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The act of 1836, s. 14, provides that an action for an infringement is "to be brought in the name or names of the person or persons interested, whether as patentee, assignees, or as grantees of the exclusive right within and throughout a specified part of the United States."
This provision changes the rule previously adopted by construction of the act of 1793, under which it had been held that an action could not be maintained in the name of an assignee of the exclusive right for a particular district; as this was considered to be a mere license and not an assignment under the fourth section of that act. Though such a party could join in a bill in equity with the other persons interested.4
But an action might be maintained under the former law in the name of an assignee of a share, joined with the patentee.
And if the whole patent be assigned, whether the
3 Whittemore v. Cutter, 1 Gall. R. 429. Tyler and another v. Tuel, 6 Cranch, 324. A suit in the name of the party licensed seems to have been sustained in England. George v. Wackerback, Rep. of Arts, 2d Series, v, 27, p. 252.
4 Whittemore v. Cutter, 1 Gall. R. 429. Ogle v. Egc, 4 Wash. C. C. R. 584.
5 Whittemore v. Cutter, 1 Gall. R. 429. See Boulton v. Bull, 2 H. B. 463.
assignment be made before or after taking it out, an action upon it for an infringement must be brought in the name of the assignee and not that of the patentee.
But while the patentee has merely made an agreement for an assignment, and has not made the assignment, he may bring an action in his own name for an infringement of the patent, notwithstanding such agreement, since the assignee is not put in the place of the patentee as to right and responsibility, until the assignment is executed and recorded.?
All who join in the same act of infringement may be'sued jointly or separately, or some of them may be joined and others sued separately.
An action for a violation of a patent may be maintained against a corporation when, acting in that character, it authorizes an infringement.”
6. Herbert v. Adams, 4 Mason's R. 15.
? Per Washington J. Park v. Little and Wood, 3 Wash. C. C. R. 196.
81 Saund. R. 291, e. 2 Saund. 396.
• Kneass v. Schuylkill Bank, C. C. U. S. Oct. 1820. The joint proprietors of a patent are not liable as copartners on a contract by one of their number, on his own account, to construct a certain number of the patented articles. Livingston and Fulton were joint proprietors of a patent right for the application of steam to the purposes of navigation. Fulton contracted with an assignee of such right, “ to be responsible for the perfect construction and performance of certain steam boats to be built on the river Ohio, so that they should carry at least one hundred tons burden, and run at least four miles an hour in still water." It was held by the court of chancery of New York, that Livingston, on the mere ground of his joint interest in the patent right, was not responsible for this contract; it not being connected with the enjoyment and exercise of their common privilege under the patent. Lawrence v. Dale, 3 Johns. Ch. R. 23. On an appeal to the Court of Errors, the decree of the Court of Chancery was affirmed. McNeven v. Livingston, 17 Johns. R. 437.
Sec. III.- DECLARATION.
The declaration in an action for an infringement recites, in general, that, at the time of taking out of the letters-patent, the patentee was the true and orignal inventor of a new and useful invention or improvement, which is concisely described as in the patent, and, thereupon, on such a day, upon application of the patentee, the secretary of state caused letters-patent to be issued in the name of the United States, bearing such a date, under the seal of the patent office, and duly tested, according to the form of the statutes in such case, whereby was granted to the patentee, his heirs, executors, administrators and assigns, for the term of fourteen years, the full and exclusive right and liberty of making, using and vending to others to be used, the new and useful invention or improvement, agreeably to the statutes in such case made and provided, as by the said letters-patent in court to be produced, and the specification therein referred to, will more fully appear ; and that the patent was assigned by the patentee, or by his assignee, to the plaintiff, if such be the fact; that the assignment was recorded in the
patent office; that the plaintiff or the preceding proprietors and the plaintiff successively, always, from the time of granting the letters-patent, or that the plaintiff, from the time of such assignment, has used and enjoyed the right to the time of suing out the writ ; that the defendant well knowing the premises, and intending to deprive the plaintiff of the profits and advantages which he might otherwise have derived from the right, at such a place, on such a day, and at other times between that day and the date of the writ, made or used, or sold the said invention, without the permission or license in writing, and against the will of the plaintiff, in breach of the letters-patent, and in violation of the right granted to the plaintiff, or granted to the patentee and assigned to the plaintiff ; whereby the plaintiff was deprived of great profits, and has sustained actual damage to such an amount, whereby, and by force of the statute, an action has accrued to the plaintiff to recover damages."
The declaration in this, as in all other cases, must show a cause of action by setting forth the facts necessary for this purpose. These facts, in general, as will appear by the above outline, are-1, the invention by the patentee ; 2, description of the invention; 3, the grant of the patent; 4, what the
10 See 2 Chit. Pl. 764; 8 Wentw. Pl. 431 ; 1 Saund. 189; Fessenden on Patents, 406; Davis's Pat. Cas. 162; Boulton v. Bull, 2 H. B. 463.
patent grants ; 5, the assignment, if there were one; 6, the infringement.
1. In setting forth that the patentee was the inventor; the words of the act are followed.
2. The invention is concisely stated by the mere title or general description in the patent.
3. In stating the grant of the patent in the words of the act, it is alleged that it was signed by the secretary," and issued under the seal of the patent office. So the English practice requires the 'averment that the letters issued under the great seal, this being requisite to their validity. 12
It must be averred that the patent was signed by the President. It is not necessary to aver that the requisite preliminary steps, to obtain a patent, were taken : it is enough to aver that the patent was granted in the form prescribed by law. Upon demurrer, the court will presume that every thing was rightly done to obtain it.13
Under the act of 1793, it was held that the declaration must aver that the patent did issue ; that it was not enough to allege that it was made out in due form, under the seal and in the name of the Uni
"Fulton's Exr's. v. Myers, Coxe's Dig. 53L
12 2 Ins. 555; Coke's R. 18. To plead letters-patent without saying suo magno sigillo is naught, and that because the king has divers seals. Jay Bond, 1 Vent. 222.
Cutting and others Exr’s. of Fulton v. Myers, Coxe's Dig. 531 ; 8. C. 4 Wash. C. C. R. 220.