§ 794. Form of Grant: Implied Warranties: Estoppels. A grant, like an assignment, must be in writing and duly signed by the grantor. It must also be recorded within the same period in order to avail against subsequent bona fide assignees and grantees for value.2 It imports a warranty of title, and gives rise to the same estoppel and the same privities of interest and obligation as an assignment. Having in view the essential difference between them, the rules which have been stated as regulating and applying to the one form of conveyance may be predicated, mutatis mutandis, of the other. SECTION II. OF THE TRANSFER OF LETTERS-PATENT: JOINT-OWNERS. § 795. Property of Joint-Owners in the Patented Invention. By the assignment of an undivided interest in a patented invention, the alienor and alienee become joint-owners both of the invention and the monopoly. On account of the peculiar nature of this species of property, the relations of such joint-owners toward each other present questions of difficulty, not all of which can be considered as yet fully settled. Property in an invention, as well as property in a monopoly, is incorporeal. It is incapable alike of physical partition, and of united physical possession. The subordinate rights embraced in the invention may indeed be separated, and be § 794. Sec. 4898, Rev. Stat. 2 Sec. 4898, Rev. Stat. § 784 and notes, ante. territory "to the full end of the term," See also etc., is not a mere release, but implies that a patent has been issued in due form, and if this is not true the price is not recoverable, see Shepherd v. Jenkins (1881), 73 Mo. 510. That a conveyance of "all my right, title, and interest in and to" a patent, though recorded, does not affect territorial rights previously conveyed by the grantor, but not recorded, see Turnbull v. Weir Plow Co. (1880), 14 Fed. Rep. 108; 9 Bissell, 334; 23 O. G. 91; 5 Bann. & A. 288. 8 That an assignment of "all our right, title, and interest" in certain That if a grantee avails himself of the grant, he cannot, in a suit for royalties on goods sold, deny that the patentee is the true inventor, unless he has been evicted, see Birdsall v. Perrigo (1865), 5 Blatch. 251. held by different owners, but the monopoly is indivisible, and whether it resides in many individuals, or in one alone, must be of the same character and limits. When, therefore, a patented invention, which includes both the invention and the monopoly, vests in two or more persons their relations to each other as co-owners must follow one of three rules: either (1) each owner must individually possess all the subordinate rights embraced in the invention together with the entire and indivisible monopoly; or (2) he must individually possess the rights embraced in the invention while the monopoly resides entire and indivisible in all the owners collectively; or (3) the rights embraced in the invention as well as the monopoly must vest indivisibly in all the owners as a single person. The first rule might be pronounced untenable upon its face had not the courts, ignoring the fact that the right to suspend prohibitory powers is as true. a part of the monopoly as is the right to enforce them, already held with tolerable uniformity that each joint-owner may, at his pleasure, abrogate the monopoly both as against himself and his co-owners, a position which assumes that the monopoly is indivisibly and entirely his to destroy, if not to exercise. The second rule, and probably the correct one, has as yet received no formal recognition except, perhaps, indirectly in cases where one joint-owner has been held liable to his coowners for an infringement of their common patent. The third rule has been repeatedly discarded by the courts, and it may be accepted as an established doctrine that whatever may be their relation to the monopoly such joint-owners are not co-partners, nor collective owners of the invention, but that their interests therein are distinct, each being independent of the others, though subject to the limitations imposed upon its disposition and enjoyment by the monopoly conferred on his co-owners.1 § 795. 1 In Pitts v. Hall (1854), 3 Blatch. 201, Hall, J.: (206) "In the case of joint-patentees, where no agree ment of co-partnership exists, the relation of co-partners certainly does not result from their connection as jointpatentees; and, when one joint-owner of a patent transfers his undivided in terest to a stranger, the assignee does not become the partner of his co-proprietor. In both cases the parties interested in the patent are simply jointowners, or tenants in common, of the rights and property secured by the § 796. Reciprocal Rights and Duties of Joint Owners in reference to the Enjoyment of the Patented Invention. According to the second rule the monopoly resides in the co-owners collectively, and can neither be abrogated nor patent; and their rights, powers, and duties, as respects each other, must be substantially those of the joint-owners of a chattel. Part owners of goods and chattels are either joint-owners or ten ants in common, each having a distinct or at least, an independent, although an undivided, interest in the property. Neither can transfer or dispose of the whole property; nor can one act for the other in relation thereto, but merely for his own share, and to the extent of his own several right and interest; and at common law the one had no action of account against the other for his share of the profits derived from the common property. (Story on Partnership, § 89.) A personal chattel vested in several different proprietors cannot possibly be enjoyed advantageously by all, without a common consent and agreement among them. To regulate their enjoyment in case of disagree. ment is one of the hardest tasks of legislation, and it is not without wisdom that the law of England and of this country, in general, declines to interfere in their disputes, leaving it to themselves either to enjoy their common property by agreement or to suffer it to remain unenjoyed or to perish by their dissension, as the best method of forcing them to a common consent for their common benefit. (Abbott on Shipping, 98.) It is well settled that a destruction or sale of the joint prop. erty by one of the part owners, authorizes his co-proprietor to maintain trover for the conversion. (2 Kent's Comm., 8th ed., 351, note.) But on such a sale only the right of the party who makes the sale passes to the purchaser; and the purchaser becomes a tenant in common with the owner of the remain. ing interest, unless and until the latter confirms the sale, or recovers the value of his share from the wrong-doer. The principles of these doctrines are, it strikes me, applicable to the case of the joint-ownership of patent rights. The grant of the exclusive right to make, use, and vend to others to be used, is to the patentees jointly and not to either severally. The right, the property secured by the patent, may be granted to others by license or assignment, or by the sale of machines by the patentees jointly; and a license or assignment or sale of a machine by them is a transfer, pro tanto, of the property secured by the patent. One