Ugo Monaco and Montecatini Societa Generale Per L'IndustrIa Mineraria E Chimica Anonima v. Robert C. Watson, Commissioner of Patents
270 F.2d 335
D.C. Cir.
1959
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Ugo MONACO and Montecatini Societa Generale Per L‘Industria Mineraria E Chimica Anonima, Appellants v. Robert C. WATSON, Commissioner of Patents, Appellee

No. 14937

United States Court of Appeals District of Columbia Circuit

Argued May 13, 1959. Decided Aug. 27, 1959.

270 F.2d 335

Before EDGERTON, FAHY, and BURGER, Circuit Judges.

crime.” The court refused, stating: “No, I am going to order only the one thing.” Counsel persisted, however, by asking if he could “make an amendment in order to include an investigation that would also tie in the defendant‘s mental condition at the time the crime was committed?” Whereupon the court said: “I am not going to include that in the order.” Accordingly an order was entered directing an examination for the limited purpose of determining competency to stand trial.

The report of the examination conducted reads in its entirety as follows:

“Jacob Calloway was admitted to District of Columbia General Hospital July 18, 1958.

“Psychiatric examination reveals this patient to be sane, competent and capable of participating in his own defense.

“He may be returned to the Court at any time.”

Appellant was thereupon brought to trial. His sole defense was insanity.

This case is governed by our recent decision in

. There the prosecutor, in a pre-trial motion, sought “a complete and thorough mental examination.” But the examination ordered by the court was limited to consideration of the defendant‘s competency to stand trial. At trial, as in the present case,1 the limited scope of the examination conducted was apparent from the testimony of the psychiatrist who conducted it. On appeal from the conviction, we pointed out that proper determination of the issue of responsibility requires more extensive investigation than that required to determine competency to stand trial. As in
, therefore, this case is

Reversed and remanded.

Mr. Harry A. Toulmin, Jr., Washington, D. C., with whom Mr. F. E. Drummond, Washington, D. C., was on the brief, for appellants.

Mr. George C. Roeming, Atty., U. S. Patent Office, with whom Mr. Clarence W. Moore, Solicitor, United States Patent Office, was on the brief, for appellee.

PER CURIAM.

Appellants had been the losing parties in a Patent Office proceeding in which the board of patent interferences adjudged a different applicant, Paul H. Hoffman, to be the prior inventor. Instead of appealing to the Court of Customs and Patent Appeals, appellants elected to sue in the District Court under 35 U.S.C. § 146 to require the Commissioner to issue the patent to them. That suit is pending in the District Court and is not before us. In a second suit, appellants seek to restrain the Commissioner from issuing the patent to Hoffman while the first suit is pending. The present appeal is from a judgment for the defendant in the second suit.

The statute provides that the “question of priority of invention shall be determined by a board of patent interferences * * * and the Commissioner may issue a patent to the applicant who is adjudged the prior inventor.” 35 U.S.C. § 135. We think this means just what it says. We see nothing to suggest that applicants who, like these appellants, are adjudged not to be prior inventors, can require the Commissioner to withhold the patent while they sue for it under § 146.

The policy of the statute is clear. The decision of the board of patent interferences is presumably, though not conclusively, correct. If Hoffman, to whom the board awarded priority, gets the patent, he gets no more than is presumably his. To withhold the patent from him for the benefit of applicants who presumably are not entitled to it would serve no useful purpose. If the appellants win their suit under § 146 their rights will be protected, even if the Commissioner has issued the patent to Hoffman in the meantime, for § 135 provides that a “final judgment adverse to a patentee * * * shall constitute * * * cancellation of the patent * * *.”

Pursuant to

, the Commissioner withholds patents while appeals from the Patent Office are pending in the Court of Customs and Patent Appeals. That decision and that practice do not concern us. Appellants’ suit under § 146 “is de novo and not an appeal.”
. “It is an application to the court to set aside the action of one of the executive departments of the government.”
.

Affirmed.

BURGER, Circuit Judge (dissenting).

Under the holding of the Court of Customs and Patent Appeals in

, the Commissioner of Patents has no jurisdiction to issue a patent to a winning party in an interference proceeding during the pendency of the loser‘s appeal to the CCPA. It is not a matter of discretion, and so the Commissioner conceded in the District Court, although he argues to the contrary here.

For purposes of the Commissioner‘s interim jurisdiction I can see no difference between an appeal to the CCPA under 35 U.S.C. § 141 and a suit for review in a District Court under 35 U.S.C. § 146. Before

but subsequently to
(relied on here by the Commissioner), the Act of 1927 had amended Rev.Stat. § 4915 (1875) so that an appeal to the CCPA or a bill in equity in the District Court were mutually exclusive remedies with identical time limitations. 44 Stat. 1336 (1927). These are provisions analogous in every material respect to present 35 U.S.C. §§ 141 and 146. Thus, although there have historically been differences between these two methods for reviewing a decision in an interference proceeding, the two routes are now procedurally the same and should therefore have the same effect upon the jurisdiction of the Commissioner.

The statute which the Commissioner contends compels him to issue the patent without delay, 35 U.S.C. § 135, had an exact counterpart in force when the CCPA decided

. Rev.Stat. § 4904, as amended, 53 Stat. 1212 (1939). This statute clearly makes no distinction between the two routes for review, nor does reason suggest why any such distinction should be made.

I would therefore hold that the Commissioner of Patents does not have jurisdiction to issue a patent until after the termination of proceedings brought under 35 U.S.C. § 146.

Notes

1
In the instant case, the prosecution called the psychiatrist who had examined appellant seven weeks after the alleged offense for the purpose of determining his trial competency. The witness testified that in his opinion appellant was free from mental disease or defect at the time of the alleged offense. He based this opinion on information elicited from appellant that, at the time in question, he had no hallucinations, felt no panic and was able to recognize his surroundings. For all that appears in the record before us, the witness obtained all of his information from appellant. Thus, although appellant blamed his marital difficulties, it is not shown that the psychiatrist obtained any information from appellant‘s wife. Nor does it appear that the psychiatrist had the benefit of any information from appellant‘s employer or co-workers, who testified at the trial that after 1956 appellant had changed “terribly,” that he stared into space, talked to himself, was upset, moody, brooding, and looked like he was going to “crack up.” It may be that the psychiatrist viewed this information as unnecessary for a determination of trial competency. But such information is an essential part of the supporting data which makes the expert‘s opinion meaningful upon the issue of criminal responsibility.
;
.