after stating the case as above, delivered the opinion of the court.
Every patent issued under the laws of the United States for an invention or discovery contains “ a grant to the patentee, his heirs and assigns, for the term of seventeen yеars, of the exclusive right to make, use and vend the invention or discovery throughout the United States and the Territories thereof.” Eev. Stat. § 4884. The monopoly thus granted is one entire thing, and cannot be divided .into parts, except as authorized by those laws. The patentee or his assigns may, by instrument in writing, assign, grant and convey, either, 1st, the whole patent, comprising the exclusive right to make, use and vend the invention throughout the United States; or, 2d, an undivided part or share of that- exclusive right; or, 3d, the exclusive right under the patent within and throughout a specified part of the United States. Eev. Stat. § 4898. A transfer of either of these three kinds of interests is an assignment, properly speaking, and vests in the assignee a title in so much of-the patent itself, with a right to sue infringers; in the seсond case, jointly with the assignor; in the first and third cases, in the name of the assignee alone. Any assignment or transfer, short of one of these, is a mere license, giving the licensee no title in the patent, and no right to sue at law in his own name for an infringemеnt. Rev. Stat. § 4919;
Gayler
v.
Wilder,
*256
Whether a transfer of a particular right or interest under a patent is an assignment or a license does not depend upon the name by which it calls itself, but upon the legal effect of its provisions. Fоr instance, a grant of an exclusive right to make, use and vend two patented machines within a certain district, is an assignment, and gives the grantee the right to sue in his own name for an infringement within the district, because the right, although limited to making, using and vending two machinеs, excludes all other persons, even the patentee, from making, using or vending like machines within the district.
Wilson
v.
Rousseau,
An assignment of the entire patent, or of an undivided part thereof,, or of the exclusive right under the patent for a limited ' territory, may be either absolute, or by way of mortgage and' liable to be defeated by non-performance of a condition subsequént, as clearly appears in the provision of the statutе, that “ an assignment, grant or conveyance shall be void as against any' subsequent purchaser or mortgagee for. a-valuable consideration without notice, unless it is recorded in the Patent Office within three months from the date thereof.” Rev. Stat. § 4898.
*257
Before proceeding to consider the nature and effect of the various instruments given in evidence at the hearing in the Circuit Court, it is fit to observe that (as was assumed in the argument for the plaintiff) by the law of the State of New York, where all the instrumеnts were made and all the parties to them resided, husband and wife are authorized to make conveyances and contracts of and concerning personal property to and with each other, in the same manner and to the same effect as if they were strangers.
Armitage
v. Mace,
By the deed of assignment of February 13, 1884, the plaintiff assigned to Mrs. Waterman the entire patent right. That assignriient vested in her the whole title in the patent, and the exclusive right to sue, either at law or in equity, for its subsequent infringement.
The next instrument in order of date is the “ license agreement ” between them of November 20, 1884, by which she granted to him “ the sole and exclusive right and license to manufacture and sell fountain penholders containing the said, patented improvement throughout the United States.” This; did not include the right to use such penholders, at least if manufactured by third persons, and was therefore a mere license, and not an assignment of any title, and did not give the licensee the right to sue alone, at law or in equity, for an infringement of the patent. Gayler v. Wilder, Paper Bag Cases and Hayward v. Andrews, above cited. . The plaintiff not having amended his bill, pursuant to the leave granted by the Circuit Court, by joining. the licensor as a plaintiff, this point requires no further notice.
. Nor is it doubted .that the Circuit Court rightly held that, if the plaintiff was entitled to recover only for infringement® occurring between February 12 and November 25, 1884, hi® remedy was at law.
Root
v.
Railway Co.,
The remaining question in the case, distinctly presented by' thb' plea, and adjudged by the Circuit Court, is of .the effect of the deed of November 25., 1884, by which Mrs. Watermаn, assigned to the . firm of Asa L. Shipman’s Sons all her right,,, title and interest in the invention and the patent, with an.
