inventor and the public which like all other contracts may character, which are suspended or relinquished by the grant of letters-patent. The government has the right to bestow upon the first and true inventor of that invention an absolute and undisputed monopoly, free from all doubts as to his title, and this right is relinquished by the actual issue of a patent to any patentee. The public, whom the government represents, have an unquestioned natural right to use the invention freely upon its voluntary publication by the inventor, and to invent and use the art or article for themselves in case he does not see fit to disclose it. This right is immediately suspended by the issue of a patent, and cannot be regained until the patent has expired or been repealed. Both of these rights are of the highest value to the nation, and their invasion by fraudulently obtaining the issue of a patent is an injury equal in enormity and in disaster to the public to that which any fraudulent land grant could occasion. No better illustration of this statement can be needed than the patent whose repeal was sought in the case at bar, patent which if fraudulently procured has not only deprived the government of the power to confer a merited monopoly on an illustrious and successful inventor, but has been made an engine of oppression on the public from one end of the country to the other. If this question is to be determined by analogy it is thus evident that the doctrine applied to land grants, and not that to franchises, must furnish us with the desired solution. a Though the correspondence in subject-matter is not exact, the rights involved are of the same general character and vest in the same persons, while the wrongs committed by the fraud affect interests of equal importance, and demand as summary relief. In United States v. American Bell Telephone Co. (1888); 128 U. S. 315; 45 O. G. 1311, the principles asserted in this criticism of the two cases before mentioned have just been adopted, in substance, by the Supreme Court of the United States as the grounds of its reversal of the decision in United States v. American Bell Telephone Co., and its consequent rejection of Atty. Gen. v. Rumford Chemical Works as a reliable authority upon the point in question. Mr. Justice Miller there presents these considerations in a different arrangement from that here pursued, but reaches his results by the same general methods, unqualifiedly asserting the right of the United States to proceed in equity for the repeal of patents fraudulently ob tained, although no statutory power or remedy to that effect has been conferred upon them. In United States v. Gunning (1883), 21 Blatch. 516, Wallace, J.: (517) "Notwithstanding the expression of opinion by Judge Shepley, in Attorney General v. Rumford Chemical Works (2 Banning & Arden, 298), in favor of the defendants' position, it is believed there is no sound reason why a bill will not lie in such a case, as well as where the subject of the grant is land or is a franchise or right of a different kind. The learned judge laid much stress upon the consideration that, in issuing letters-patent for inventions, nothing is granted which belonged before to the United States, and that the rights and remedies of the parties to such grants are dependent solely on the statute enactments, and do not grow out of any previous ownership of the subject of the grant; and it was his view that in such a case, express authority for proceedings to annul the grant must be conferred, in order to sanction them. The same reasoning would preclude a State from proceedings to annul the charter of a corporation created by its Legislature, if obtained through fraud. Yet it is a be rescinded for non-performance of conditions precedent, or avoided when originally obtained by fraud. § 726. Patents Repealable at Common Law in the Interest of the Public in Three Classes of Cases. At common law a grant by the sovereign was revocable in three classes of cases: (1) Where the same subject-matter had been previously granted; (2) Where the grant had been procured by fraud; (3) Where the subject-matter of the grant could not legally be granted. familiar principle that grants of corporate franchises, obtained through fraud practised upon the Legislature, are void when the State elects to set them aside by a judicial rescission. (Morawetz, Corp. § 148.) He also refers to the provisions of the Patent Acts of 1790 and 1793, which authorized proceedings for the repeal of patents obtained surreptitiously or by false suggestion, as indicating that Congress deemed it necessary that authority for proceedings to repeal letters-patent obtained through fraud should be conferred by statute. These provisions, however, permitted such proceedings to be taken by any person who chose to complain, — a right which did not and does not exist unless expressly conferred. A bill in equity lies to set aside letters-patent obtained by fraud, but only between the sovereignty making the grant and the grantee. (Field v. Seabury, 19 How. 323.) No inference can be justly drawn, therefore, from these provisions, that Congress deemed it requisite to confer express authority upon the United States to maintain such a suit, nor, from the absence of such provisions in the existing laws, that Congress intended to with hold such authority." 