
    United States, ex rel. Horace Koechlin and Otto N. Witt, vs. Edgar M. Marble, Commissioner of Patents.
    Law. No. 23,740.
    < Decided June 5, 1882.
    { The Chief Justice and Justices Cox and James sitting.
    1. Whether, in an application for a mandamus to compel the issuance of letters-patent for an invention, the Secretary of the Interior, and not the Commissioner of Patents, should be made the party respondent, qucere.
    
    2. Congress, in creating the Patent Office, has by express legislation given that office the power to enact rules for its conduct; those rules, if within the powers of the Office and reasonable, are just as authoritative as the laws of Congress itself.
    3. There is nothing unreasonable in the requirements of Rule 39 of the Patent Office, and, where it has not been complied with, this court will not issue a mandamus to compel the issue of a patent, although the invention be new and useful.
    4. An inventor receiving a patent in the first instance in this country is entitled to seventeen years’ protection of his invention, but if he has previously obtained letters-patent in one or more foreign countries, then, while not deprived of his right to a patent here, the term to which the law in such case limits his protection is a period not extending beyond the date of the expiration of that one of the foreign patents first expiring.
    5. In the construction of statutes in pari materia, they are all to be kept alike in view, and construed in the light of each other, and their effect considered under such construction.
    STATEMENT OE THE CASE.
    This was an application for mandamus against the Commissioner of Patents commanding him to issue letters-patent to the relators for their invention, and ordered to be heard in the General Term in the first instance.
    The petition sets forth that the relators, Horace Koeehlin, a citizen of Prance, and Otto N. Witt, a citizen of Switzerland, residents respectively of Loerrach and Mulhouse, in the empire of Germany, did, on the 22d day of March, 1882, make application for letters-patent of the United States for certain improvements in the production of blue and violet coloring matters. That their said application was examined by the said Commissioner of Patents-and their said invention found to be new and useful and entitled to protection by the grant of letters-patent ; whereupon an official, circular of allowance was issued by the said Commissioner on the 28th day of April, 1882, and the final fee required by law was paid by relators on the 4th day of May, 1882, and that thereupon it became- the duty of the said Commissioner to issue to relators letters-patent of the United States for their said invention. Yet the said Commissioner has refused and still refuses to issue said letters for said invention to the great and irreparable injury of relators, who have no other remedy except that herein prayed for. The petition concludes with a prayer for an alternative writ of mandamus against the Commissioner, commanding him to issue letters-patent to relators for their said invention or to show cause for his refusal so to do.
    A rule to show cause having issued, the respondent, in his return, admitted the filing of the application for letters-patent and the allowance by the examiner, also the notice to the applicants of said allowance and the payment by them of the final fee of twenty dollars, but set forth that on an examination of the papers it was found that the applicants in the oath filed with their application had stated that their invention had been patented, before the filing of said application in France, by a patent dated March 19, 1881; in England, March 28, 1881; in Belgium, April 4, 1881; and in Sweden, July 30, 1881; and it was also recited in said oath that a patent had been applied'for in Austria, but that none had been yet issued. Whereupon applicants were called upon, under Buie 39 of the Buies of Practice of the Office, to state whether or not a patent had issued to them in Austria, and to give the date and number of the same. This request was based on the requirement of Section 4887 of the Be vised Statutes of the United States, which provides that every patent granted where the invention has been first patented in a foreign country, shall be so limited as to expire when the foreign patent expires, and if more than one such patent has been issued, then with the one having the shortest term to run. It appearing in the affidavit that a patent had been applied for in Austria at some time not named, it was deemed proper that applicants should state whether such patent had issued, and, if so, to give its date and number. Patents may issue in Austria for fifteen years, or any lesser period, and if a patent had already issued, then the patent issued by this office should be limited so as to expire at least when the Austrian patent would expire. Such oath not having been filed by the applicants, the patent was withdrawn from issue. The only reason, therefore, why the patent was-not issued is because applicants have not complied with what is deemed to be a proper requirement in the Office, and in accordance with the decision of the Secretary of the Interior, dated April 10,1882. 21 Official Gazette, page 1197.
    In conclusion it was submitted that the writ of mandamus-should be denied for the following reasons:
    First. Because the requirement of the Office in this case was reasonable and just in the proper administration of the Office under the section of the statute above referred to.
    Second. Because applicants were not remediless without the aid of the writ of mandamus, for if the patent was improperly withheld it is within the directory powers of the Secretary of the Interior, under Section 481 of the Revised Statutes, to have given him the relief sought in this court.
    Third. Because the issue of the patent has not been refused applicants, but they have simply been required to fill an oath which shall determine the length of life of the patent when issued.
    A. Polloic for relators.
   Mr. Chief Justice Cartter

delivered the opinion of the court.

