dissenting.
This Court declared in Webster Co. v. Splitdorf Co., 264 U. S. 463, 466, 471:
“In suits to enforce reissue patents, the settled rule of this Court is that a delay for two years or more wifi ‘invalidate the reissue, unless the delay is accounted for and excused by special circumstances, which show it to have been not unreasonable.’ . .;.
“Our conclusion, therefore, is that in cases involving laches, equitable estoppel or intervening private or public rights, the two-year limit prima facie applies to divisional applications and can only be avoided by proof of special *169circumstances justifying a'longer delay. In other words, we follow , in that respect the analogy furnished by the patent reissue cases.” (Italics supplied.)
The rule announced in the Splitdorf case was based upon a long line of decisions of this Court extending from Miller v. Brass Co., 104 U. S. 350, decided in 1882.
The majority opinion abandons the principle of the Splitdorf case that either laches or equitable estoppel or intervening private rights or intervening public rights— in the absence of proved special circumstances — bars a divisional patent after a lapse of an unreasonable length of time — prima facie two years. It is now held that neither laches nor equitable estoppel may alone invalidate a patent without proof of “intervening adverse rights.” The authorities relied on in the Splitdorf case emphasized the right of the public — apart from provable adverse use by individuals — to require an applicant to pursue his right to a patent diligently and without enlargement of claims after filing an original application,1 “Any practice by the inventor and applicant for a patent through which he deliberately and without excuse postpones beyond the date of the actual invention, the beginning of the term of monopoly, and thus puts off the free 'public enjoyment of the useful invention, is an evasion of the statute and defeats its benevolent aim.” 2
There is a further departure from the Splitdorf case in the holding that two years delay in filing a divisional application after ah intervening patent does not — in the absence of actual abandonment of the invention — bar the right to a “divisional” patent. Abandonment is but one of many grounds for invalidating a patent. Equitable *170estoppel, intervening public rights, or unjustified and unexplained laches were considered in the Splitdorf case and cases there relied on to be individually sufficient bars, without proof of abandonment. Unjustified delay and abandonment are separate defenses. If proof of abandonment is to be a prerequisite,, laches as a separate defense is destroyed, although it has been recognized for more than fifty years. Unreasonable delay which serves to postpone the beginning' of the seventeen year monopoly limitation, not only is possible without abandonment of the invention, but is highly probable., With the destruction of the defense of laches the public loses the benefit of the principle that “An inventor cannot without cause hold his application pending during a long period of years, leaving the public uncertain, whether he intends ever to prosecute it, and keeping the field of his invention closed against other inventions.”3
The Court of Appeals following this settled principle— now abandoned — said: 4 “We think they [claims in the patent] are invalid for laches in filing the application for them. [Citing Webster Co. v. Splitdorf Co.]. . . . These circumstances [facts of this case] invite operation of the two-year limitation designed to protect the public against obtaining in effect an extension of a patentee’s monopoly by apathy and unexcused delay 'in bringing forward by divisional or reissue applications claims broader than those originally sought.” (Italics supplied.)
While “divisional" applications have never been expressly authorized by statute the courts have long recognized their use as a part of Patent Office procedure. Petitioner’s patent which the Court of Appeals found barred by laches was granted on a “divisional” application. Patent Office regulations which have limited each application for a patent to a single invention and have re*171quired a “division” of an application containing claims for two separate and distinct inventions, apparently gave rise to the procedural device of “divisional applications.” The Court of Appeals of the District of Columbia acting in a special appellate capacity5 and tne Patent Office, have treated a “divisional,” properly used, in some respects, as a substitute for an amendment. In accordance with this conception “divisionals” have been for certain purposes, treated as “continuations” of original applications and given the priority of original applications. The logical conclusion was reached that after an original application merged in a patent, a “divisional” application could not be attached to, or considered as a “continuation” of it, because “there was nothing to be continued.” 6 After a patent is granted it passes “beyond the control and jurisdiction” of the Patent Office; the proceedings are closed and the application can neither be amended nor serve as the basis for a new “divisional” or “continuing” application.7
Here an application for a process patent was filed in 1927. November, 1930, in response to Patent Office re*172quirement, a “divisional” application was filed for a product patent. January, 1931, a process patent was granted on the original application. More than two years .after the original application had merged into a process patent another application designated as a “divisional” was filed (April 4, 1933), for a second process patent— here involved. The Court of Appeals found this delay of six years to be without justification or excuse. Disregard- . ing the previously recognized requirement that justification and excuse must be proven for such delay, the majority now hold that an applicant can, for six years, delay his claim for an alleged discovery without excuse, justification, or reason for the delay. This is permitted despite the fact that unclaimed disclosure of the alleged invention had been made in the 1927 process application and in the 1930 product application.
'Congress — given the power by the Constitution — has fixed the statutory limit of a patent monopoly at seventeen years.8 By the procedural device of a “divisional” application, designed to protect rights granted an inventor by statute, petitioner has carved for itself priority monopoly rights, beginning in 1927 and lasting until 1951— twenty-four years, or seven years .more than Congress has authorized.
