If the assignment is by mistake a mere blank deed, a court of equity will not enjoin the collection of the notes given therefor unless the bill avers the insolvency of the assignor. Black v. Stone, 33 Ala. 327.

Where the assignee has sold a part of the territory, he can not have the contract rescinded in equity unless he tenders a return of what remains unsold and the value of that which has been sold. Edmunds v. Myers, 16 Ill. 207; Edmunds v. Hildreth, 16 Ill. 214.

If a party gives his note to the patentee for the purpose of enabling the latter to sell a part of the patent to another under the belief that he has made a similar purchase, he can not maintain an action to compel a cancellation of the note. Overshiner v. Wisehart, 59 Ind. 135.

An instrument which confines the party to a particular use of the invention is not an assignment, but a license. Edwin L. Paine, 13 O. G. 407. An attorney appointed under an irrevocable power, coupled with an interest, and authorizing him to sell an invention in his discretion, is not a purchaser, but an agent. Calista E. Cox, 2 O. G. 491.

If a power of attorney authorizing the agent to assign the patent is general, he may assign it before the patent issues, if there is at that time no revocation thereof. G. Eveleigh, 1 O. G. 303.

The assignment of the invention or improvements does not convey the extended term, something more definite being necessary to indicate the intention of the parties to transfer the interest in the extension. Holmes & Spaulding, 6 Ó. G. 581.

If an instrument purports to convey inventions not yet in existence it is not an assignment, but only an executory contract. Thomas Edison, 7 O. G. 423.

If an assignee owns the right to an extension, an assignment of all his right, title and interest will convey his right to the extension. John L. Mason, 1 O. G. 357.

An assignment by a corporation will pass a right that may be enforced in equity, although its seal was omitted. John L. Mason, Ï O. G. 357.

SEC. 4899. Every person who purchases of the inventor or discoverer, or with his knowledge and consent constructs any newly invented or discovered machine, or other patentable article, prior to the application by the inventor or discoverer for a patent, or who sells or uses one so constructed, shall have the right to use, and vend to others to be used, the specific thing so made or purchased, without liability therefor.

Statute Revised-July 8, 1870, ch. 230, § 37, 16 Stat. 203.

Prior Statute-March 3, 1839, ch. 88, § 7, 5 Stat. 354.

The object of this provision is evidently twofold: 1st, to protect the person who has used the thing patented by having purchased, constructed or made the machine, &c., to which the invention is applied, from any

liability to the patentee or his assignee; 2d, to protect the rights granted to the patentee against any infringement by any other persons. This relieves him from the effects of former laws and their construction, unless in case of an abandonment of the invention or a continued use for more than two years before the application for a patent, while it puts the person who has had such prior use on the same footing as if he had had a special license from the inventor to use his invention, which, if given before the application for a patent, would justify the continued use after it issued, without liability. M'Clurg v. Kingsland, 1 How. 202; s. c. 2 Robb 105. The words "machine or other patentable article" and "such invention," mean the "invention patented," and the words "specific thing" refer to "the thing as originally invented," whereof the right is secured by patent, but not any newly invented improvement on a thing once patented. The use of the invention before an application for a patent must be the specific improvement then invented and used by the person who had purchased, constructed or used the machine to which the invention is applied. M'Clurg v. Kingsland, 1 How. 202; s. c. 2 Robb 105.

The section applies to an invention which consists in a new mode or manner of operating an old machine, or any of its parts, as well as to a specific machine. M'Clurg v. Kingsland, 1 How. 202; s. c. 2 Robb 105.

If parties construct a machine before the application of the patentee for letters patent, under the belief authorized by him that he consents and allows them so to do, then they may lawfully continue to use the same after the date of the letters patent. Kendall v. Winsor, 21 How. 322; Black v. Hubbard, 12 O. G. 842; s. c. 3 Ban & Ard. 39.

The purchaser here spoken of is a purchaser not from a mere wrongdoer, but from the first and true inventor before he obtained his patent. Pierson v. Eagle Screw Co., 3 Story 402; s. c. 2 Robb 268; Hovey v. Stevens, 1 W. & M. 290; s. c. 2 Robb 479, vide Troy Factory v. Odiorne, 17 How. 72.