26 O. G. 356 (356), 18 Fed. Rep. 511 (512). In Mowry v. Whitney (1871), 14 Wall. 434, Miller, J.: (440) "The 16th section of the Patent Act of 1836 seems to have in view the same distinc Under our law the first tion made by the common law in regard to annulling patents, for while it authorizes individuals claiming under conflicting patents, or one whose claim to a patent has been rejected because his invention was covered by a patent already issued, to try the conflicting claim in chancery, and authorizes the court to annul or set aside a patent so far as may be found necessary to protect the right, the suit by individuals is limited to that class of cases. And it is provided that the decree shall be of no validity except between the parties to the suit. The general public is left to the protection of the government and its officers." 10. G. 499 (500); 5 Fisher, 513 (515). § 726. 1 In Mowry v. Whitney (1871), 14 Wall. 434, Miller, J.: (439) "The ancient mode of doing this in the English courts was by scire facias, and three classes of cases are laid down in which this may be done: (1) When the king by his letters-patent has by different patents granted the same thing to several persons, the first patentee shall have a scire facias to repeal the second; (2) When the king has granted a thing by false suggestion, he may by scire facias repeal his own grant; (3) When he has granted that which by law he cannot grant, he, jure regis, and for the advancement of justice and right, may have a scire facias to repeal his own letters-patent. . . . It will be observed that in the case of a conflict class has been modified in character and provided with a special remedy. The common law conclusively presumed the first patent to be valid as against all patents subsequently granted, and thus repealed only the later patent in favor of the former. Our law recognizes no conclusive presumption in the interest of either the prior or the later patent, but sustains the one granted to the first and true inventor and repeals all others. The method by which this is accomplished, without invoking the aid of the public, was discussed in the last section. S727. Proceedings for a Repeal in the Interest of the Public Necessary when the Patent was Obtained by Fraud. The second class of cases directly involves the interests of the whole people and can be remedied only by governmental interference. A patent procured by fraud not only confers no just rights on the patentee, but as long as it exists it constitutes an unwarrantable limitation on the sovereign power. So far as it affects the interests of individual citizens it is also an act of oppression, in aid of which the sanction of the government has been unlawfully obtained. But no ability to secure himself against its operation resides in any individual. It is a grant within the jurisdiction of the grantor, and therefore cannot be collaterally attacked. Nor is the injury sus tained by individuals from the fraud and falsehood of the patentee so distinct from that inflicted on the general public that any private action can be instituted to redress it.1 under two patents granting the same rights, the scire facias may, according to the authorities cited, be brought in the name of one of the patentees; but in the other cases, when the patent was obtained by a fraud upon the king, by false suggestion, or where it was issued without authority, and for the good of the public and right and justice it should be repealed, the writ is to issue in the king's name or his attorney-general's. It is also said that when a patent is granted to the prejudice of the subject, the king of right is to permit him upon his petition to use his name for the repeal of it, in scire facias at the king's suit." 1 O. G. 499 (500); 5 Fisher, 513 (514). § 727. 1 In Mowry v. Whitney (1871), 14 Wall. 434, Miller, J.: (441) "The reasons for requiring official authority for such a proceeding are obvious: (1) The fraud, if one exists, has been practised on the government, and as the party injured, it is the appropriate party to assert the remedy or seek relief. (2) A suit by an individ. ual could only be conclusive in result Hence, as such frauds upon the Patent Office cannot be prevented, and as in the inevitable course of things patents from time to time are granted upon false suggestions or upon concealments which amount to fraud, the revocation of such patents is a duty which the public owes to itself both as a sovereign and as a community of individuals. § 728. Proceedings for a Repeal in the Interest of the Public sometimes Necessary where the Subject-matter of the Patent cannot Lawfully be Patented. How far and when