A re-issued patent has the same effect and operation in law, on the trial of all actions for causes subsequently arising, as though the patent had been originally issued in such corrected form. From this it appears that after a re-issue no action can be brought for a past infringement of the patent. But, as the bare use of a patented machine is (if unauthorized) an infringement of the rights of the patentee, a machine constructed and lawfully used prior to the re-issue may be an infringement of the patent if used after wards. The re-issued patent will expire when the original patent would have expired.
All matters of fact relating to a re-issue are finally settled by the decision of the com missioner, granting the re-issue; but it may be shown that the commissioner has exceed ed his authority in granting a re-issue for an invention different from the one embraced in the original patent ; Seymour v. Osborne, 11 Wall. (U. S.) ) 516, 20 L. Ed. 33. Where a re-issue is sought on the ground of inad vertent errors, rendering the patent inopera tive, the decision of the commissioner upon the questions of fact relating to inoperative ness and inadvertence will not be re-examin ed by the courts; Beach v. Hobbs, 82 Fed. 916.
In a suit brought under R. S. § 4915, to obtain a re-issue refused by the patent office, the right of the complainant is to be deter mined on all the competent evidence, and not merely on the patent office record ; Inger soll v. Holt, 104 Fed. 682.
Where the only mistake suggested is that the claim is not so broad as it might have been, the mistake was apparent on the first inspection of the patent, and any correc tion desired should have been applied for immediately ; the right to a correction may be lost by unreasonable delay. The claim of a specific device, and the omission to claim other devices apparent on the Ace of the patent, are in law a dedication to the public of that which was not claimed, and the legal effect of the patent cannot be re yoked unless the patentee surrenders it and proves that the specification was so framed by real inadvertence, accident, or mistake, and this should be done with due diligence and before adverse rights have accrued. It was not the special purpose of the legisla tion to authorize re-issues with broader claims, though such a re-issue may be made when it clearly appears that there has been a bona Tide mistake, such as chancery in cases within its ordinary jurisdiction would correct. The specifications cannot be sub
stantially changed, either by the addition of new matter or the omission of important particulars, so as to enlarge the invention as intended to be originally claimed; Pattee Plow Co. v. Kingman, 129 U. S. 294, 9 Sup. Ct. 259, • 32 L. Ed. 700. The re-issue is an amendment and cannot be allowed unless the imperfections in the original patent arose without fraud, and from inadvertence, accident, or mistake; Dobson v. Lees, 137 U. S. 258, 11 Sup. Ct. 71, 34 L. Ed. 652. The re-issued patent is not a new patent ; and an existing contract concerning the patent be fore its surrender applies equally to it after the surrender and re-issue; McBurney v. Goodyear, 11 Cush. (Mass.) 569.
A re-issue can cover only what an ex amination of the original shows the orig inal was intended to embrace; Flower v. De troit, 127 U. S. 563, 8 Sup. Ct. 1291, 32 L. Ed. 175; and not that which the original did not describe or claim ; Dunham v. Mfg. Co., 40 Fed. 667; though shown in the draw ing; Marvel Buckle Co: v. Mfg. Co., 180 Fed. 1002, affirmed in 196 Fed. 1006, 115 C. C. A. 672. It can enlarge a claim by omit ting an element previously claimed as es sential ; Matthews v. Mfg. Co., 124 U. S. 347, 8 Sup. Ct. 639, 31 L. Ed. 477. A re-issued claim may be broader ; Weber v. Mfg. Co., 190 Fed. 189. Claims cannot be enlarged so as to cover matter already in public use aft er unreasonable delay ; Flower v. Detroit, 127 U. S. 563, 8 Sup. Ct. 1291, 32 L. Ed. 175. If not for the same invention, the re-issue is void; Freeman v. Asmus, 145 U. S. 226, 12 Sup. Ct. 939, 36 L. Ed. 685.
A claim restricted by the patent office in the first re-issue cannot be enlarged by sub sequent re-issues; Yale Lock Mfg. Co. v. James, 125 U. S. 447, 8 Sup. Ct. 967, 31 L. Ed. 807. A re-issue which brings in a claim originally rejected by the patent office with the acquiescence of the applicant, is void; Yale Lock Mfg. Co. v. Bank, 135 U. S. 342, 10 Sup. Ct. 884, 34 L. Ed. 168; but a re issue may correct errors occasioned by the mistaken ideas raised in the patent office; Hutchinson v. Everett, 33 Fed. 502. Both the specification and the claims may be cor rected by a re-issue; Riffles v. Stove Co., 16 Fed. 240.