(dissenting).
To the extent this case involves what has been termed “the doctrine of election,” I agree with the dissenting opinion written by Judge Rich. In my opinion, however, this ease does not present an issue of “election,” 1 but presents in*956stead a more fundamental issue, namely, to what extent can a rule of administrative expediency such as Patent Office Rule 78(b) be employed by the Commissioner of Patents to avoid the duties expressly imposed on him by 35 U.S.C. § 135. The more precise issue here being whether under the circumstances of this ease the Commissioner of Patents, by the promulgation and administrative use of Rule 78(b), may deprive an applicant of the notice to which he is entitled under 35 U.S.C. § 135.
While this issue was not dealt with below, it is the duty of this court under 5 U.S.C. § 1009, 5 U.S.C.A. § 1009,2 to consider it and to judicially re-examine and review the fundamental authority under which the Commissioner of Patents acted in this ease. The issue is present in the record and is raised in general terms by reason of appeal #1.3 I find this sufficient to warrant consideration of the question as' to the authority of the Commissioner of Patents, in this case, to apply section 1101.01(b) of the Manual of Patent Examining Procedure and to compel a common assignee to make an “election” under Patent Office Rule 78(b).
In summary, the pertinent facts are:
(1) Appellant, Hession, invented an “aerosol apparatus” which he disclosed to one Frank Ziherl, who misapropriated the invention and filed an application for a patent in his name as inventor. U. S. Letters Patent No. 2,705,171 issued March 29, 1955 on this application in the name of Ziherl as the patentee.
(2) Hession, after disclosure of his invention to Ziherl but before issuance of the Ziherl patent, filed his own application for a patent.
(3) Ziherl and Hession each assigned their pending patent applications to Z & W Machine Products, Inc., hereafter called “Z & W.”
(4) The Patent Office, acting under its Rule 78(b), required Z & W as the common assignee to place in one application the conflicting claims in the separate Ziherl and Hession applications.
(5) Z & W, without the knowledge or consent of Hession, placed the conflicting claims in the Ziherl application and *957cancelled them from the Hession application.
(6) Hession first discovered what Z & W had done after the Ziherl patent issued.
(7) Upon Hession’s protest to Z & W, it reassigned the pending Hession application to him; Ziherl stated under oath that he was not the inventor of the subject matter disclosed in patent No. 2,705,171; and all claims of the Ziherl patent were disclaimed.
Hession here appeals the Patent Office rejection of his application for “double patenting” 4 in view of the Ziherl patent No. 2,705,171 and challenges the so-called “election” under Rule 78(b) which was made by Z & W as the common assignee of Hession and Ziherl.
There is no specific statutory authority for Patent Office Rule 78(b); It was promulgated by the Commissioner of Patents under the general authority conferred on him by 35 U.S.C. § 6, to establish regulations “not inconsistent with law” for the conduct of proceedings in the Patent Office.
There is no question but that Rule 78(b) was used here to determine priority5 between conflicting applications in a manner other than that provided in 35 U.S.C. § 135. As stated by the Board of Appeals in its opinion of April 15, 1958:
“It is well settled that it is the general rule that an election by a common assignee of a number of conflicting applications of different inventors, in favor of issue of one of them, is in legal effect a concession of priority to the inventor of the elected application, which is binding and cannot later be repudiated or shifted to another of said applications.” [Emphasis added.]
The majority opinion adopts the substance of the Board’s opinion when, in referring to the effect of Patent Office Rule 78(b) and section 1101.01(b) of the Manual of Patent Examining Procedure, it states:
“The requirement transfers the burden of determining priority in such a case from the Patent Office to the assignee, and the election takes the place of an award of priority in interference.”6 [Emphasis added.]
Rule 78(b) thus applied allows the Commissioner of Patents to avoid the express duty when Congress imposed on him in the clear and explicit language of 35 U.S.C. § 135 that “whenever an application is made for a patent which, in the opinion of the Commissioner, would interfere with any pending application, * * * he shall give notice thereof to the applicants * * *.” [Emphasis added.]
Rule 78(b) as here used, unlawfully shifts to a common assignee the burden of determining priority between conflicting applications. 35 U.S.C. § 135 places this burden on the Commissioner of Patents. Thus, as soon as conflicting claims were found in the Ziherl and Hession applications, such claims must be retained in both the Ziherl and Hession applications in order to permit the Commissioner to discharge the statutory duties imposed on him by 35 U.S.C. § 135.
The real issue at the time of the “election” improperly imposed on Z & W by *958the Patent Office under Rule 78(b) was the issue of priority of invention between the rival applicants, Ziherl and Hession. The language of 35 U.S.C. § 135 permits no equivocation as to the duties of the Commissioner under these circumstances. The statute directs that the Commissioner in such a situation “shall” give notice to the applicants. No such notice was given here.