Preliminary to the decision in this case, we make the suggestion that this application for mandamus is not made against the right party. My recollection is that the Secretary of the Interior is the officer of the Government who issues letters-patent, and that we had occasion some time ago to dismiss an application for a mandamus for the reason that the relator had misconceived the party to be proceeded against, and if no other reason existed for a dismissal of the petition in this case, want of the proper parties might be sufficient. That question, however, was not presented, nor has it been particularly considered by us.; Our conclusion is predicated upon the substance of the petition, and our enquiry has been whether we could grant th'e relief even if the proper party was before us; and that inquiry has brought us to a consideration of the force and effect of a rule of the Patent Office. Congress, in creating the Patent Office, has by express legislation given that office the power to enact rules for its conduct. Those rules, if they are within the powers of the Office, are just as authoritative as the laws of Congress itself, if within the limitations of its powers. If, therefore, Rule 39 of the Patent Office is a reasonable one, the Commissioner of Patents has only exercised a power vested in him by law.

The language of Rule 39 is as follows:

“ In every original application the applicant must distinctly state, under oath, whether the invention has been patented to himself or to others with his consent or knowledge in any country, and if it has been, the country or countries in which it has been so patented, giving the date and number of each patent, and that it has not been patented in any other country or countries than those mentioned, and that, according to his knowledge and belief, the same has not been in public use in the United States for more than two years prior to the application in this CQuntry.”

We see nothing unreasonable about this rule. On the contrary, we think it a very reasonable one. The applicant is merely required to make oath in reference to a matter of which he of all persons ought to be best informed.

Section 4887 of the Revised Statutes of the United States, regulating the issuing of patents, provides:

“No person shall be debarred from receiving a patent for his invention or discovery, nor shall any patent be declared invalid by reason of its having been first patented or caused to be patented in a foreign country, unless the same has been introduced into public use in the United States for more than two years prior to the application. But- every patent granted for an invention which has been previously patented in a foreign country shall be so limited as to expire at the same time with the foreign patent, or, if there be more than one, at the same time with the one having the shortest term, and in no case shall it be in force more .than seventeen years.”

All that the Commissioner of Patents has required of these applicants is, that in view of the provisions of this law they shall state under oath what patents they have obtained in foreign countries. This the applicants have refused to do, and the reason disclosed in their argument here is that one of these patents hás but three years more to run in that country. Now the natural life of a patent originally obtained in the United States is seventeen years, but if the applicant’s invention has been previously patented in Europe, then a patent can only issue in the United States for a period limited to expire with that one of the foreign patents which shall first expire. The reason given by the applicants for their non-compliance with the rule is, that the only power of the Commissioner is to issue a seventeen years’ patent, and they argue that the clause of the statute providing for a seventeen years’ term for the first inventor of any new and useful article, being inconsistent with the provisions in regard to patents obtained in foreign countries, consequently overrules it.

As the provision, however, in regard to letters-patent issuing for a term of seventeen years applies only to patents first obtained in this country, the point made by the applicants is without force.

It is a -well-known rule in the construction of statutes in pari materia that they are a.11 to be kept alike in view, and construed in the light of each other, and their effect to be considered under such construction. Applying this rule in the reading of these statutes, we find the law declaring that an inventor t.aking out a patent in the first instance in this country, is entitled to a seventeen years’ protection, but if he has previously obtained letters-patent in one or more foreign countries, then while not deprived of his right to a patent here, the term to which the law in such case limits his protection, is a period not extending beyond the date ox the expiration of that one of the foreign patents first expiring. That is the law; whether it be wise or unwise is something with which we have nothing to do. It is .a matter of legislative discretion, and not a question for this court. All that concerns us is the compatibility of the statutes, and we think they are perfectly so. The lay? makers were legislating in regard to different conditions of the same subject, and they have made the law clear and express, and neither we nor the Commissioner of Patents can disregard it.

Even, therefore, were the proper parties before us, with the case as made out, we should discharge this rule, and it is so ordered.  