83 Md. 456 | Md. | 1896
delivered the opinion of the Court.
On the eighth of December, 1894, Walter H. Harrison, the appellant, claims to have entered into an agreement under seal with the appellee, Franklin J. Morton. By the. terms of this agreement Flarrison was to assign to Morton a certain invention for a machine to make barrels and kegs, for which application had been made to the Patent Office by Henry Campbell, the inventor. Harrison alleged himself to be the owner of this invention by virtue of an assignment from the inventor. By the terms of this alleged agreement Morton was to pay Harrison the sum of one hundred thousand dollars in consideration of the sale and conveyance to him of all Harrison’s rights under said assignment from the inventor, within -ten days after the issuing by the United States of letters patent for the invention, and also as part of the consideration for said sale and conveyance Morton was to transfer to Harrison a certain number of full-paid and non-assessable shares of a corporation to be formed by the former, who was also to pay Harrison a sum equal to forty per cent, of the gross royalties upon sales of the patented machines under patents issued by the Government. On the 8th of P'ebruary, 1895, Harrison sued Morton in covenant on the agreement of the 8th December, 1894, alleging in his narr. ownership of the patent under assignment from the inventor, the sale and conveyance thereof to Morton, and the consideration therefor as above mentioned, the assignment to Morton, and the issuance and delivery to him of letters patent and acceptance thereof by him, and his failure to comply with said agreement. Harrison claimed as dam-ages $300,000. To this narr. Morton pleaded, first, non est factum ; second, fraud ; and third, undue influence in pro
A number of questions which we do not feel called on to consider here were discussed at the hearing by counsel for both parties. The character and standing of the parties in the city of Baltimore, and the career of one of them as illustrated by former litigation in the Courts of this State are not necessarily, or indeed, at all involved in this controversy. We are concerned with the exceptions which we find in the record, and shall proceed to discuss therh with as much brevity as their proper consideration will permit.
The third and fifth exceptions have been abandoned.
The plaintiff had offered evidence tending to prove that the contract sued on was valid, binding and operative, and that in pursuance thereof the defendant had paid certain sums of money and had done certain acts. When the defendant was examined as a witness he was asked whether before the contract was executed he had any conversation with the plaintiff, and if so, what he had agreed upon and on what terms, in connection with that patent device ? The objection of the plaintiff to the asking of this question was overruled, and this constitutes the first exception. The objection appears to be two-fold. First, that no parol evidence of prior agreements are admissible to vaiy or alter the written contract sued on, and second, that the proposed question, so far as it was asked for the purpose of eliciting testimony upon the issue of fraud and undue influence in
The rule which excludes parol testimony when offered to vary or contradict a written instrument can, of course, have no application here, for the testimony objected to was offered not to vary or contradict the contract, but to prove it had no existence. Guardhouse v. Blackburn, L. R., 1 P. & D. 115. In the case of Pym v. Campbell, 6 El. & Bl. 374, Erle, J.,said: “The distinction in point of law is that evidence to vary the terms of an agreement in writing is not admissible, but evidence to show that there is no such agreement at all is admissible.” To the same effect Ware v. Allen, 128 U. S. 596. And in regard to the second ground of objection, it may be said that it does not appear that the testimony objected to was offered to show fraud, but to establish the defendant’s contention that the contract, although signed by both parties, was not to be valid and binding until the defendant should so determine, and that in the meantime he was to hold it “in trust.” And in point of fact, he appears to have held possession of the paper until it was produced in the Court below upon the demand of the plaintiff. What we have said in regard to the first exception applies also to the fourth.
The sixth exception involves the admissibility in evidence of the minutes of the Campbell Barrel Company to show that the inventor, long previous to the contract of Dec. 8, 1894, and before the date of his assignment to the plaintiff, Harrison, had agreed to sell and transfer, and that the said company had agreed to purchase, the invention and patent rights which are alleged to have been sold and assigned by the plaintiff to defendant, and that the inventor having assigned all his right and title to said invention to said Barrel Company, he had nothing to assign to the plaintiff and therefore the latter could pass nothing to the defendant. It was shown that the original paper by which this alleged assignment was made by the inventor to the Bar
The effect of this evidence will be considered under the seventh and last exception, which relates to the rulings upon the prayers, and which we will now consider.
