Such a bill presents a case of original equitable jurisdiction; not an appeal,14 The statutes do not authorize an injunction against the issue of a patent by the Commissioner to some one other than the plaintiff.15 An interlocutory injunction has been issued restraining the defendant from transferring his patent without leave of the court.1 16 The suit is not an appeal from the decision of the Patent Office.17 It has been described as "something in the nature of a suit to set aside a judgment." 18 The suit is a plenary suit in equity to which all the rules of practice and evidence in such suits apply.19 It has been held that the suit must be brought in the district in which the defendant is a resident.20 Upon an application to compel the issue of a patent, when application is made to have the bill taken pro confesso, the court. may require a copy of the proceedings in the patent-office and call for any competent evidence that the complainants may wish to offer.21 The testimony before the Patent Office is not competent evidence except in cases where the common law authorizes the introduction of secondary evidence.22 Admissions of the parties made in such proceedings are competent.23 Statements of witnesses before the patent office may be used upon cross examination and of contradiction when their attention has been called to them.24 The record of the proceedings in the patent office is also not competent except as above stated and that the plaintiff may show 14 Wheaton v. Kendall, 85 Fed. 666, 671; Appert v. Brownsville Plate Glass Co., 144 Fed. 115. 15 Illingworth v. Atha, 42 Fed. 141, 144. 16 Keystone Trading Co. v. Zapota Mfg. Co., 210 Fed. 456. 17 Morgan v. Daniels, 153 U. S. 120, 124, 14 Sup. Ct. 772, 38 L. ed. 657; Sutton v. Wentworth, C. C. A., 247 Fed. 493. 18 Morgan v. Daniels, 153 U. S. 120, 124, 14 Sup. Ct. 772, 38 L. ed. 657. 19 Dover v. Greenwood, 177 Fed. 946, reversed on another point, Greenwood v. Dover Mach. Co., C. Fed. 91. 20 Arbetter Felling Mach. Co. v. Lewis Blind Stitch Mach. Co., C. C. A., 230 Fed. 992. 21 Davis v. Garrett, 152 Fed. 723, 725. 22 Sutton v. Wentworth, 247 Fed. 493. 23 Ibid. that a judgment of priority has been rendered against him in order to establish his right to maintain his bill.25 The decision is subject to the ordinary Equity Rules that the evidence must be relevant to the issues made by the pleading, and proof cannot be admitted which tends only to show that, because of the prior state of the art, neither party is entitled to a patent.26 The court has power to decide the questions of priority without any exceptions or limitations; and when the decision of the patent office is based upon questions of law rather than upon any distinct finding of priority, the District Court of the United States will make an independent examination of the testimony and reach its own conclusions.27 Issues not raised in the Patent Office such as the patentability of the invention may then be considered.28 The order and proceedings of the Patent Office upon a prior application founded upon interference between the same parties cannot be considered by the court unless they are duly offered in evidence.2 29 It has been said: that such decision must be given weight in the nature of a departmental decision, and, to overcome it, the evidence must be of such character, and sufficient at least to require a clear conviction that it was erroneous.30 Where the question decided in the Patent Office was upon conflicting evidence the decision there made must be accepted as controlling upon that question of fact in any subsequent suit between the same parties unless the contrary is established by testimony which in character and amount carries through conviction.31 The fact that there was a diversity of opinion between. the members of the Circuit Court of Appeals was held to be a sufficient reason for following the decision in the Patent Office which had been affirmed by the District Court of Appeals when 25 Ibid. 26 Richards v. Meissner, 163 Fed. 957. 27 Wheaton v. Kendall, 85 Fed. 666. 28 Hansen v. Slick, 216 Fed. 164, 170. 30 Greenwood v. Dover, C. C. A., 194 Fed. 91. 31 Morgan v. Daniels, 153 Ú. S. 120, 125, 14 Sup. Ct. 772, 38 L. ed. 657; Gen. El. Co. v. Steinberger, 208 Fed. 699; Gold v. Newton, C. C. A., 254 Fed. 824; Richards v. Meissner, 163 Fed. 957. there was no testimony materially changing the record.32 It has been held: that where the evidence is identical the decision in the Patent Office is not conclusive; 33 but that when affirmed by the District Court of Appeals, it must be followed by a court which is not clearly convinced that the decision is wrong.34 The rule does not apply where the finding in the Patent Office was based on the absence of evidence upon the subject.35 It has been said that the rule applies to the decision of questions peculiar to the patent law such as the construction and scope of the application for the patent.36 In a suit to compel the issue of a patent, the court may construe the claims in issue; but cannot properly alter these claims since an alteration might affect the decision in a suit founded upon an interference.37 It has been held that a bill to compel the issue of a patent which has been refused, must be filed within one year after the refusal.38 § 148. Bills to restrain infringements of trade marks and unfair competition. The Trade Mark Act amongst other things provides: "That the Circuit 'now the District' and Territorial Courts of the United States and the Supreme Court of the District of Columbia shall have original jurisdiction, and the Circuit Courts of Appeal of the United States and the Court of Appeals of the District of Columbia shall have appellate jurisdiction of all suits at law or in equity respecting trade-marks registered in accordance with the provisions of this Act, arising under the present Act, without regard to the amount in controversy.' "The owner of a trade-mark used in commerce with foreign nations, or among the several States, or with Indian tribes, provided such owner shall be domiciled within the territory of the United States, or resides in or is located in any foreign 32 Gold v. Newton, C. C. A., 245 Fed. 824. 