Ugo Monaco and Montecatini Societa Generale Per L'IndustrIa Mineraria E Chimica Anonima v. Robert C. Watson, Commissioner of Patents

270 F.2d 335, 106 U.S. App. D.C. 142, 122 U.S.P.Q. (BNA) 564, 1959 U.S. App. LEXIS 5411

Opinions

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 In re Allen, 115 F.2d 936, 28 CCPA 792, 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.” Knutson v. Gallsworthy, 82 U.S.App.D.C. 304, 314, 164 F.2d 497, 507. “It is an application to the court to set aside the action of one of the executive departments of the government.” Morgan v. Daniels, 153 U.S. 120, 124, 14 S.Ct. 772, 773, 38 L.Ed. 657.

Affirmed.