We think there can be no doubt that the defendant’s two prayers were properly granted. By the first the Court declared as matter of law that upon the pleadings the burden was upon the plaintiff to prove the delivery of the sealed instrument sued on, and that if the Court, sitting as a jury, should find that said paper never was delivered, the verdict must be for the defendant. The second prayer recites the evidence more at length, but asserts the same proposition of law, which appears to be well settled in this State. Edelen v. Saunders, 8 Md. 129. We‘discover no inconsistency between the two prayers. The plaintiff specially excepted to the second on the ground that there was no evidence in the cause legally sufficient to prove the facts therein set forth. It is clear, however, that the testimony of the witnesses, Morton and Coale, support the facts set forth in this prayer, and we have already held it to be competent and admissible under the issue made by the plea of non est factum.
We will now consider the prayers of the plaintiff. He offered five, the second having been conceded and the fifth granted.
It will be found upon an examination of these instruments that they do not contain a request to the Commissioner of Patents to issue letters patentto the plaintiff. Notwithstanding they were recorded in the Patent Office, letters patent were issued in the name of Henry Campbell, the inventor, and the defendant contends that the legal effect of such an assignment, in which the inventor fails to embody a request to the Commissioner of Patents to issue letters to the assignee, is to convey to such assignee only an equitable title. It is conceded that by one of the rules of the Patent Office the Commissioner will not, and cannot, issue the letters patent to an assignee, unless specially requested so to do by the terms of the-assignment. One of the witnesses refers to this rule in his testimony. The patent having been issued to- Campbell instead of to the defendant, the witness thus explains :
Remembering that the assignments from Campbell to the plaintiff which we are now considering were made before the issue of letters patent, let us ascertain what such a conveyance carries. The assignment of a right to obtain letters patent is “ in effect, a contract to assign the patent when issued, and as such is enforceable in equity.” But “such an instrument creates no legal title to the patent in the assignee.” 1 Robinson on Patents, sec. 411—414. The same author (sec. 764) thus speaks of an assignment like the one we are considering, which was made before the issue of letters. “ An assignment of a completed invention may be made either before or after the issue of the patent. An inventor has, by virtue of his inventive act, not merely the ownership of his invention, but an inchoate right to the monopoly, which is to become vested upon his application for and receipt of letters patent. This ownership of the invention and inchoate right to perfect his title to the monopoly by obtaining letters patent is made assignable by law equally with the patented invention; and an assignment covering these rights and properly recorded secures to the assignee both the invention and monopoly immediately on the issue of the patent. To authorize an issue of the patent directly to the assignee, however, the instrument of assignment must contain a written request to the Commissioner of Patents that the letters patent may be granted to the assignee.” * * * “ Such a conveyance transfers to the assignee the legal title as well as the equitable to the patented invention.” * * * “ An instrument purporting to be an assignment, but not containing the request * * * does not convey the legal title to the
It follows from what C. J. Taney says in Gayler v. Wilder, supra, that prior to the issue of letters patent to the inventor he has an imperfect inchoate right to its exclusive use, which he may perfect and make absolute by taking the steps required by law, and especially by having letters patent issued to him. Or he may by an assignment of this inchoate right, coupled with a request to issue letters to his assignee in compliance with Rule 26 of the Patent Office, transfer to such assignee a legal title to such invention. The legal title passes to the assignee under Such an assignment, because he has under it, as the inventor had by law, the right to secure letters in his own name. But the only way in which such letters, which are the evi
It would seem, therefore, that the rule so broadly laid down by the learned author (Robinson on Patents), if not adopted in clear and distinct terms, has been often recognized and never repudiated, by the Courts having general jurisdictions of questions arising under the patent laws of the United States. Applying the rule we have been con
By the fifth prayer of the plaintiff, which was granted, from which ruling there has been no appeal, the Court below held that the agreement of Campbell with the Barrel Company was no defence to this action, if the Court should find that by the true construction of that agreement the invention and device described in the contract sued on is not embraced within sáid agreement. Inasmuch, however, as there was a verdict for the defendant, it follows that the Court below must have found that the invention and device described in the declaration was embraced in the Campbell agreement, and that, therefore, the latter was a good defence to this action.
Finding no error in the rulings of the learned Judge below, the j udgment will be affirmed.
Judgment affirmed.