33 Gold v. Gold, C. C. A., 237 Fed. 84, 85. 84 Hercules Powder Co. v. Newton, C. C. A., 254 Fed. 906. 35 Courson v. O'Conor, C. C. A., 227 Fed. 890. 36 Gold v. Gold, C. C. A., 227 Fed. 84, 86. 87 Gen. El. Co. v Steinberger, 208 Fed. 699. 38 Westinghouse El. & Mfg. Co. v. Ohio Brass Co, 186 Fed. 518; citing U. S. R. S., § 4894, as amend ed 29 St. at L. 692, § 4, 5 Fed. St. Ann. 488, Comp. St. 3384, Pierce Fed. Code, § 8760. § 148. 133 St. at L. ch. 592, $ 17; Comp. St. § 9502. See § 30 supra, § 279 infra. country which, by treaty, convention, or law, affords similar privileges to the citizens of the United States, may obtain registration for such trade-mark by complying with the following requirements: First, by filing in the Patent Office an application therefor, in writing, addressed to the Commissioner of Patents, signed by the applicant, specifying his name, domicile, location and citizenship; the class of merchandise and the particular description of goods comprised in such class to which the trade-mark is appropriated; a statement of the mode in which the same is applied and affixed to goods, and the length of time during which the trade-mark has been used; a description of the trade-mark itself shall be included, if desired by the applicant or required by the Commissioner, provided such description is of a character to meet the approval of the Commissioner. With this statement shall be filed a drawing of the trade-mark, signed by the applicant or his attorney, and such number of specimens of the trade-mark as actually used as may be required by the Commissioner of Patents. Second, by paying into the Treasury of the United States the sum of ten dollars, and otherwise complying with the requiremnts of this Act and such regulations as may be prescribed by the Commissioner of Patents." 2 "The application prescribed in the foregoing section, in order to create any right whatever in favor of the party filing it, must be accorded, so far as the registration and protection of trademarks used on the products of such establishment are concerned, the same rights and privileges that are accorded to owners of trade-marks domiciled within the territory of the United States by the Act entitled 'An Act to authorize the registration of trade-marks used in commerce with foreign nations or among the several States or with Indian tribes, and to protect the same,' approved February twentieth, nineteen hundred and five. "The application prescribed in the foregoing section, in order to create any right whatever in favor of the party filing it, must be accompanied by a written declaration verified by the applicant, or by a member of the firm or an officer of the corporation. or association applying, to the effect that the applicant believes himself or the firm, corporation, or association in whose behalf 2 33 St. at L. 724, § 1 as amended 34 St. at L. 728; 35 St. at L. 728 (28) f., Comp. St. § 9485. 834 St. at L. 169, Comp. St. § 9486. he makes the application to be the owner of the trade-mark sought to be registered, and that no other person, firm, corporation, or association, to the best of the applicant's knowledge and belief, has the right to use such trade-mark in the United States, either in the identical form or in such near resemblance thereto as might be calculated to deceive; that such trade-mark is used in commerce among the several States, or with foreign nations, or with Indian tribes, and that the description and drawing presented truly represent the trade-mark sought to be registered. If the applicant resides or is located in a foreign country, the statement required shall, in addition to the foregoing, set forth that the trade-mark has been registered by the applicant, or that an application for the registration thereof has been filed by him in the foreign country in which he resides or is located, and shall give the date of such registration, or the application therefor, as the case may be, except that in the application in such cases it shall not be necessary to state that the mark has been used in commerce with the United States or among the States thereof. The verification required by this section may be made before any person within the United States authorized by law to administer oaths, or, when the applicant resides in a foreign country, before any minister, charge d'affaires, consul, or commercial agent holding commission under the Government of the United States, or before any notary public, judge, or magistrate having an official seal and authorized to administer oaths in the foreign country in which the applicant may be whose authority shall be proved by a certificate of a diplomatic or consular officer of the United States. "4 "Every applicant for registration of a trade-mark, or for renewal of registration of a trade-mark, who is not domiciled within the United States, shall before the issuance of the certificate of registration, as hereinafter provided for, designated, by a notice in writing, filed in the Patent Office, some person residing within the United States on whom process or notice of proceedings affecting the right of ownership of trade-mark of which such applicant may claim to be the owner, brought under the provisions of this Act or under other laws of the United 433 St. at L. 724, § 2 as amended, 35 St. at L. 627; Comp. St. § 9487; Swift v. Inland Nav. Co., 234 Fed. 375. |