of their efforts.” In view of this statement it is not probable that the objection to operativeness, on the ground urged, would now be permitted to stand. The date of the application, and the description therein, demonstrate that the deceased Mattullath was, if not the first, one of the very first, to devise means to accomplish the realization of this “age-long dream.” That others have, in the meantime, entered the field, obtained patents, and are reaping the rewards of their efforts, is ho bar to this earlier application, unless the delay in reviving the application was avoidable. The Commissioner was in error, we think, in saying that the presumption is conclusive against the existence of acceptable excuse for delay, under the circumstances, on the ground that “to hold otherwise would be to encourage those who had slept upon their rights, while others struggled on to success, to now enter the field and wrest from them the fruits of their labors.” The purpose and policy of the patent law are to give the patent to the first inventor, unless he has, by his own fault, subordinated his right to a more diligent inventor. The *511question upon which the right of renewal depended was whether the representatives of Mattullath had “slept upon their rights.” The delay in reviving the application would, in reasonable probability, not have occurred but for the strange action of the Office in acting upon some unexplained source of knowledge of the death of the applicant, and holding that the death absolutely and at once revoked the power of attorney of his solicitors. The amendments proposed by them, presumably without knowledge of their client’s death, were formal; they contained no amplification of the original application and required no additional oath. That the power to make such an amendment liad not been revoked by death, and that action could have been taken upon it lawfully, had been declared by the Supreme Court in a decision rendered in January, 1893, De La Vergne Refrigerating Mach. Co. v. Featherstone, 147 U. S. 209-229, 37 L. ed. 138 — 145, 13 Sup. Ct. Rep. 283. This decision ought to have been well known in the Office. Strange to say, that, notwithstanding this determination of the revocation of the auhority of the solicitors duly entered of record, the order of the former Washington representative of the original solicitors, dated August 14, 1909, to permit a person having no relation to the interested parties, to inspect the application and drawings, was accepted, filed, and, presumably, acted upon.

Why the solicitor should have undertaken to exercise an authority which he knew had been declared revoked, or why, in view of the former order of revocation, he should have been permitted to exercise it, are facts that are unexplained, and seem inexplicable on any reasonable ground. Instead of declaring the authority of the solicitors revoked, and refusing to recognize them for any purpose, it would have been eminently proper to notify them of the death of their client, and suggest the propriety of obtaining a renewal from his legal representatives, meanwhile suspending action for a reasonable time for the purpose. Had this been done, the solicitors would have been under obligation to inquire for, and notify the intestate’s representatives of the situation. They have attempted in the letter of November 20, 1909, to relieve themselves of the moral obligation *512to give notice by saying that they did not know the address of their client’s family. It is contended that notice to the solicitors was the equivalent of notice to the representatives; and that their negligence is to be imputed to petitioner. We do not agree with this. Their negligence in conducting the proceedings, while the relation of client and attorney continued to be recognized in the office, could be imputed to the applicant. But it is unreasonable to argue that their neglect was the neglect of the petitioner, when the Office had declared their authority ended. Moreover, they were never the attorneys of the deceased applicant’s representatives. Notwithstanding this express revocation, no attempt was made by the Office to notify the widow, which it is said by the Commissioner it was under no obligation to do, even if aware of her name and address. Bule 20 is the only Office rule regarding notice in case of the revocation of a power of attorney, and this the Commissioner held did not require notice to the applicant. The rule, construed literally, does not seem to require notice to the applicant’s representatives, but such construction is within its spirit. At any rate, the widow and children of the deceased applicant had no notice, and it clearly appears that they had no knowledge of the pending application, and were in possession of no facts or circumstances sufficient to'put them upon inquiry.

