75 P. 119 | Kan. | 1904
The First National Bank of Con-cordia brought an action against Henry Pinney to recover on two promissory notes, each for the sum of $144, payable to the order of W.S. James, and indorsed by him to the bank. In his answer Pinney set up three grounds of defense. The first was a general denial, and the second alleged :
“That he executed the notes; that he signed and delivered the same to the payee, W. S. James. He says, however, that the consideration thereof was the sale and transfer to him of a certain patent-right, to wit: The right to manufacture, use and sell for use in certain territory in this state, for the term of two years, to wit, in Shawnee county exclusively, and in other counties to wit, Jewell, Mitchell, Ottawa, Cloud, Clay, Republic and Washington, jointly with others, a certain window-lock or fastener known as the ‘James window-lock,’ for which the said W- S. James had obtained letters patent, No. 629,446, issued July 25, 1899. That said sale and transfer took place in this county and state, to wit, Cloud county, Kansas ; that although the said James had filed with the clerk of the district court of this county a copy of said letters patent, and also filed with said clerk an affidavit stating that said letters were genuine and had not been revoked and that he had full authority to sell or barter the same, which affidavit also set forth his occupation and residence, and the residence of his so-called principal, the James Lock Company, the said James and the said James Lock Company being-one and the same, however, yet the said James did not, nor did any one, insert in said notes, or either of them, the words “given for a patent-right,” and the said notes were taken by the said James in violation of the law of this state, without consideration, and are illegal and void wheresoever and in whosoever hands they may be. And said defendant says that plaintiff did not purchase said notes, in good faith for a valu
The third defense averred that there was an absence of novelty in the patent and hence a lack of validity.
The trial court, on motion of the bank, required Pinney to amend his answer- and state whether the contract transferring the patent-right was oral or in writing, and, if in writing, to set out a copy of the same. In pursuance of this order the defendant filed a statement alleging that the sale was an oral transaction, but that a writing was executed for the purpose of making it appear that the sale was of something else than a patent-right. He averred, however, that it was a mere subterfuge to avoid the penalty of the statutes of the state; that the writing did not serve its purpose, as it appeared from the writing itself that the transaction was the sale and transfer of a patent-right. He alleged that the writing had been accidentally destroyed by fire, and that it was impossible for him to produce it, or a copy of the same.
A demurrer to the answer, on the ground that it did not state a defense, was sustained. Subsequently the court set aside its order and then sustained the demurrer, except as to the third count of the answer, and as to that defense • the demurrer was overruled and time was given to reply. ' Later' the defendant asked and obtained leave to withdraw the third count of the answer and the court then sustained a demurrer, holding that the remaining counts did not state a defense, and, the defendant electing to stand on the ruling of the court, judgment was given in favor of plaintiff.
Pinney comes here with a transcript of the record,
“Any person who may take any obligation in writing for which any patent-right, or right claimed by him or her to be a patent-right, shall form a whole or any part of the consideration, shall, before it is signed by the maker or makers, insert in the body of said-written obligation, above the signature of said maker or makers, in legible writing or print, the words,, ‘given for a patent-right.'” (Gen. Stat. 1901, §4357 • Laws 1889, ch. 182, §2.)
Non-compliance with this and other provisions of the act is made a misdemeanor, the penalty of which is a fine not exceeding $1000 or imprisonment in the-county jail not more than six months. In Mason v. McLeod, 57 Kan. 105, 45 Pac. 76, 41 L. R. A. 548, 57 Am. St. Rep. 327, the validity of this act was sustained, and it was held that contracts made by a vendor of patent-rights in violation of the act are void as between the parties.
It is contended in behalf of the bank that the answer discloses that there was no transfer of a' patent-right, within the meaning of the statute; that the contract, pleaded is the transfer of a license and not of a.patent-right and that the statute does not cover a mere license from a patentee. Again, it is said that, under the-United States law (3 Comp. Stat. U. S. 1901, §4898),, the assignment of a patent or any interest therein must be in writing, and if that which was undertaken to be transferred was a patent-right it was ineffectual because the contract of transfer was not in writing.
The pleader does not make himself very clear as to the nature of the transaction. In one part of the amended answer he speaks of it as an oral transfer, and in a later part he says that a writeing was ex-
That the transfer was .not in writing, if it be a fact, • may not be very important so far as this transaction is concerned. The federal act on the subject, which provides that every patent or interest in a patent shall be assignable in law by a writing and be recorded, relates mainly to the matter of notice to purchasers and is intended, for the protection of those subsequently acquiring an interest in the invention. A writing is, provided in order that it may be a matter of record, and the record so made only goes to the matter of notice to those who subsequently may become-interested in the monopoly or invention. While an assignment in writing and the recording of the same are necessary
In this case it is specifically alleged that the bank was not a bona fide purchaser of the paper, but had actual knowledge that the notes were given for. a paG ent-right, and also of all the facts and circumstances under which they were given. Here, however, the kind of title conveyed is not the real point in contro? versy, nor is it very material at this time whether the transfer was a grant, an assignment, or a license. The answer alleges that, it was a .patent-right which wa§ transferred ;, but, even if it does not amount in law tq a patent-right, the requirements o.f the statute must be complied with whether that which is sold is a patent-right or is only claimed by the vendor .to be a patent-right. A note, or obligation taken for what is claimed to be a patent-right, although it may not constitute one, must have the words. ‘‘ given for a patent-right,” inserted therein the same as if a valid patent-right formed the whole or a part of the con? sideration. (Gen. Stat. 1901, §4357 ; Laws 1889, ch. 182; §2.) '
It is finally contended that non-compliance with the statute, in omitting from the notes the words “ given for a patent-right,” did not-render them void, for the reason that the consideration for the notes is not bad in itself, and further, that the statute does not so.deT clare. It is true the statute does not in express terms
It is the settled doctrine of the common law that contracts intended to prohibit the doing of things forbidden by law, and made in violation of a penal statute, are void, and this is so although the statute may not expressly so declare, but only inflicts punishment upon the persons doing the act in violation of its provisions. (Chit. Contr., 10th Am. ed., 764-768; Dillon & Palmer v. Allen, 46 Iowa, 299, 26 Am. Rep. 145.) The supreme court of Indiana, in interpreting a law respecting the sale of patent-rights, has also held that on a contract, the making of which is punishable by statute by the imposition of a penalty, there can be no recovery, although such statute does not in express terms prohibit the contract nor pronounce it void.
The taking of the notes as alleged was a crime in itself, and it would hardly do to allow the party committing the offense to maintain an action on the obligations so criminally taken. No rights can be acquired by persons who so violate a penal statute, nor by those who know that the act on which they ground their claim was done in violation of law.
We think the demurrer to the answer should have been overruled, and therefore the judgment of the district court is reversed, and the cause remanded with directions to overrule the demurrer and proceed with the cause.