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the extension should not be granted. And the secretary of state, the commissioner of patents, and the solicitor of the treasury, shall constitute a board to determine on the application, on hearing the evidence for and against the same, to which board the patentee must produce a statement. in writing under oath of the expenditures for and value and profits of the invention. And if the board shall be satisfied that the patentee, without his fault or neglect, has failed to obtain, from the use and sale of the invention, a reasonable remuneration for the time, ingenuity and expense bestowed on the same, and the introduction thereof into use, and that the term should be extended, it shall be the duty of the commissioner to extend the patent for the additional term of seven years, by making a certificate to that effect on the patent, which certificate, and also that of said board, are to be recorded in the patent office, and such renewal shall extend for the benefit of assignees and grantees to the extent of their respective interests in the patent. But no grant of such extension is to be made after the expiration of the original

term.

This provision is, no doubt, intended to supersede, in some degree, applications to the legislature for the extension of patents. Whether the legislature will entertain applications in the nature of an appeal from the decision of the board, remains to be determined.

CHAPTER XV.

Property in Patents and in Unpatented Secrets.

THE interest of a patentee in his patent is a species of personal property, created by grant under the authority of the State, and one that could not exist without a positive law for its support. It is true that an invention that could be used in secret, without an exposure of the process by the exhibition of the products, might be retained and its advantages enjoyed by the inventor, independently of a law for its protection. But the patent law does not deprive the inventor of any advantage of this description. He may still, notwithstanding the law, guard his secret and enjoy its advantages as he might have done before the law was enacted. He is not required to make and publish his specification. But then it would not be a species of property; it would, after all, be only his secret.1

It is obviously impossible for an inventor to avail himself of the advantages of his improvement in this

1 Godson, p. 171.

2

way in regard to most inventions, and it is very difficult to do it in any case. The process will sooner or later be divulged by the persons he employs, or will be liable to be detected in the results or products. The improvement made in the art of bleaching, mentioned in Tenant's case, was practised six years before the patent was applied for. In other cases an inventor might expect to carry on his manufacture in secret for a still longer period. Dr. Swainson kept the secret of making his vegetable syrup for more than thirty years. In the few instances, however, in which there would be any chance of keeping the secret, there would be the constant inconvenience of the risk of detection and the consequent loss of the advantages of the discovery. Accordingly very few inventors decline the terms proposed by the patent laws for a temporary monopoly, as the price of the full disclosure of their discoveries, with the expectation of being able to reap the advantages of them for a longer period than that allowed by the statute by carrying on a secret manufacture.

There have been instances of suits and applications for injunctions, to protect inventors in the advantages of unpatented inventions, but without success. These proceedings have generally related to medicines.

Dav. Pat. Cas. 429.

But though an inventor cannot assert a right of property in an invention independently of the patent law, still he has an interest in his invention for which he proposes to take out a patent, before he has actually taken it out, and such an interest as he may, to some purposes, vindicate in a suit. It has been held, in England, that a man has such a property in his invention before a patent is procured, that if he agree to inform another person of the secret, who binds himself in a penalty not to avail himself or take any undue advantage of the communication, he may maintain an action for the breach of that contract. In the United States, an agreement for the assignment of a patent right before the patent is taken out, is a matter of familiar practice, and its validity is recognised by the adjudged cases.*

So an agreement as to the interest that the parties to the agreement shall respectively have in the patent when taken out, has been held valid. Two persons, in order to secure to themselves the benefit of an invention, mutually covenanted that one should have the exclusive use and sale of the machines in Massachusetts and Rhode Island, and the other in the rest of the

Smith v. Dickenson, 3 Bos. & Pull. 630. 4 Herbert v. Adams, 4 Mason's R. 15.

United States, and that neither should use them in the district of the other, under the forfeiture of a certain sum for each machine so used. They subsequently obtained a joint patent for the invention. It was held, in a suit by the one against the other for a breach of the covenant, that if the patent was void, still the contract was valid. Wilde J. said, "the patent formed no part of the consideration of the contract, for it existed only in contemplation when the contract was made. The most that can be said is, that the contracting parties had, at the time, the expectation of securing the profitable use of their invention by obtaining a valid patent, and nothing is averred in the pleadings from which we can infer that this expectation has been defeated or is likely to be,"

CHAPTER XVI.

Assignment. Agreement to Assign.

THE eleventh section of the act of 1836 provides that "every patent shall be assignable in law, either as to the whole interest or any undivided part thereof,

5 Stearns v. Barrett, 1 Pick. 443.

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