and in the subordinate rights into which they may be divided. The first of these elements is the property in the invention itself. This element originates in the inventive act by which the invention was produced, consists of the right to practise the invention, and is divisible into the subordinate rights to make, use, and sell the art or instrument invented. The second element is the property in the patent privilege by which the invention is protected. This element originates in a grant of the sovereign power acting under the enactments of positive law, consists in the right to prevent all persons except the patentee from practising the invention, and is divisible into the subordinate rights to prohibit the making, use, or sale of the invention except upon such terms or by such persons as the patentee may deem expedient, and to obtain redress for its forbidden making, use, or sale. The first of these two elements is wholly independent of the second. It exists equally whether the invention is patented or not, and it may be transferred by the inventor either as a whole or as to any one or more of its subordinate rights. Nor does this element draw after it the second. While the invention remains a secret with the inventor or his transferees, their enjoyment of its benefits may be exclusive, but if it becomes known to others, their ownership of the invention confers upon them no power to prevent its general use. The necessity for the second element then first arises, and this being obtained bestows authority on the inventor to restrict the practice of the invention within such limits as he pleases, and to recover compensation from all persons who infringe on his exclusive rights. This second element is thus a mere prohibitory power.

§ 753. 1 In re Brosnahan (1883), 4 McCrary, 1, Miller, J. : (5) "It is to be observed that no constitutional or statutory provision of the United States was, or ever has been, necessary to the right of any person to make an invention, discovery, or machine, or to use it when made, or to sell it to some one else. Such right has always existed and would exist now if all patent laws were repealed. It is a right which may

While it confers a monopoly on

be called a natural right, and which, so far as it may be regulated by law, belongs to ordinary municipal legislation; and it is unaffected by anything in the Constitution or Patent Laws of the United States. The sole object and purpose of the laws which constitute the patent and copyright system is to give to the author and the inventor a monopoly of what he has written or discovered, that no one else shall make

nor any of

On the conthey do not

the inventor, it neither creates the invention the rights which accrue from the inventive act. trary, it presupposes their existence, and if exist the grant of the monopoly is void. Both its own nature and the purposes for which it is bestowed, however, render it so far dependent on the former element that it cannot subsist except in the inventor or in those to whom he has conveyed some interest in the invention; though any interest in the invention less than the exclusive right to make and use and sell may be transferred by the inventor without bestowing any part of his monopoly. Hence in every patented invention there are two objects capable of alienation, the invention or the right to make, use, and sell the patented art or instrument, and the monopoly or the right to prohibit others from practising the invention, and to obtain redress for its forbidden making, use, or sale. The principles which govern the alienation of these objects are very different.

§ 754. Property in the Invention Transferable without Re

striction.

The alienation of the invention, or the rights to make, use, or sell, is unrestricted by the nature of the property or the rules of law. The owner of the invention may confer these rights, either separately or together, upon one person or upon many different persons, and each may exercise the rights so conferred without reference to the others. He may transfer them before or after the patent is granted, and may or may

or use or sell his writings or his invention without his permission; and what is granted to him is the exclusive right, not the abstract right, but the right in him to the exclusion of everybody else. ... (6) the purpose of the Patent Law and of the constitutional provision are answered when the patentee is protected against competition in the use of his invention by others; and when the law prevents others from infringing on his exclusive right to make, use, or sell, its object is accomplished." 18 Fed. Rep. 62 (64).

Further, that a patent gives only a

right to exclude others from practising the invention, see De Witt v. Elmira Nobles Mfg. Co. (1875), 5 Hun, 301; Hawks v. Swett (1875), 4 Hun, 146; 6 Thomp. & C. 529; Bloomer v. McQuewan (1852), 14 How. 539.

§ 754. That the rights to make, to use, and to sell, are essentially distinct and may be separately granted, see Dorsey Revolving Harvester Rake Co. v. Bradley Mfg. Co. (1874), 12 Blatch. 202; Adams v. Burke (1873), 17 Wall. 453; 33 O. G. 114; Jenkins v. Greenwald (1857), 2 Fisher, 37; 1 Bond, 126.

not unite with this transfer a conveyance of the entire monopoly or any lawful interest therein. Such transfer does not take effect by virtue of his patent, if he has procured one, nor does its validity as against him depend on the legality of the monopoly which he has received. Its sole relation to the patent arises from the fact that the patentee is not permitted to exercise the prohibitory powers of his monopoly against those to whom he has transferred a right to the invention, and is compelled in certain cases to employ these powers for their protection.

§ 755. Property in the Monopoly Transferable only within

Certain Limits.