Mattullath left no property whatsoever, and his widow, a woman of sixty-two years of age, was dependent upon one of her children. The family was without means. Seeking the advice of a friendly attorney, — not a patent solicitor, — the widow was advised to write to such persons as might be aware of her husband’s interests. This was promptly done. The only reply received was from Washington, and gave no information • nor did the writer suggest inquiry at the Patent Office. That he was interested in the subject-matter, and doubtless knew that inquiry at the Office might obtain certain knowledge, appears from the fact that he is the same person who, in 1909, obtained the permit to examine the Office files in this case. The attorney, upon whose advice the letter of inquiry had been addressed, evidently did not know that information might be had at the *513Patent Office. That she was then acting with diligence and in good faith cannot be denied. All sources of information seeming fully exhausted, she remained quiet until stirred into renewed activity by the information of the representative of some other patentee of a flying machine who was engaged in an infringement suit. Probably his information had been obtained through access obtained to the application file, for it was that person who informed the party of the fact. However that may be, she began in good faith to ascertain her rights. Unable to pay attorneys’ fees, she procured the services of a charitable attorney, who exacted no charge, and managed to raise the sum of $41 to pay the actual cost of correspondence, copies, etc. The lingering illness of this charitable attorney prevented his filing the petition for renewal. With reasonable diligence she procured the services of another attorney, who proceeded with diligence to file the petition and prosecute the same. It is argued that there was utter failure in the exercise of diligence in that petitioner failed to make inquiry at the Patent Office, because it is a matter of law, with knowledge of which she must be charged. It is said in the printed argument: “It is academic that ignorance of the law excuses no one.” Without pausing to consider the many exceptions to the rule that ignorance or mistake of law excuses no one, it is sufficient to say that there is no just foundation for the application of the general rule in this case. There is no statutory or other rule of law requiring parties to apply for information at the Office: It is a fact that information concerning applications for patents ■will be furnished to the applicant or Ms legal representatives or assigns. It is not at all wonderful that a woman like the petitioner should have been ignorant of this fact, especially as it seems not to have been known to the lawyer who advised her where to seek information. Nor is it at all remarkable that she should not have known, in making her inquiries, that there was an essential difference between an application and a patent. It plainly appears from her sworn statements that she did not know this difference, or that she could obtain information of *514tlie application, by applying to tbe Office. It was ignorance of a fact, not of law.

3. Tbe next question is upon tbe intention of Congress in enacting sec. 4894, and the meaning to be given to tbe word “unavoidable” therein.

In tbe argument on behalf of tbe Commissioner it is said: “Tbe decisions of tbe various Commissioners of Patents, upon tbe meaning to be attached to tbe words “unavoidable delay” in tbe statute, have not been always uniform or altogether consistent.” As an instance of tbe extreme view of strict construction, be cites tbe decision of Commissioner Butterworth in Ex parte Klenha, 28 Off. Gaz. 1272; C. D. 39. He declares it a statute of limitation, to be enforced with all tbe rigidity of tbe old statute of limitations at common law. This construction would render it practically impossible to show any delay that would be unavoidable. On tbe other band, Commissioner Hall has given the statute a liberal construction. We quote from bis opinion in Ex parte Pratt (39 Off. Gaz. 1549; 1887 C. D. 31):

“The word ‘unavoidable’ as used in sec. 4894, Revised Statutes, U. S. Comp. Stat. 1901, p. 3384, is one of very broad significance. In its application to many relations it would exclude everything but tbe ‘King’s enemies’ or an act of God. I do not believe such a construction would be a fair interpretation of tbe statute. Tbe statute is one regulating a mere practice in the Office, and is not intended to affect substantial rights as between different persons or between persons and tbe government. It is rather a provision by which a statutory limitation may be removed. Its purpose is to encourage diligence in proceedings before tbe Office. If tbe broad and unlimited meaning of tbe word ‘unavoidable’ were to prevail, it is difficult to conceive when an abandoned case could be reinstated under this section. In my opinion, tbe word is used in a more limited sense. It is applicable to ordinary human affairs, and requires no more or greater care or diligence than is generally used and observed by prudent and careful men in relation to their most important business. It permits them, in tbe exercise of this *515care, to rely upon the ordinary and trustworthy agencies of mail and telegraph, worthy and reliable employees, and such other means and instrumentalities as are usually employed in such important business. If unexpectedly, or through the unforeseen fault or imperfection of these agencies and instrumentalities, there occurs a failure, it may properly be said to be unavoidable, all the other conditions of good faith and promptness in its ratification being present.”

The Commissioner seems to have leaned toward the strictness of the construction first mentioned. We approve, in general, the doctrine expressed by Commissioner Hall. The first construction is technical, hard, and narrow. The second is broad and liberal, breathing the spirit of equity, and more in accord with the general policy of our patent laws. See Smith v. Goodyear Dental Vulcanite Co. 93 U. S. 486-491, 23 L. ed. 952, 953. Tested by the standard of diligence above declared, we are of the opinion that the delay in this case has been shown to be unavoidable in the proper sense of the statute. The petitioner has not “slept upon her rights,” and is entitled to the relief which she seeks. Its denial would work a great hardship, unjustified by her conduct, upon the penniless widow of a deceased inventor of merit, who died almost at the point of success, leaving the invention as his only property.

The decision will be reversed. As heretofore suggested, it is improbable that the objection to operativeness will now be insisted upon; but there may be particulars in which the interests of both public and the inventor may be conserved by reasonable amendment. As in the Case of Selden, 36 App. D. C. 435, the reversal will be with direction to set aside the order of abandonment, and reinstate the application. It is so ordered, and the clerk will certify this decision to the Commissioner of Patents.

Reversed.