A use by fraud and a piracy on the inventor, is not contemplated or protected under this section. Hovey v. Stevens, 1 W. & M. 290; s. c. 2 Robb 479.

The Constitution and law taken together give to the inventor, from the moment of invention, an inchoate property therein, which is completed by suing out a patent. This inchoate right is exclusive. It can be invaded or impaired by no person. No person can, without the consent of the inventor, acquire a property in the invention. Whenever any person, previous to a patent, constructs a machine discovered by another, he constructs it subject to the rights of that other. Evans v. Jordan, 1 Brock. 248; s. c. 9 Cranch 199; s. c. 1 Robb 20, 57.

If a member of a firm prior to his application for a patent makes a machine at the expense of the firm and permits its use by the firm, the firm may continue to use it after the grant of a patent. Wade v. Metcalf, 16 Fed. Rep. 130.

If a firm acquires the right to use a machine made by a partner, the right does not cease on the dissolution of the firm. Wade v. Metcalf, 16 Fed. Rep. 130.

The right of a party who has bought, or constructed a machine before the application for a patent is confined to the specific machines so bought or constructed. Brickill v. New York, 18 Blatch. 273; s. c. 18 0. G. 463; s. c. 5 Ban & Ard. 544; s. c. 7 Fed. Rep. 479.

SEC. 4900. It shall be the duty of all patentees, and their assigns and legal representatives, and of all persons making or vending any patented article for or under them, to give sufficient notice to the public that the same is patented; either by fixing thereon the word "patented," together with the day and year the patent was granted; or when, from the character of the article, this can not be done, by fixing to it, or to the package wherein one or more of them is inclosed, a label containing the like notice; and in any suit for infringement, by the party failing so to mark, no damages shall be recovered by the plaintiff, except on proof that the defendant was duly notified of the infringement, and continued, after such notice, to make, use, or vend the article so patented.

Statute Revised-July 8, 1870, ch. 230, § 38, 16 Stat. 203.

Prior Statutes-Aug. 29, 1842, ch. 263, § 6, 5 Stat. 544.-March 2, 1861, ch. 88, § 13, 12 Stat. 249.

This section has no application to a case where the infringer makes and uses the device. Herring v. Gage, 15 Blatch. 124; s. c. 3 Ban & Ard. 396.

If an article can be stamped at a trifling cost, it must be stamped. Putnam v. Sudhoff, 1 Ban & Ard. 198.

The penalty imposed by the statute for a failure to mark patented articles is only the taking away of the right to recover damages in the suit. It does not affect the right to an injunction, either perpetual or provisional, as a remedy. Goodyear v. Allyn, 3 Fish. 374; s. c. 6 Blatch. 33; s. c. 1 A. L. T. 94.

It is for the defendant to show a failure by the complainant to mark the articles made or vended as required, and then the burden of proof is on the complainant to show that, before suit was brought, the defendant was duly notified that he was infringing the patent, and that he continued, after such notice, to make or vend the article patented. Goodyear v. Allyn, 3 Fish. 374; s. c. 6 Blatch. 33; s. c. 1 A. L. T. 94; contra, McComb v. Brodie, 5 Fish. 384; s. c. 1 Woods 153; 2 O. G. 117.

The notice of the infringement required by this section may be either verbal or written. New York Pharmical Association v. Tilden, 23 O. G. 272; s. c. 14 Fed. Rep. 721.

If the complainant does not sell the patented articles, the objection that articles sold by others were not properly marked will be of no avail. Goodyear v. Allyn, 3 Fish. 374; s. c. 6 Blatch. 33; s. c. 1 A. L. T. 94.

After the expiration of the patent the patentee can not claim the exclusive right to use the word "patent" as a trade-mark on articles manufactured by him. Fairbanks v. Jacobus, 14 Blatch. 337; s. c. 3 Ban & Ard. 108.