, „ ... Every applicant for a patent is en- , , , ,, . .. totted to rely upon the protection afford-t n q eX6 Y Pr°V f' “ 35 U.S.C. § The requirement imposed on Z & W under Rule 78(b) to make an election’ does not satisfy the notice requirements of 35 U.S.C. § 135. 7 & W, as a common assignee, is not an “applicant” under the law. Section 135 in this context refers solely to “applicants.” An assignee is not a party to an interference proceeding when it is dedared.8
The failure of the examiner to subordinate Rule 78(b) to the controlling provisions of 35 U.S.C. § 135 and thereafter to proceed under the appropriate Patent Office Rules presumably promul- , , , . ...... _ , , gated to give administrative effect _ to 35 U.S.C. § 135, has deprived Hession of the notice which the statute expressly requires “shall” be given to him by the Commissioner and has resulted in the issuance of an invalid patent to Ziherl.9
It is a matter of paramount public importance that patents be issued only to inventors and, where there is an issue as to priority, to grant such patent only to the one who is legally the first to have made the invention. Congress in 35 U.S.C. § 135 reflects its concern with this problem and by direct and mandatory language has instructed the Corn-missioner what he “shall” do. There is nothing in 35 U.S.C. § 135 which excepts „ . .. trom its scope interfering applications which ^ to be owned b a common assignee.10 As here applied, Rule 78(b) contradictg the Mn lan of 3g u s a § 13g and adds thereto a proviso that in the cage of interfering applicatíons owned by a commo,n assignee, the notice to the interfering applicants provided in 35 U.S.C. § 135 no longer applies since in this case, the common assignee is to determine the issue of priority.
While I agree with the .majority that the rules of the Patent Office have the force and effect of law, I do not agree this is the case when as here they fre “consistent with the statute. As her" apfed by the+ 78<b.) is clearly inconsistent with the explicit language of 35 U.S.C. § 135. While £be ¿ecisi0,n 0f the majority purports to be based on judicial sanction given to a iong usage 0f the rule by the Patent Office, I do not feel that this is a valid reason for sanctioning such use of a Patent Office rule.
*959“The Commissioner justifies his •decision by the rules of the Patent Office and a long practice under them. If there is inconsistency between the rules and statute, the latter must prevail.” Steinmetz v. Allen, 192 U.S. 543, 565, 24 S.Ct. 416, 423, 48 L.Ed. 555.
The use of Rule 78(b), under the circumstances of this ease as sanctioned by the majority, makes a mockery of 35 U.S.C. § 135 and nullifies the safeguards to applicants which are found in Rule 262.11 Section 135 and Rule 262 recognize and protect the dominant public interest in assuring that the proper inventor is named as the patentee. They also protect the very real personal interest of each inventor in being named as the patentee in a patent issued on his invention.12
When a common assignee is required to make an “election” under Rule 78(b) as here applied, the safeguards to the public and to the applicants found in 35 U.S.C. § 135 and in Rule 262 are indeed effectively nullified.
The Ziherl patent was in the application stage when it was found to be in conflict with the Hession application. Until the Commissioner had notified Hession and Ziherl as the rival applicants, no determination of priority could legally be made. Until such a determination was made, there was no authority to issue the Ziherl patent. Having failed to perform his statutory duty, the Commissioner cannot now avoid responsibility therefor by having improperly issued the Ziherl patent and then using it, as was here done, to reject the Hession application on the ground of “double patenting.”
For the foregoing reasons, I would reverse the decision of the Board and allow the rejected claims to Hession.
. The majority refers to the “doctrine of election,” and finds that Z & W made a binding and conclusive “election.” On this basis, the majority justifies the improper issuance of the patent to Ziherl even though by his own present admission he was not the inventor of the disclosed subject matter. I do not think that the “election” made hereby Z & W can be equated to an “election of remedies.” An important requirement of the doctrine of “election of remedies” which must be present before an election is irrevocable or binding is that the party *956making the election had full knowledge of the facts when the election was made.
“While * ® * there have been many divergent views of the question of election of remedies, we are aware of no application of the rule which does not include the requirement that the litigant have full knowledge of the facts when the election was made.” Banner Mfg. Co. v. U. S., 112 F.Supp. 365, 367, 125 Ct.Cl. 384.
