7 N.Y.S. 277 | N.Y. Sup. Ct. | 1889
The action was for the specific performance of a contract of the defendants the Wheeler & Melick Company and the demurrant La Dow,
The statute of the United States relating to the assignment of patents is in the following words: “Every patent, or an interest therein, shall be assignable in law by an instrument in writing, and the patentee or his assigns- * * * may in like manner "grant and convey an exclusive right under his-patent to the whole or any specified part of the United States.” Rev. St. U. S. § 4898. As the monopoly secured to the patentee is a creation of the statute, so the right to transfer or share that monopoly is given only, and is strictly controlled by, the same legislative authority, Gayler v. Wilder, 10-How. 477, 494. That authority is found in the statute just quoted. It has received frequent construction at the hands of the courts of the United States, and has been uniformly held to embrace only three classes of assignments or grants, viz.: (1) Of the entire monopoly for the whole of the United States -r (2) of an undivided share or interest in the entire monopoly for the whole of such territory; (3) of an exclusive right-to enjoy the entire monopoly within-a specified portion of such territory; and any concession or conveyance short, of one of these is not a grant or assignment, but only a license. However exclusive the right conveyed, however unlimited the territory over which it extends, if it be not the right to exercise all the privileges secured by the patent,, if it leave any interest in the monopoly in the patentee within the territory defined, it is a license only. Curt. Pat. §§ 212, 213, and the cases cited; Blanchard v. Eldridge, 1 Wall. Jr. 337; Theberath v. Manufacturing Co., 3 Fed. Rep. 143; Suydam v. Day, 2 Blatchf. 20; Hamilton v. Kingsbury, 17 Blatchf. 265; Telegraph Co. v. Brooklyn, 14 Fed. Rep. 255. The cases cited variously illustrate the rule above stated. In several of them the fact which determined the character of the conveyance was that of the limitation of the exclusive-right to make, use, and sell the patented invention to a particular purpose, and-
This brings us to the second proposition involved in the decision below, which seems to be equally well established, viz., that, as licenses, those conveyances are not assignable. The rule in this respect seems to be that in order to give the quality of assignability to a mere license it must contain express words to that effect, it must run to the licensee and his assigns, or by other equivalent language indicate the intention to make the privilege transmissible by the licensee. Curt. Pat. § 213; Walk. Pat. § 310; Oliver v. Chemical Works, 109 U. S. 75, 3 Sup. Ct. Rep. 61; Curran v. Craig, 22 Fed. Rep. 101; Windmill Co. v. Windmill Co., 24 Fed. Rep. 650; Lock v. Lane, 35 Fed. Rep. 289. There are no words of assignability in the contract of the defendants with Childs & Co., and we regard the cases cited as authority for the holding by the court below that Childs & Co. took under that contract no right in respect to the patents in question which they could transfer to the plaintiffs. If so, the complaint did not state facts sufficient to constitute a causa of action in favor of the plaintiffs, and the demurrer was properly sustained. The judgment must be affirmed. All concur. Judgment affirmed, with costs.