A patentee may enjoin another from issuing a circular stating that he manufactures articles under the patent, and the party issuing such a circular can not in such a suit question the validity of the patent. Washburn & M. Manuf. Co. v. Haish, 4 Ban & Ard. 571.

SEC. 4901. Every person who, in any manner, marks upon anything made, used, or sold by him, for which he has not obtained a patent, the name or any imitation of the name of any person who has obtained a patent therefor, without the consent of such patentee, or his assigns or legal representatives; or

Who, in any manner, marks upon or affixes to any such patented article the word "patent" or "patentee," or the words "letters patent," or any word of like import, with intent to imitate or counterfeit the mark or device of the patentee, without having the license or consent of such patentee or his assigns or legal representatives; or

Who, in any manner, marks upon or affixes to any unpatented article the word "patent," or any word importing that the same is patented, for the purpose of deceiving the public, shall be liable, for every such offence, to a penalty of not less than one hundred dollars, with costs; one-half of said penalty to the person who shall sue for the same, and the other to the use of the United States, to be recovered by suit in any district court of the United States within whose jurisdiction such offence may have been committed.

Statute Revised-July 8, 1870, ch. 230, § 39, 16 Stat. 203.
Prior Statute-Aug. 29, 1842, ch. 263, § 5, 5 Stat. 544.

Paragraph Two.

Although a person affixes the word "patent " to an article with intent to imitate the mark or device of a patentee, yet he is not liable under this

section unless the article is covered by the patent. French v. Foley, 11 Fed. Rep. 804.

Paragraph Three.

The penalty is incurred by marking an unpatented article with the word "patent," whether patentable or not. Oliphant v. Salem Flouring Mills, 5 Saw. 128; s. c. 3 Ban & Ard. 256; contra, U. S. v. Morris, 3 Fish. 72; s. c. 2 Bond 23.

If the article is patented a person is not liable under this clause for affixing the word "patent," although he also puts on the article the date of another patent. French v. Foley, 11 Fed. Rep. 804.

A patentee who affixes the word "patented," with the day and year when the patent was granted, on an article, is not liable to the penalty, although the patent has expired. Wilson v. Singer Manuf. Co., 16 O. G. 1091 ; s. c. 9 Biss. 173; s. c. 4 Ban & Ard. 637; s. c. 12 Fed. Rep. 298.

The plaintiff must prove beyond a reasonable doubt: 1st. That the defendant affixed the word upon the article; 2d. That the defendant has no patent; 3d. That the defendant affixed the word with the intent to deceive the public. Nichols v. Newell, 1 Fish. 647.

The statute forbids the affixing the word upon any article for the purpose of deceiving the public. The offence is committed by affixing the word for that purpose. If it is affixed to an article for that purpose, then the offence is complete, whatever disposition of the article may subsequently be made. On the other hand, if, when the word is affixed, it is with an innocent purpose, the offence is not committed, whatever new purpose the defendant may have at a subsequent period. Nichols v. Newell, 1 Fish. 647.

The simple act of marking the article, indicating that it was patented when it was not, is not sufficient to constitute the offence. The marking must not only give the public to understand the fact of a patent, but the act must be done malo animo with an intent to deceive; and this ingredient of the offence, which is essential to make it complete, must be left to and found by the jury. Walker v. Hawxhurst, 5 Blatch. 494.

If the defendant gave instructions to his workmen to manufacture articles, and put on the word for the purpose of deceiving the public, and subsequently changed his views or wishes, but did not communicate this change to the workmen, this uncommunicated purpose or wish or intent will have no operation to prevent the affixing of the word by the workmen from being an affixing with the intent to deceive the public. Nichols v. Newell, 1 Fish. 647.

Whether the alleged false marking was done with intent to deceive the public is in ordinary cases a question of fact. Oliphant v. Salem Flouring Mills, 5 Saw. 128; s. c. 3 Ban & Ard. 256.

If a person marks an unpatented article with the word "patent," the presumption is, until the contrary appears, that the mark was placed on the article with the intention to deceive. Oliphant v. Salem Flouring Mills Co., 5 Saw. 128; s. c. 3 Ban & Ard. 256.