by any instrument in writing; which assignment, and also every grant and conveyance of the exclusive right under any patent, to make and use, and to grant to others to make and use, the thing patented within and throughout any specified part or portion of the United States, shall be recorded in the patent office within three months from the execution thereof."

This varies from the corresponding provision in the act of 1793, s. 4, which provided only for the recording of the assignment of the patent or a share of it, not for that of a license.

The inventor may assign his interest before taking out the patent,' for then he has a right which becomes property on the patent being taken out.

An assignment of the right, before the patent is taken out, will, according to the report of Dr. Jones, who is familiarly acquainted with the practice at the patent office, enable the assignee to take out the

2

patent originally. But this practice seems to be very questionable. The law requires the oath of the inventor himself, and contains no provision for issuing the patent to any other person except to his personal representatives in case of his decease. The effect how

1 Herbert v. Adams, 4 Mason, 15.

Digest of the Decisions on Patents, 1831, No. 20, p. 26.

ever, of taking out the patent in the name of the inventor and recording the assignment previously made, is the same as issuing the patent in the name of the assignee."

As between the parties to the assignment, it has been held in Massachusetts to be valid without being recorded. But, at least, third parties are not liable to be affected by an unrecorded assignment, since to admit them to be so, would render the provision for the recording nugatory. In order to enable the assignee to bring, or join in, a suit upon the patent right, it is necessary that the assignment should be recorded.

The defendant covenanted to assign to the plaintiff a sixteenth part of a patent right to a machine for cutting files, of which one Hatch was the inventor and patentee; and on receiving an assignment thereof from Hatch, transferred it to the plaintiff, without having first caused Hatch's assignment to be registered in the office of the secretary of state; this was held not to be a breach of the covenant. The court said, that it was for the plaintiff to cause the assignment of Hatch to be registered, as in cases of conveyance of real estate

Herbert v. Adames, 4 Mason R. 15.

♦ Morril v. Worthington, 14 Mass. R. 389.

which the purchaser always procures to be recorded; and that the defendant might legally assign the right which he acquired from Hatch, before such registry was made.5

A question on the construction of an assignment, whether it granted the right of one machine only, or that of making, using and vending any number, has been brought before the Supreme Court in Maine. The defendants conveyed to the plaintiffs "four clapboard machines and two shingle machines, in Dwight and Stone's building, in Livermore, on Androscoggin river; and likewise the patent right for Livermore and Jay, all that is east of the Androscoggin river, and the town of Dixfield; we sell all the above machinery, and right for the above towns, to make, use and vend to others to use, during the term of the patent, which is fourteen years from September 3, 1813." It was contended that only one patent right was intended to be conveyed; to be applied, so far as it was applicable, to both the kinds of machine sold. But it was held, that this was a conveyance not only of the clapboard and shingle machines in Stone's building, and the right to use them, but also of the patent right to construct

5 Morrell v. Worthington, 14 Mass. R. 389.

and use machines of both descriptions within the territory described in the conveyance."

Where the patentee took a lease of a shop in which was erected a machine patented by himself, with an agreement in the lease to deliver up the premises, including the machine, at the end of the term, in good condition to the lessor, Mr. Justice Washington ruled that this was the consent of the patentee in writing that the lessor should use the machine, himself, or by his servants, or let it to others to be used."

In case of an assignment of a right, under a void patent, the question occurs, whether the agreed price can be recovered by the vendor of the purchaser, or, in case of payment, whether the amount paid can be recovered back by the purchaser on discovering that the patent is void. It has not been held in any case that, on such a sale, the agreed price can be recovered of the purchaser, and the vendor has failed in an action brought to recover it."

But in another case, where the purchaser has brought an action to recover back the price after having paid it, and after using the invention and enjoying the advan

Judkins v. Earl, 7 Greenl. 9.

7 Reutgen v. Kanowrs and Grant, 1 Wash. C. C. R. 168. Hayne v. Maltby, 3 T. R. 438.

tages of it, there being good faith and an honest intention on the part of the vendor, who, supposes that he had a good right, the decisions have been against the purchaser.'

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CHAPTER XVII.

Infringement.

Sec. 1. Definition in the Law. Devising.

2. Making.

3. Using.

4. Selling.

5. Identity of Thing Used or Sold, and that Patented. Difference in Form and Proportions merely. Infringement of a Combination of a Part.

Sec. I.-DEFINITION IN THE LAW. DEVISING.

THOUGH an inventor, having a right to take out a patent, may assign such patent before taking it out, so that the assignment may operate on the patent when

14 Taylor v. Hare, 4 B. & P. 260.