In the remedy of reissue provided by statute for applicants whose claims fail to protect their entire discoveries,9 Congress has been alert to protect the public from such an extension of monopoly. A reissue patent must be based on oath that an applicant’s original patent failed to cover its actual invention as a result of accident, inadvertence or mistake, and runs only for the unexpired portion of a seventeen year patent grant. The use of “divisionals” or “continuations,” no longer subject to the defense of laches *173or unreasonable delay, will permit an applicant to obtain, by a npnstatutory procedural device, monopoly privileges denied by the reissue statute.
The essential additional claim in petitioner’s 1934 “divisional” patent was only mentioned in the 1927 original application and the 1930 “divisional” application by way of- casual suggestion and incidental illustration.10 Even this casual suggestion was stricken from the 1927 application in December, 1930. These suggestive illustrations did not constitute parts of the inventions which the 1927 and 1930 applications sought to cover or secure.11 The speculative suggestions — from separate applications for different' inventions — are pieced together and held sufficient to “continue” the 1927 application, (after its merger in a patent) and the 1930 .application, as support for the retroactive operation of a claim made for the first time in *1741933. As a result of the destruction of the defense of laches in applying for “divisional” applications, those familiar with a given field of industry may now insert speculative conjectures as disclosures in various applications and permit them to lie dormant until a competitor reduces speculation to practicality. Then, by the device of a “divisional,” or if need be, as here, by “divisional” on “divisional,” such a competitor can be pursued with infringement suits and harassed into surrendering his business to an ingeniously dilatory applicant.12 Thus, sweeping, indefinite and unclaimed disclosures, and adroit use of “divisionals” — which laches and unreasonable delay are no longer sufficient to bar — are permitted to extend a patent’s statutory life and to increase a patentee’s reward beyond that granted by Congress.
"'The patent laws are founded in a large public policy to promote the progress of science and the useful arts. The public, therefore, is a most material party to, and should be duly considered in, every application for a. patent. ... But the arts and sciences will certainly not be promoted by giving encouragement to inventors, to withhold and conceal their inventions -for an indefinite time, or to a time when they may use' and apply their inventions to their own exclusive advantage, irrespective of the public benefit, and certainly not if the inventor is allowed to conceal his invention to be brought forward in some after time to thwart and defeat a more diligent and active inventor, who has placed the benefit of his invention within the reach and knowledge of the public.’ ”13
See, Miller v. Brass Co., 104 U. S. 350, 355; James v. Campbell, 104 U. S. 356, 371; Mahn v. Harwood, 112 U. S. 354, 360; Ives v. Sargent, 119 U. S. 652, 662; Topliff v. Topliff, 145 U. S. 156, 170, 171; Wollensak v. Sargent & Co., 151 U. S. 221, 228.
Woodbridge v. United States, 263 U. S. 50, 56
Planing-Machine Co. v. Keith, 101 U. S. 479, 485.
86 F. (2d) 698, 702.
Frasch v. Moore, 211 U. S. 1, 9, 10; Butterworth v. Hoe, 112 U. S. 50, 60.
In re Spitteler, 31 App. D. C. 271, 274, 275. “. . . ‘it is well established that for one application to be a division, within the meaning of the law, of another, the two must at some time be co-pending,’ . . . Sarfert v. Meyer, 1902 C. D. 30; In re Spitteler, 31 App. D. C. 271, 1908 C. D. 374; . . . Wainwright v. Parker, 32 App. D. C. 431, 1909 C. D. 379....
“. . . An application cannot be considered as a continuance of a patent granted prior to the filing thereof, since after the application has eventuated into a patent there is nothing left pending before the Patent Office upon which it could act or to which the later application could attach. In re Spitteler, 31 App. D. C. 271, 134 O. G. 1301; Wainwright v. Parker, 32 App. D. C. 431, 142 O. G. 1115, 1909 C. D. 379.” Fessenden v. Wilson, 48 F. (2d) 422, 424.
See, McCormick Machine Co. v. Aultman, 169 U. S. 606, 608, 609.
35 U. S. C., c. 2, § 40.
35 U. S. C., c. 2, § 64.
The essential additional claim of the 1934 divisional process patent was for “preheating” cork used in making bottle caps. The -'incidental Reference to preheating in the 1927 (application was -as follows:.
“It may be desirable to secure the metal foil spot in position, prior to the heat and pressure steps, sufficiently to prevent dislodgment 'of the spot during any interval between assembling and final- sticking. This may be accomplished, for example, by preheating the assembled, crown, to soften the coating as soon as the metal foil spot is deposited. Or the coating may be-softened by moistening slightly with a solvent, such as benzol. In either case the coating becomes tacky enough to hold the metal foil from getting out of position during ordinary passage through assembling apparatus.”
The 1930 divisional application for a product patent merely suggested that “It may be desirable to secure the spot in position, prior to the heat and pressure steps, sufficiently to prevent dislodgemeñi of the spot during any interval between assembling and final sticking. This may be accomplished, for example, by preheating the assembled crown, to soften the coating, as soon as the metal foil is deposited.” (Italics supplied.)
Cf., Corbin Cabinet Lock Co. v. Eagle Lock Co., 150 U. S. 38, 42, 43.
Cf., Atlantic Works v. Brady, 107 U. S. 192, 200.
Woodbridge v. United States, supra, 61.