joint-owner can legally grant, assign, license, or sell only in respect to his own share or right. He cannot sell and give a good title to his co-owner's right, for the same reason that one joint-owner of a chattel cannot transfer the share of his co-proprietor. And if he appropriates any portion of the exclusive right or common property to his separate use or benefit, by either the use or the sale of the patented machine, he does what is, in principle, the same as the conversion, by destruction or sale, of the joint property by a tenant in common, which authorizes his co-tenant to maintain trover." That joint-owners of a patented invention are tenants in common, see Dunham v. Indianapolis & St. Louis R. R. Co. (1876), 7 Bissell, 223; 2 Bann. & A. 327; De Witt r. Elmira Nobles Mfg. Co. (1875), 5 Hun, 301. That there is no true analogy between patent rights and any other property, and co-owners are not like tenants in suspended without the consent of all, while each joint-owner individually possesses the subordinate rights embraced in the invention. This rule at once preserves the harmony of the law in reference to the nature and ownership of a monopoly, protects the exclusive privilege conferred by the patent upon all the patentees, and permits to each owner as wide a latitude in the enjoyment of the invention as is consistent with the rights of his co-owners. Under it each may himself practise the invention without accountability to them, and may convey his entire interest in the patented invention to another individual; since the exercise of such powers does not interfere with the enjoyment of their equal privileges by the other owners, nor with that security from competition which the patent is intended to afford. But it forbids an assignment of the interest of one joint-owner to several assignees, or the grant of licenses to make, or use, or sell the patented invention, because by multiplying the number of those persons who can practise the invention without disturbance from the exercise of the monopoly, the value of the patented invention to the other owners may be sensibly diminished and perhaps destroyed. In the few cases hitherto decided the courts, by partially adopting the first rule, have indeed recognized this power as inherent in each owner of the patented invention. They have held that his right to alienate his own interest to others is unlimited in respect to the number of his transferees; that by such transfer the entire monopoly is abrogated or suspended so that his assignees and licensees cannot be interfered with by the other owners of the prohibitory powers; and that, at most, he is accountable to them for their proportion of the purchase-money or license-fees which he may have received.1 It is obvious that under this rule the other owncommon of lands, or ways, or tolls, or personal property, see Vose v. Singer (1862), 4 Allen, 226. That a joint interest in a patent does not make the owners partners, see Parkhurst v. Kinsman (1849), 1 Blatch. 488. That there may be any number of joint-owners, and each will be independent of the others, and not a co-partner, see Vose v. Singer (1862), 4 Allen, 226. That the issue of a patent to one of two joint-owners of an invention enures to the benefit of both, see Vetter v. Lentzinger (1871), 31 Iowa, 182. § 796. In Dunhamn v. Indianapolis & St. Louis R. R. Co. (1876), 7 Bissell, 223, Drummond, J.: (223) "The material point is, who is to answer, if any one, to the other patentees for the use of the part which does not belong to ers do not obtain adequate protection. Those who desire to use their property by practising the invention are at the them, when a joint-owner uses the improvement, or makes a contract with another person for its use. What is the position of patentees with reference to their right to use the thing patented? The patentees are tenants in common of the right. One of them has no superiority of right over the others. One of them can manufacture and use the article patented without the consent of the others; that is, each has the same right, although one may own a greater share of the thing patented than the others. The grant was, in this case, to the three to use and vend the improved car-brake shoes, and while it is clear that one of the patentees cannot grant what does not belong to him, and if he gives a license or makes a contract for the use of the thing patented, he can only grant that which he has himself, and not the rights of the other patentees, still he can clothe his grantee or his licensee with the same right that he has himself, namely, the right to sell or use the thing patented. And it seems to me the better rule is to hold, if there is a liability at all, that where a party owning less than the whole of a thing patented, makes a grant or a license, he shall be answerable to the others, rather than that the other patentees shall look to the grantee or licensee. There were three cases particularly referred to on the argument. One was the case of Pitts v. Hall, 3 Blatchford, 201, decided by Judge Hall, of the Northern District of New York. He seems to hold that if one jointowner of a patent uses or sells his right without the authority of his co-owner, he is liable to an action by such coowner for an infringement of the patent; and the conclusion, perhaps, to be drawn from his decision is that if the party to whom he sells uses the thing patented, an action could be maintained and an injunction issued against the grantee or licensee of the co-owner. Judge Curtis, in the case of Clum v. Brewer, 2 Curtis, Circuit Court, 506, seems to hold, and I think that is the true rule upon the subject, that where one of the joint-patentees uses or sells the thing patented, or any portion of it, the others cannot sue him as for an infringement of the patent. The most that can be claimed is that if one uses or sells it to the detriment of the others, he may be held responsible. For example, if he obtains more than his share of the profits from the use of the article, or in issuing licenses he obtains more than his share of the license money, he possibly may be held responsible by the other joint-patentees; but Judge Curtis, in that case, held that an injunction should not issue against the use, by one of the joint-patentees, of the thing patented, and the principle decided by him is that one tenant in common of letters-patent has the same right as the others to make, use, and sell the thing patented, and a licensee under one tenant in common cannot be enjoined on a bill by another tenant in common. A case has been decided in England bearing on this question, Mathers v. Green, 1 Law Reports, Chancery Appeals, 29, and the opinion is given by Lord Chancellor Cranworth. That was a case of letters-patent granted to three individuals. The Chancellor says: "The right conferred is a right to exclude all the world other than the grantees from using the invention. But there is no exclusion in the letters-patent of any one of the patentees. The inability of any one of the patentees to use the invention, if any such inability exists, must be sought elsewhere than in the letters-patent. But there is |