PART III.

TRANSMISSION OF THE INTEREST IN LETTERS

PATENT.

CHAPTER I.

OF ASSIGNMENTS AND LICENSES.

§188. THE Act of Congress of July 4, 1836, § 11, provides "that every patent shall be assignable in law, either as to the whole interest, or any undivided part thereof, by any instrument in writing; which assignment, and also every grant and conveyance of the exclusive right under any patent, to make and use, and to grant to others to make and use, the thing patented, within and throughout any specified part or portion of the United States, shall be recorded in the Patent Office within three months from the execution thereof, for which the assignee or grantee shall pay to the commissioner the sum of three dollars."

$189. The interest that is thus made assignable by statute, is undoubtedly assignable at common law. But it has been deemed proper to regulate the assignment of patents by statute. An invention may be assigned for the patent before it is taken out, so as to vest in the assignee the exclusive interest when the patent has issued; but the application must be made and the specification duly sworn to by the inventor, and the assignment must be recorded.1 The interest in a patent

1 Act of Mar. 3, 1837, § 6. Herbert v. Adams, 4 Mas. 15; Dixon v.

may also be assigned by operation of law, in case of the bankruptcy of the patentee, as well as by his voluntary assignment. There is no question that a patent already obtained passes to assignees in bankruptcy; and, in England, it has been held that a patent issued after an act of bankruptcy and an assignment by the commissioners, but before the bankrupt had obtained his certificate, passes to the assignees. It is necessary, however, that the intention should have been perfected, and, at least, that the bankrupt inventor should have applied for a patent. It was said, in the case just cited, that the schemes which a man has in his head, or the fruits which he may make of them do not pass; but if he has carried his schemes into effect, and thereby acquired a beneficial interest, that interest is of a nature to be affected by an assignment in bankruptcy. Under our system, I conceive that such an interest would have been acquired, after the application for a patent. The party has then done all that the law requires for the creation of the interest, and the issue of the patent

Moyer, 4 Wash. 71, 72. So also, it has been held that a contract may be made to convey a future invention, as well as a past one, and for any improvement or maturing of a past one; and that a bill in equity will lie to compel a specific performance. Nesmith v. Calvert, 1 Woodb. & M. 34.

"An assignment of an invention before the issuing of a patent, is valid, under § 6 of the Act of March 3d, 1837, (5 U. S. Stat. at Large, 193,) although it is made after the rejection, by the Commissioner of Patents, of the assignor's application for a patent, and after an appeal thereon to the Chief Justice of the District of Columbia.

"The assignee under such an assignment may file a bill in his own name, under § 16 of the Act of July 4th, 1836, (5 U. S. Stat. at Large, 123,) and § 10 of the Act of March 3d, 1839, (Id. 354,) against the patentee to whom the patent was issued on the rejection of the assignor's application, for the purpose of annulling the patent issued, and having one granted to him as assignee.

"And it is not necessary that the assignment should be recorded in the Patent Office before the filing of the bill. It is enough, if it be recorded at any time before the issuing of the patent." Gay v. Cornell, in Equity, 1 Blatch. Ct. Court R. 506.

1 Hesse v. Stevenson, 3 Bos. & P. 565.

furnishes him with the evidence of his exclusive right. Whether an invention perfected and reduced to practice, capable of supporting a patent, but for which no application had been made for a patent, at the time when the assignment in bankruptcy attaches to the bankrupt's effects, would pass to the assignees, is a more difficult question. The mere material in which the invention had been incorporated would undoubtedly pass, but this is distinguished from the invention itself, which has not become a vested interest under the Patent Law, until the proper application has been made by the proper party, who must be the inventor and no one else. It would seem that the assignees would not render themselves liable to an action for infringement, at the suit of the subsequent patentee, (the bankrupt,) for selling such materials, as in the case of a newly invented machine, patented after the property in the materials had passed to them;1 but, whether the purchaser could thus acquire any right, as against the inventor, to use those materials in the shape of the invention, as intended to be used by the inventor, who had used due diligence in obtaining his patent, may admit of doubt.

§ 190. The statute renders it necessary to record the assignment in the Patent Office. Three classes or degrees of interest by assignment, and no others, are thus required to be recorded; first, an assignment of the whole patent; second, an assignment of an undivided part of the whole patent; and, third, a grant or conveyance of the exclusive right under the patent, for any part or specified portion of the United States. Assignments, of these several classes, must be recorded in the Patent Office, within three months of the execution thereof, to affect intermediate bona fide purchasers, without notice. But it has been held that, in other respects, the statute is merely directory, and that any subsequent recording will be sufficient to pass the title to the assignee.2

2 Brooks v. Byam, 2 Story's R. 526; Pitts v. Whitman, Ib. 609, 614. In

§ 191. But the assignee can maintain no suit, in law or equity, upon the patent, either as a sole or as a joint plain

this last case, Mr. Justice Story said: "The first objection taken upon the motion for a new trial is, that the deed of assignment from John A. Pitts to the plaintiff, dated on the 17th of April, 1838, was not recorded in the Patent Office until the 19th of April, 1841, after the present suit was commenced; whereas it ought to have been recorded within three months after the execution thereof. By the Patent Act of 1793, ch. 55, § 4, every assignment, when recorded in the office of the Secretary of State, was good to pass the title of the inventor, both as to right and responsibility; but no time whatever was prescribed, within which the assignment was required to be made. By the 11th section of the Act of 1836, ch. 357, it is provided, "That every patent shall be assignable in law, either as to the whole interest or any undivided part thereof, by any instrument in writing; which assignment, and also every grant and conveyance of an exclusive right under any patent, to make and use, and to grant to others to make and use, the thing patented, within and throughout any specified portion of the United States, shall be recorded in the Patent Office, within three months from the execution thereof." Now, it is observable, that there are no words in this enactment which declare that the assignment, if not recorded, shall be utterly void; and the question, therefore, is, whether it is to be construed as indispensable to the validity of an assignment, that it should be recorded within the three months, as a sine qua non; or whether the statute is merely directory for the protection of purchasers. Upon the best reflection which I have been able to bestow upon the subject, my opinion is, that the latter is the true interpretation and object of the provision. My reasons for this opinion are, the inconvenience and difficulty and mischiefs, which would arise upon any other construction. In the first place, it is difficult to say why, as between the patentee and the assignee, the assignment ought not to be held good as a subsisting contract and conveyance, although it is never recorded, by accident, or mistake, or design. Suppose the patentee has assigned his whole right to the assignee, for a full and adequate consideration, and the assignment is not recorded within the three months, and the assignee should make and use the patented machine afterwards; could the patentee maintain a suit against the assignee for such making or use, as a breach of the patent, as if he had never parted with his right? This would seem to be most inequitable and unjust; and yet, if the assignment became a nullity and utterly void, by the non-recording within the three months, it would seem to follow, as a legitimate consequence, that such a suit would be maintainable. So strong is the objection to such a conclusion, that the learned counsel for the defendant admitted, at the argument, that, as between