112 Misc. 606 | N.Y. Sup. Ct. | 1920
The examination of the judgment-debtor reveals the fact that he claims to have invented some device for sound production to be used in connection with phonographs, and to have constructed some models thereof. He has not obtained any patent for it, nor has he made application for a patent, nor has he made public his ideas. The question for determination now is, whether he should be compelled to answer questions which will reveal the nature of his claimed invention. Section 2435 of the Code of Civil Procedure provides that a debtor may be examined “ concerning his property.” So, if the subject matter of the debtor’s ideas constitute property rights, the inquiries should be answered; otherwise not. It is a fact that an inventor, before making application for a patent, may assign or transfer his rights to it (Barnes Fed. Code, § 8945; Cammeyer v. Newton, 94 U. S. 225, 226), but, even where that is done, the application for the patent must be signed by the inventor. § 8945. This, however, does not determine the question at issue.
Under the Constitution, congress has power to secure, for a limited time, “ to authors and inventors the exclusive right to their respective writings and discoveries.” Art. I, § 8, subd. 8. Under this author
The statute authorizing the issuance of letters patent accomplishes, therefore, a two-fold purpose.. It secures to the public forever, after the expiration of the patent, the benefits flowing from the inventor’s genius, and it rewards the latter by giving him, for a limited period, the exclusive privilege of making,
The right possessed under letters patent consists, therefore, not in the secret existing and hidden in the inventor’s mind, but in the exclusive privilege or monopoly of making, using and vending the physical product of the invention. This exclusive privilege is a property right recognized in law and clothed with the usual attributes of property in general. Wilson v. Rousseau, 4 How. (45 U. S.) 646, 674. So when the inventor has made application for a patent and has described his invention in “ full, clear, concise and exact terms,” he has made the disclosure to the public which forms the consideration for the grant to him of monopolistic privileges evidenced by the letters patent. He has then performed his part of the contract, and is tentatively entitled to a patent. This right is inchoate and also may properly be denominated property in the common acceptance of that term. It is a right sus
Where an application for a patent has been filed, the disclosure has been made which entitles the inventor to the monopoly to be granted by the government. But, before the application is made, the right of the inventor is merely a common-law right to enjoy the fruits of his invention so long as he may be able to guard successfully his secret. Upon discovery, the secret inures to the benefit of the public. This right, therefore, lacks the primary and essential characteristic of property, viz., the capability of being exclusively possessed, owned and used. Marsh v. Nichols, Shepard & Co., 128 U. S. 605, 612. True, it is possessed and it is owned and it may be used, but the possession and the ownership and the use depend upon the adroitness of the owner in guarding his secret. The ownership is not protected in the sense that property generally is protected by the law. And while this right may receive a measure of protection as against one obtaining the secret by fraudulent means or by breach of a fiduciary relationship, it is not a property right which the owner can enforce generally. Durham v. Seymour, 161 U. S. 235, 238; Brown v. Duchesne, 19 How. (60 U. S.) 183, 195; Rein v. Clayton, 37 Fed,
It is true that when a patent has issued the inventor can be compelled to make an assignment of his property right for the benefit of his creditors (Inventions Corp. v. Hobbs, 244 Fed. Repr. 430, 444; Clan Ranald v. Wyckoff, 9 J. & S. 527; Barnes v. Morgan, 6 T. & C.. 105; Gillett v. Bate, 86 N. Y. 87,92), although a receiver in supplementary proceedings might not obtain title to the patent right. Ager v. Murray, 105 U. S. 126. But it does not follow from this that an inventor can be compelled to file an application for a patent. The right of the inventor to guard and preserve his secret is as well established as is his right to secure from the government a monopoly by disclosing his secret. And section 8957 (Barnes Fed. Code) provides that no witness shall be guilty of a contempt ‘ ‘ for refusing to disclose any secret invention or discovery made .or owned by himself. ’ ’ This may well be a statutory declaíation of the inviolability of the common-law right of the -A inventor to preserve his secret. It clearly seems y opposed to the contention that he may be compelled to file an application and so reveal his secret. This pro-./ vision is in harmony with the result arrived at,.namely, that the right of the inventor, before he haá'l disclosed his secret, is not property in the general sense of the word.
The judgment debtor need not answer the questions to which objections have been made.
Ordered accordingly.