25 F. 719 | U.S. Circuit Court for the District of Southern New York | 1885
The bill of complaint alleges infringement by the defendant of letters patent for a new and useful improvement in electric lights, of which Sawyer and Man were the inventors, bearing date May 12, 1885, granted to the Electro-dynamic Light Company, its successors and assigns, as assignee of Sawyer and Man. If appears by the bill that the application for the patent was filed by the inventors in January, 1880; that in January, 1880, they assigned their whole interest in the invention to the Electro-dynamic Light Company; that in April, 1881, that company assigned the invention to
The defendant has demurred to the bill, and the point raised by the demurrer is that the patent is void because the Electro-dynamic Light Company, the grantee named in the patent, had assigned its interest to the complainant before the patent issued, and had no interest of record in the, patent at the time the same was issued. The demurrer admits the validity of the assignments made by the Electro-dynamic Light Company to the Eastern Manufacturing Company, and by the latter company to the complainant, and no question is made, or can be made, respecting their efficacy to invest complainant with the title of the Electro-dynamic Light Company to the invention. The title thus acquired by the complainant is as effectual to protect the defendant against any claims of the Electro-dynamic Light Company as if the assignment had been made by that company to the complainant after the patent had issued. If the demurrer is good, the complainant, although the owner of the invention and the sole party entitled to enjoy the monopoly conferred by the patent, will be defeated because of the inadvertence or erroneous action of the patent-office in issuing the patent to a corporation which cannot challenge the complainants’ rights or assert any adverse claim against the defendant. It may well happen occasionally in the pressure of business at the patent-office that an assignment made during the pendency of an application may be overlooked, although duly recorded, and the patent be issued to the inventor or to an intermediate assignee whose' assignment is on record. If, whenever this happens, the patent is to be d'eemed void notwithstanding the title of the grantee named in it is instantly vested in the true owner by operation of law, and notwithstanding no possible injury or inconvenience can be occasioned to third persons or to the public, the result would be one of such unnecessary hardship that it is not reasonable to suppose that it could have been contemplated by congress while framing the provisions of the patent laws. The person entitled to the benefit of the monopoly might not ultimately lose his property. He might be able to induce the proper authorities of the government to file a bill in equity in the name of the United States to repeal the patent because granted by mistake, (U. S. v. Stone, 2 Wall. 525; Mowry v. Whitney, 14 Wall. 434,) but he would lose it in the mean time.
As the property in the monopoly is the creature of statute, the defendant properly asserts that no title was acquired by the complainant, unless it has.devolved pursuant to the statutory provisions which authorize patents to be issued to the assignees of inventor. These provisions are found in section 4895, Rev. St., which declares that “patents may be granted and issued or reissued to the assignee of
It is undoubtedly a fair and reasonable interpretation of the section in question to hold that the patent may issue to the person who, by the records of the office, is assignee of the patent, although not technically the assignee of the inventor. Such was the ruling in Selden v. Stockwell Gas-burner Co., 19 Blatchf. 544; S. C. 9 Fed. Rep. 390. The purpose of the section is to permit a patent to issue to the person who has the title to the invention upon tho records of the patent-office. This purpose is attained when the patent runs to the ultimateassignee of the invention, li is equally well attained' when the patent runs to the inventor, or to the inventor’s assignee, if, by force of an assignment on record at the time, the grant inures as soon as the-patent issues to the, ultimate assignee. That the legal title vests at once in the person who, by the records, is entitled to it, was held in Gayler v. Wilder, 10 How. 477. That case is also authority for the
Nothing in the language of the section, or in the other sections of the patent-laws, implies that a patent cannot be properly issued to any assignee whose assignment is duly recorded, when it can be done without impairing the rights of any other person having a paramount title to the invention.
Inasmuch as the grant runs to the grantee named in the patent, and his assigns, and operates, therefore, in favor of the ultimate assignee to convey him a record title as completely as if he had been named in the patent, and as it is not essential that the grantee named be one who owns the invention when the patent issues, it should be held that a patent is valid when issued to any assignee of record. The demurrer is overruled.