The alienation of the monopoly created by the patent is, on the other hand, restricted both by its own nature and the rules of law. Of its own nature it is indivisible, except as to the territorial area over which it may be exercised.1 That each of two independent persons should possess the power to prohibit the practice of an invention in the same locality involves a contradiction of terms; for as this prohibitory power cannot exist apart from the property in the invention, each would at once have a right to make, use, and sell the patented invention and yet be subject to the prohibition of the other. An indivisible monopoly may reside in one person or in several. It may be vested in one owner as to one section of

2 That a sale of the patented device and of the right to use it, conveys no part of the monopoly, see Goodyear v. Beverly Rubber Co. (1859), 1 Clifford, 348.

§ 755. In Gayler v. Wilder (1850), 10 How. 477, Taney, C. J. : (494) "For it was obviously not the intention of the legislature to permit several monopolies to be made out of one, and divided among different persons within the same limits. Such a division would inevitably lead to fraudulent impositions upon persons who desired to purchase the use of the improvement, and would subject a party who, under a mistake as to his rights, used the invention

without authority, to be harassed by a multiplicity of suits instead of one, and to successive recoveries of damages by different persons holding different portions of the patent right in the same place."

Further, that the monopoly is indivisible except as to locality, see Sanford v. Messer (1872), 2 O. G. 470; 5 Fisher, 411; Holmes, 149; Burr v. Duryee (1862), 2 Fisher, 275; Metropolitan Washing Machine Co. v. Earle (1861), 3 Wall. Jr. 320; 2 Fisher, 203; Goodyear v. Railroad (1853), 1 Fisher, 626; Suydam v. Day (1846), 2 Blatch. 20; and § 61 and notes, ante.

country and in a different owner as to another, but wherever it exists, it must exist as an entirety. It might indeed be possible, in theory, to sever the monopoly in correspondence to the rights embraced in the invention, conferring upon one person the power to prohibit all others from making the invention, upon another the power to forbid its use, and upon another the authority to prevent its sale; but the practical result of such divisions upon the rights of the respective monopolists, as well as upon those of the owners of these various interests in the invention, would be too disastrous to be long tolerated by an industrial community. The law, therefore, peremptorily forbids such multiplication of monopolies, and provides that the prohibitory powers bestowed upon the patentee shall be regarded as indivisible in subject-matter, and constitute but one monopoly in any given portion of the United States.2

§ 756. Transfers of Two Classes: First Class Transfers both the Invention and the Monopoly.

These differences between the alienability of an invention and that of the monopoly created by the patent indicate the differences between the two great classes of conveyances by which the transfer of an interest in a patented invention is effected. One of these classes operates directly both on the invention and on the monopoly. It not only conveys the entire or partial interest in the invention, conferring on the transferee the right to practise it, but it also bestows upon him the prohibitory power by virtue of which he can, within the area specified in his conveyance, prevent all other persons from enjoying it, and compel those who transgress to make him compensation for the injury. And as the power to prohibit includes the power to relieve from prohibition, this transferee, in alienating rights, in his turn, to practise the invention, emancipates his alienees from the restrictions of 2 In Gayler v. Wilder (1850), 10 in the monopoly remains in the patHow. 477, Taney, C. J.: (495) "Un questionably, a contract for the purchase of any portion of the patent right may be good as between the parties as a license, and enforced as such in the courts of justice. But the legal right

entee, and he alone can maintain an action against a third party who com mits an infringement upon it."

See also Sanford v. Messer (1872), 5 Fisher, 411; Holmes, 149; 2 O. G. 470.

the monopoly to an extent commensurate with their respective interests in the invention.

§ 757. Second Class Transfers the Invention, but not the Monopoly.

The second class of conveyances operates directly only upon the invention. It transfers no interest in the monopoly, though it protects the transferee against the exercise of the prohibitory powers and enables him in certain cases to invoke them in his favor. It vests in him no authority either to forbid others to practise the invention, or to bestow upon them the right to its enjoyment; though when his interest in the invention is made alienable by the express terms of his conveyance, or by legal implication, his alienee receives the same rights, under the same restrictions and with the same degree of deliverance from the monopoly. Such a conveyance does not rest upon the patent nor affect the exclusive ownership of the monopoly by the patentee or those to whom, by the first class of conveyances, it has been transferred. Its sole operation upon the monopoly is that of an estoppel, the transferor, and all persons who derive a title to the monopoly from him after the transfer of such interest in the invention, being estopped from enforcing their prohibitory powers against the transferee in such a manner as to impair the value of the interest transferred.

§ 758. No Transfer can be of the First Class unless it Conveys the Entire Interest, or an Undivided Portion of the Entire Interest, in the Invention for the Whole or for Some Definite Part of the United States.

The final test to which the conveyance of an interest in a patented invention is to be subjected, in order to determine whether it belongs to the former or the latter class, is found in the same difference between the alienability of an invention and of a monopoly. As the monopoly is created and subsists only to secure the benefits of the invention to its lawful owners, so the monopoly cannot exist except in one who owns the entire interest or a partial interest in the invention. It thus resides originally in the patentee, who