United States Ex Rel. Steinmetz v. Allen

Background

An inventor filed a single patent application that included both a process (a method) and an apparatus (a machine) for the same invention. A primary examiner refused to allow those claims to stay together, citing Patent Office rule 41, and refused to process the inventor’s appeal to the board of examiners-in-chief. The inventor sought a writ of mandamus after lower courts declined relief, and the case reached this Court to decide the right to join related claims and the proper remedy.

Reasoning

The Court reviewed the patent statute and older cases and found nothing in the statute that absolutely forbids joining related inventions in one application. Historical decisions allow unity when inventions are connected in design or operation. The Court held that rule 41 was an inflexible administrative rule that denied inventors a meaningful chance to invoke the Office’s discretion. Because the rule prevented any individualized consideration and the primary examiner refused to permit an appeal, the rule was invalid and the Commissioner must permit the appeal or hearing specified by the statutes and rules.

Real world impact

As a result, inventors may seek to include related process and apparatus claims in one application and ask the examiners-in-chief to review rejections. The Patent Office can no longer enforce a blanket rule forcing separation of such claims. The Court reversed the lower judgment and directed that the requested mandamus be granted so the inventor can obtain the statutory appeal and hearing.