the government is called upon to interfere in cases of the third class is a question of more difficulty. The grant of a subject-matter which is by law incapable of being granted carries upon its face the evidence of its own invalidity. The power of the sovereign is not limited by it even in appearance, nor is the subject estopped from denying its efficiency in a collateral proceeding. Thus while the authority of the government to revoke the grant cannot be doubted, the cases in which this becomes necessary in the interest of the public or for individual protection are comparatively rare. Under our patent system the security af as between the patentee and the party suing, and it would remain a valid instrument as to all others. (3) The patentee would or might be subjected to innumerable vexatious suits to set aside his patent, since a decree in his favor in one suit would be no bar to a suit by another party. If, on the other hand, an individual finds himself injured, either specially or as a part of the general public, it is no hardship to require him to satisfy the attorney-general that the case is one in which the gov ernment ought to interfere, either directly by instituting the suit, or indirectly by authorizing the use of its name, by which the attorney-general would retain such control of the matter as would enable him to prevent oppression and abuse in the exercise of the right to prosecute such a suit. It would seriously impair the value of the title which the government grants after reg. ular proceedings before officers appointed for the purpose, if the validity of the instrument by which the grant is made, can be impeached by any one whose interest may be affected by it, and would tend to discredit the authority of the government in such matters." 1 0. G. 499 (500); 5 Fisher, 513 (516). See also § 715 and notes, ante. That the unintentional issue of a patent cannot be set up except in a direct proceeding to vacate the patent, see Doughty v. West (1869), 3 Fisher, 580; 6 Blatch. 429. That the United States cannot sue to repeal a patent on grounds that have been urged against the patent in an infringement suit when the patent was sustained, see United States v. Colgate (1884), 32 Fed. Rep. 624. forded against unlawful patents of this character by the proceedings in the Patent Office, and by the defences permitted to alleged infringers, is usually sufficient, and in such cases the government will not interfere. But where the invalidity of a patent has been established by repeated decisions of the courts, and it is being used as a mere instrument of oppression against citizens who, though aware of its true character, cannot avoid incurring trouble and expense in their defence against it, the public cannot justly refuse to withdraw the appearance of authority, under which the wrong is perpetrated, by the immediate and final revocation of the patent. § 729. Proceedings for a Repeal in the Interest of the Public are by Bill in Equity in the Name of the United States. The proceeding for the repeal of an unlawful patent of the second or third classes is by a bill in chancery in the name of the government or its Attorney-General. Such proceedings are instituted with great caution. The Attorney-General in the equity side of the court of chancery." 1 O. G. 499 (500); 5 Fisher, 513 (515). § 729. 1 In Mowry v. Whitney (1871), 14 Wall. 434, Miller, J.: (440) "The scire facias to repeal a patent was brought in chancery where the patent was of record. And though in this country the writ of scire facias is not in use as a chancery proceeding, the nature of the chancery jurisdiction and its mode of proceeding have established it as the appropriate tribunal for the annulling of a grant or patent from the government. This is settled so far as this court is concerned by the case of the United States v. Stone, in which it is said that the bill in chancery is found a more convenient remedy. A bill of this character was also sustained in the English chancery in the case of The Attorney-General v. Vernon, on the ground of the equitable jurisdiction in matters of fraud. And in the case of Jackson v. Lawton, Chancellor Kent says that in addition to the writ of scire facias which has ceased to be applicable with us, there is another remedy, by bill That proceedings to repeal a patent under the act of 1793 were in the nature of a scire facias, see Ex parte Wood (1824), 9 Wheat. 603; 1 Robb, 438; Stearns v. Barrett (1816), 1 Mason, 153; 1 Robb, 97. That only the attorney-general, in the name of the United States can sue to limit or repeal a patent, see Celluloid Mfg. Co. v. Goodyear Dental Vulcanite Co. (1876), 10 O. G. 41; 13 Blatch. 375; United States v. Doughty (1870), 7 Blatch. 424. That the power of the attorney-general to sue for a repeal gives no power to a defendant in an infringement suit to bring the matter before the courts, see New York and Baltimore Coffee Polishing Co. v. New York Coffee Polishing Co. (1881), 20 Blatch. 174; 9 Fed. Rep. 578. |