“There is a public interest not only in awarding a patent to the first inventor but also in not awarding it to one who has by abandonment of his application taken a first step in perhaps depriving the public of knowledge of his invention.”
How later courts described this case
- “There is a public interest not only in awarding a patent to the first inventor but also in not awarding it to one who has by abandonment of his application taken a first step in perhaps depriving the public of knowledge of his invention.”
Written by the judges who cited it.
The opinion
SMITH, Judge
(concurring).
The majority opinion reaches what I consider to be the proper result in this case and I fully agree with it. The purpose of this concurring opinion is to point out wherein I disagree with the views expressed in the dissenting opinion. To do so requires but a brief recital of facts which are not discussed in the-dissenting opinion but which in my opinion make 35 U.S.C. § 133 determinative-of the issue.
After the final rejection of June 19, 1959, Lorenz submitted an amendment, on December 7, 1959. This amendment was not entered. This is clear from the-examiner’s letter of December 23, 1959-which states:
“The amendment dated December 7, 1959 has been considered. If and when requested, the amendment will be entered for purposes of appeal only.” [Emphasis added.]
Thus, on December 23,1959, more than-. 6 months after the final rejection, there was no responsive amendment entered in. the case. Appellant might well have requested entry of the amendment for purposes of appeal but in order to prevail presumably would have been required to-show to the satisfaction of the Commissioner that the delay in so requesting its entry “was unavoidable.” Instead, this-record shows that appellant did nothing. Thus, it seems to me that 35 U.S.C. § 133 is controlling. Under these circumstances, applicant had not prosecuted the-application within 6 months from the-date of the final rejection and this section of the statute requires that in such case-the application “shall be regarded as abandoned by the parties thereto.” The-abandonment stands “unless it be shown to the satisfaction of the Commissioner that such delay was unavoidable.” It is-clear from the record here that appellant, made no such showing.
There is no provision in Title 35 U.S.C. which authorizes the sua sponte revival, by the Patent Office of an application which has become abandoned under 35-U.S.C. § 133. Section 133 authorizes revival of such an abandoned application only upon a showing “to the satisfaction *896 ■of the Commissioner” that the delay was unavoidable. There is no such showing here.
It seems to me that it but confuses the issue to concern ourselves with the respective authority of the examiner and the Commissioner in this situation. The fact is that the statute itself requires a showing of unavoidable delay to overcome the abandoned status of an application where the abandonment results from the failure of the applicant to respond timely to an office action.
Likewise I find it irrelevant to discuss the relative position of the parties in an Interference proceeding. Abandoning an application under the conditions specified in section 133 may be some evidence of an intent either to abandon the invention or to conceal it, within the meaning of 35 U.S.C. § 102 (c) and (g).
There is a public interest not only in awarding a patent to the first inventor but also in not awarding it to one who has by abandonment of his patent application taken a first step in perhaps depriving the public of knowledge of his invention. In such a situation the reasoning in Mason v. Hepburn, 13 App.D.C. 86, 95-96 (1898), seems to be particularly appropriate. The court stated:
“Considering, then, this paramount interest of the public in its bearing upon the question as presented here, we think it imperatively demands that a subsequent inventor of a new and useful manufacture or improvement who has diligently pursued his labors to the procurement or a patent in good faith and without any knowledge of the preceding discoveries of another, shall, as against that other, who has deliberately concealed the knowledge of his invention from the public, be regarded as the real inventor and as such entitled to his reward.
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"The true ground of the doctrine, we apprehend, lies in the policy and ■spirit of the patent laws and in the nature of the equity that arises in favor of him who gives the public the benefit of the knowledge of his invention, who expends his time, labor, and money in discovering, perfecting, and patenting, in perfect good faith, that which he and all others have been led to believe has never been discovered, by reason of the indifference, supineness, or wilful act of one who may, in fact, have discovered it long before.”