'In the case of Kendall v. United States, it was decided in this court, that the Circuit Court for Washington County, in the District of Columbia, has the power to issue a mandamus to an officer of the Federal government commanding him to do a ministerial act.'
The act of Congress of 3d March, 1863, which established the Supreme Court of the District of Columbia, in section third, says:
'The Supreme Court organized by this act shall possess the same powers and exercise the same jurisdiction as is now possessed and exercised by the Circuit Court of the District of Columbia,' &c.
II. Is the commissioner of patents commanded by law to examine, or cause to be examined, a proper and lawful application for a reissue, and does the writ of mandamus lie to enforce that command?
The relator holds, that when an application for a reissue is made in due form of law, it is the duty of the commissioner to examine it, and take such action upon the case as will enable the applicant to appeal from his decision if it be unfavorable. To this the commissioner objects, that the relator is not entitled to apply for a reissue, because he does not own the entire patent; that the legal question involved is preliminary, and determinable by him alone, without appeal; and refuses to put the case upon the files of the Patent Office in such form, that his refusal to grant the reissue, would give the applicant an appeal to a Justice of the Supreme Court of the District of Columbia. And the object in praying for the writ was, that the commissioner might be compelled to 'examine' this case. Before the examination can be made, the case must be duly filed, and then, if the commissioner refuses the patent, for any reason, we are entitled to an appeal; but as long as the commissioner keeps us completely out of the Patent Office, we are subject to his will, which deprives us of the right of appeal.
The thirteenth section of the act of 1836; the eighth section of the act of 1837, which is supplemental to it, and the seventh section of the act of 1836, are co-active sections of the law and command the commissioner to make, &c., an examination.
This being the case, the writ of mandamus lies to enforce that command.
Formerly the received idea was, that a mandamus would lie only to command the performance of a ministerial duty; but modern cases have gone much further, and it is now the practice to grant the writ to command the performance by any inferior jurisdiction or officer, of any public duty, for which there is no specific remedy. The duty must be a public one, though the value to the public is not scrupulously weighed.
Adjudged cases cover the present one, and demonstrate the power of the court below to command and compel the commissioner of patents 'to hear the application;' 'to exercise his discretion;' 'to determine the one way or the other;' 'to put himself in motion to do the thing;' 'to proceed to do his duty,' by examining, or causing to be examined, our application for a reissue, according to law.
III. Has the grantee of an exclusive territorial interest in a patent a legal right to apply for a reissue of that patent?
In Shaw v. Cooper, the court say, 'That the holder of a defective patent may surrender it to the Department of State, and obtain a new one, which shall have relation to the emanation of the first, was decided by this court at the last term, in the case of Grant and Others v. Raymond.'
The word 'holder' here used, it must be observed, is a general term, and cannot be so restricted as to apply only to one who holds the entire interest in a patent; but is equally applicable to those who hold any exclusively territorial interest.
Moreover, the thirteenth section of the act of 1836, which first established the reissue, as now granted, grants unto any assignee the same right to a reissue that it grants to the patentee. Had it been the intention of Congress to restrict the remedy of reissue to the assignee of the whole interest, it would have been easy to use words of limitation, or to have used the restrictive and definite article 'the' instead of the distributive pronoun 'any,' before the word 'assignment.'
[The learned counsel followed, and replied to the argument of the commissioner, as set forth in the opinion annexed to his answer, and made part of the argument; contending also, that Whiteley was not a mere grantee of an exclusive territorial right.]
Mr. Justice SWAYNE delivered the opinion of the court.
This case was brought here by a writ of error to the Supreme Court of the District of Colmbia.
On the 4th of September, 1855, a patent was issued to Jonathan Haines for an improvement in mowing machines.