On the record here, Z & W’s “election” was made without knowledge that Hession rather than Ziherl was the true inventor. Actually, if the now known facts had been known to Z & W at the time of the alleged “election,” there would have been no basis for it, since only Hession and not Ziherl was an “inventor” who was entitled to apply for the patent. At best, the doctrine of election is a harsh rule which in my opinion is not applicable to the facts of this case. See Albert v. Martin Custom Tire Co., 2 Cir., 116 F.2d 962 and Cook v. Commercial Casualty Ins. Co., 4 Cir., 160 F.2d 490.
. Par. (e) of 5 U.S.C. § 1009, 5 U.S.C.A. § 1009(e) reads in pertinent part as follows-
“(e) Scope of revieiv.
“So far as necessary to decision and where presented the reviewing court shall decide all relevant questions of law, interpret constitutional and statutory provisions, and determine the meaning or applicability of the terms of any agency action. It shall * * * (B) hold unlawful and set aside agency action, findings, and conclusions found to be * * * (3) in excess of statutory jurisdiction, authority, or limitations, or short of statutory rights; (4) without observance of procedure required by lato; * * *. In making the foregoing determinations the court shall review the whole record or such portions thereof as may be cited by any party, and due account shall be taken of the-rule of prejudicial error.” (June 11, 1946, c. 324, § 10, 60 Stat. 243.) [Emphasis added.]
. Reason of appeal #1 reads:
“The Board of Appeals erred in holding that the election previously made by appellant’s assignee to issue Ziherl patent No. 2,705,171 is binding on appellant.”
. While the prior decisions, as pointed out in Judge Rich’s dissenting opinion, frequently have justified an election under Rule 78(b) for the reason that it will prevent the issuance of more than one patent on an invention, this reason, as he also points out, is no longer a valid one in view of the statutory changes made in section 135 of the Patent Act’of 1952 (35 U.S.C. § 135).
. The term “priority” as here used includes both true “priority” or who is the first inventor in law as well as “originality,” or which of two applicants was the true inventor.
. The majority also finds that under Rule 78(b), the common assignee “was the only party vested with the authority and right to make the election.” The majority, however, does not discuss nor comment on what seems to me to be the inconsistent requirement of Patent Office Rule 262(c) that “a concession of priority may not be made by an assignee.”
. As pointed out by the majority, recorded assignments of applications are deemed to be absolute assignments since the Patent Office cannot be expected to investigate the assignments and the agreements which may underlie them. In a priority determination under 35 U.S.C. § 135, the applicants are directly notified of the interference and thus an opportunity is afforded the applicants to protect their interests independently of the assignee and to be heard on all other pertinent issues which may be properly raised and determined. See Patent Office Rules 209, 203, and 207.
. Once an interference is declared, an assignee may become a party to it only in limited cases and then only after permission is sought and granted, as provided in Rule 242.
. Article % gection g of the 0(mstitution g.ives Congress the power to t t. ellt rights only to -Xnventors.” Since Ziherl, by his own admission, is not an “inventor,” the application of Rule 78 (b) here has resulted also in the issuance of the patent to a non-inventor, Ziherl, in violation of the Constitutional provision.
. For this reason I am unable to see, as does the majority, anything “anomalous” in the declaration of an interference under 35 U.S.C. § 135 between rival applicants merely because, at the time the conflict is determined to exist, title to the applications happens to be held by a common assignee.
. Further safeguards against actions of an assignee adverse to an applicant are found in Rule 262(a) and (b) which specifically requires that the “written disclaimer or concession of priority, or abandonment of the invention” must be “signed by the inventor in person with the written consent of the assignee when there has been an assignment.” [Emphasis added.]
. In writing in the Spring 1961 issue of The Patent, Trademark, and Copyright Journal of Research and Education, The George Washington University, on “The Patent System from an Inventor’s Point of View,” Carl E. Barnes, Vice President, Research, Minnesota Mining and Manufacturing Company, makes these significant observations:
“Although I am no longer directly concerned with inventing, time was when I spent all my waking hours in search of new products and new ideas. I found then that I was strongly motivated to try new experiments in the hope of discovering something patentable; I still believe this is a tremendous incentive.
“For many technical people the first patent is still a-borning, and I’m sure these people have been exposed to the idea from one source or another that as long as they have to assign their patents to the company for whom they work, part of the incentive is gone. Let’s get this one straight. First and foremost, don’t ever lose sight of the fact that a United States patent is issued in the inventor’s name, and although he assigns the rights to his company, his name loill forever be attached to that patent. [Emphasis added.] This is his indisputable claim to being an accomplished inventor, and no one — no company — can take this away from him. The more patents that bear his name, regardless of what he did with the rights to them, the greater is his standing in the technological community. Issued patents are tangible evidence of his worth as an inventor, and they are perfectly salable in his quest for a job wherever he goes. They will have an effect on his salary.” (p. 68).