*258
express provision that the assignment should be null and void if she and her husband, or either of them, should pay at maturity a certain promissory note of the same dаte made by them and payable to the grantees. This instrument, being a conveyance made to secure the payment of a debt, upon condition that it should be avoided by the subsequent payment of that debt at a time fixed, was a mortgage, in аpt terms and in legal effect.
Conard
v.
Atlantic Ins. Co.,
By a mortgage of personal property, differing in this respect from a pledge, it is not merely the possession or a special property that passes; but, both at law and in equity, the whole title is transferred to the mortgagee, as security for the dеbt, subject only to be defeated by performance of the condition, or by redemption on bill in equity within a reasonable time; and the right of possession, when there is no express stipulation to the contrary, goes with the right of property. Story оn Bailments, § 287; Story Eq. Jur. §§ 1030, 1031;
Conard
v.
Atlantic Ins. Co.,
A mortgage of real estate has gradually, partly by the adoption of rules of equity in courts of common law, and partly by express provisions of statute, come to be more and more considered as a mere security for the debt, creating a lien or incumbrance only, and leaving the title in the mortgagor, subject to alienation, levy on execution, dower'and other incidents of a legal estate ; but the rules upon the subject vary in different States; and a mortgagе is everywhere considered as passing the title in the land, so far as may be
*259
necessary for the protection, of the mortgagee, and to give him the full benefit of his security.
Stelle
v.
Carroll,
A mortgagee of a lеasehold or other personal property has the like right to an injunction to stay waste by the mortgagor.
Farrant
v.
Lovel,
above cited;
Brown
v.
Stewart,
1 Maryland Ch. 87;
Parsons
v.
Hughes,
. A patent right is incorporeal property, not susceptible of actual delivery or possession; and the recording of a mortgage thereof in the Patent Office, in accordance with the act of Congress, is equivalent to a delivery of possession, and makes, the title of the mortgagee complete towards all other persons,.' as well as against the mortgagor. The right conferred by letters patent for an invention .is limited to a term of years; and а large part of its value consists in the profits derived from royalties and license fees. * In analogy to the rules governing mortgages of lands- and of chattels, and with even’ stronger reason, the assignee of a patént by a mortgage duly recordеd,, whose security is constantly wasting by the lapse of time, must be held (unless otherwise provided in the mortgage) entitled to grant licenses, to receive license fees and royalties, and to have an account of profits or an award of dаmages against infringers. There can be no doubt that he is “the party interested, either as patentee, assignee or grantee,” and as such entitled to maintain an action at law to recover damages for an infringement; and it cannot have been the intention of Congress that a suit in equity against an infringer to-obtain an injunction and an account of profits, in which the court is authorized to-award damages, when necessary to fully
*261
compensate the plaintiff, and has the same pоwer to treble the damages as in an action at law, should not be brought by.the same person. Rev. Stat. §§ 4919, 4921;
Root
v.
Railway Co.,
The necessary conclusion appears to us to be that Shipman, being the present owner of the whole title in the patent under a mоrtgage duly executed and recorded, was the person, and the only person, entitled 'to maintain such a bill as this; and that the plea, therefore, was rightly adjudged good.
In the light of our legislation and decisions, no weight can be given to the case -of Van Gelder v. Sowerby Bridge Society, 44 Ch. D. 374, in which, upon pleadings and facts similar to those now before us, the mortgagor of a patent was treated as a mortgagor in possession, and was allowed to maintain a suit for infringement, under the provisions of the English Judicature Act of 1873 and Patent Act of 1883. Stats. 36 & 37 Yict. c. 66, § 25; 46 & 47 Yict. c. 57, §§ 23, 46, 87.
. Whether, in a suit brought by the mortgagee, the court, at the suggestion of the mortgagor, or of the mortgagee, or of the defendants, might, in its discretion, and for the purpose of preventing multiplicity of suits or miscarriage of justice, permit оr order the mortgagor to be joined, either as a plaintiff or as a defendant, need not be considered, because no such question is presented by this record. .
Decree affirmed.