| U.S. Circuit Court for the District of Southern New York | Oct 15, 1849
The sixteenth section of the act of July 4, 1836, speaks of the party making the application for the patent, as the proper person to file a bill in case of a refusal by the board of examiners to grant the patent, (the chief justice of the District of Columbia was afterwards substituted in their place,) and, doubtless, referred to the inventor, as no provision then existed authorizing him to assign his interest before the issuing of the patent. But, the sixth section of the act of March 3, 1837 (5 Stat. 193), provides, that any patent thereafter to be issued, may be issued to the as-signee of the inventor, the assignment being first entered of record; the application still to be made in the name of the inventor, and the specification to be sworn to by him. After the assignment of the invention, under this section, by which the inventor divests himself of all interest therein, and transfers it to the assignee, although the application
We are also inclined to think, that the assignment in the present case is valid, notwithstanding it was made after the rejection of Perry’s application by the commissioner, and his appeal to the chief justice from that decision; and tha't the objection, on the ground that the invention was the subject of doubt and dispute, and had even been set aside by the commissioner, is not well founded. Most of such applications are resisted, and become the subjects of discussion before the commissioner, and frequently without any person objecting except the commissioner himself. The case does not stand on the footing of a right or claim in litigation in a court of justice. The hearing before the commissioner is informal and summarj', and not final. The application may be renewed from time to time, on the same or additional evidence, the previous hearings and decisions creating no bar to a further investigation. The chief object of the provision authorizing a sale of the whole or of any part of the invention before the issuing of the patent, was, doubtless, to enable the inventor to obtain means to pursue his application before the proper authorities, until it was allowed or refused; and the more obstinate the resistance, the greater the necessity for the provision. We are not aware that it has ever been doubted, that an assignment of the whole or of any part of the interest in a patent, after it was granted, would be valid, notwithstanding it was at the time the subject of litigation; and yet, the argument would be as strong, if not stronger, in favor of the invalidity in such a ease, as it is in the present one. This case is distinguishable from that, of Prosser v. Edmonds, 1 Younge & C. Exch. 491, referred to on the argument, in two particulars: First, an invention is. within the contemplation of the patent laws, a species of prop-ertj'; and secondlj', the assignment is made in pursuance of express enactment. 2 Story Eq. Jur. §§ 1039-1048, and cases there referred to.
As it respects the recording of the assignment in the patent oftice, it is enough, within the terms of the sixth section of the act of 1837, if it be recorded at any time before the issuing of the patent. See, also, in this connection, the latter part of section 10 of the act of 1830.
On looking into the bill, we are of opinion that there is a sufficient averment that Perry was the first and original inventor of the improvement, and the facts and circumstances detailed go to support, rather than weaken, as has been insisted, the general allegation.
Upon the whole, we think the assignment is valid, and the bill properly filed in the name of the assignee, he being the only real party in interest, and that the averments and facts set forth therein show a sufficient title prima facie in him to the patent, on the ground that Perry was the first and original inventor.
Demurrer overruled.