United States, only by the patentee or his alienee or personal representatives, and therefore cannot be decreed by any court to vest in any person without the required conveyance from its actual owner. For these reasons patented inventions were for a long time regarded as practically exempt from the ordinary liability for the debts of their owners, though methods are now adopted by which they are with great facility made subject to the claims of creditors." § 804. Patented Inventions Subjected to the Claims of Creditors only through some Form of Assignment by their True Owner. These methods are in form or in effect assignments by the owner of the patented invention. Only by a grant can incorporeal property be transferred from one person to another. Only by a grant from some authority, having a jurisdiction over the property which is as universal as the property itself, could any beneficial transfer be accomplished. Only by a grant from the real owner of the patented invention can the requirements of the Patent Law concerning transfers be fulfilled. Hence any method which effects such transfer must be a conveyance by the lawful owner or its equivalent. Such is not the case with the judgment or order of any court or the act of any officer. In the absence of a statute of the United States to that effect, neither an adjudication in bankruptcy nor the voluntary assignment of the owner could put the property in the patented invention at the disposal of the court or assignee, unless the one was followed, and the other accompanied, by an actual transfer of the patented invention in the mode provided by the Patent Law. Thus all the could be divided, and so much of it as - might be exercised within the county of Bristol sold, would be a position subject to much difficulty." copyright cannot be taken on execution at law; and a general assignment of his property under a bankrupt or insolvent act will either by its own force pass See also Carver v. Peck (1881), 131 this right to the assignee in bankMass. 291. 6 See §§ 765, 766, and notes, ante. 7 In Carver v. Peck (1881), 131 Mass. 291, Gray, J.: (292) “The incorporeal and intangible right of an inventor or an author in a patent or a ruptcy or insolvency, or will at least entitle the latter by proper proceedings to compel the debtor to convey it to him for the benefit of creditors." See also § 805 and notes, post. § 804. 1 That an assignment by an in methods that might be devised are reducible in substance to one, a voluntary or compulsory transfer by the owner of the patented invention. - § 805. Owner of Patented Invention may be Compelled by a Court of Equity to Assign it for the Benefit of Creditors. That courts of equity, acting in aid of courts of law, have the authority to compel the owner of a patented invention to assign it to a trustee or receiver, to be sold for the satisfaction of his judgment-debts, seems now to be decided. This method solvent to his trustee of all his property, not exempted by law, does not carry a patent, see Campbell v. James (1880), 18 Blatch. 92; 5 Bann. & A. 354; 18 O. G. 1111; 2 Fed. Rep. 338. That the title to a patent does not vest in a receiver, see Dick v. Struthers (1885), 25 Fed. Rep. 103; 34 O. G. 131. That neither the assignee in insolvency nor a receiver can assign or pass title to a patent except by a written instrument, signed by the owner of the patent and duly recorded, see Gordon v. Anthony (1879), 16 O. G. 1135; 16 Blatch. 234; 4 Bann. & A. 248. That an assignment made by a judge of Probate under a State insolvent law, does not transfer the title to a patent, but an instrument of assignment must be executed by the owner, see Ashcroft v. Walworth (1872), 2 O. G. 546; Holmes, 152; 5 Fisher, 528. That a receiver may convey the equitable title, though unable, without the concurrence of the real owner, to transfer the legal title, see Adams v. Howard (1884), 23 Blatch. 27; 22 Fed. Rep. 656. § 805. 1 In Pacific Bank v. Robinson (1881), 20 O. G. 1314, McKee, J.: (1314) "The question is, has a court of equity power to compel its assignment and sale for the benefit of judgment creditors? In 1852 Mr. Justice Nelson, in Stephens v. Cady (14 How. 528), held that a copyright to print and publish maps of the State of New Hampshire could be reached by a creditor's bill and applied to the payment of debts of the owner of the copyright, under a decree compelling a transfer in conformity with the provisions of the act of Congress. That, however, was mere obiter, because the decision of the question was not necessarily involved in the case. And afterward, in 1854, in the case of Stephens v. Gladding (17 How. 447), which was a branch of the case of Stephens v. Cady, Mr. Justice Curtis declined to pass upon the ques tion, because neither the copyright nor any interest in it had been attempted to be sold. But in 1875 the supreme court of New York, in the case of Barnes v. Morgan (3 Hun, 703), took up the dictum of Mr. Justice Nelson in Stephens v. Cady and approved of it as a sustainable legal proposition. An order had been made at special term, directing the defendant in the case to deliver to a receiver, appointed under supplementary proceedings, certain patents and models appertaining thereto. From the order defendant appealed to the supreme court. Assignability of the patents by the voluntary act of the owner under the act of Congress which created them was conceded, and according to the authority of Hesse v. Stevenson (3 B. & P. 577), Nias v. Adamson (3 B. & Ald. 225), and Coles v. Barrow satisfies all the requirements of the law. Where the owner refuses to execute the necessary conveyances or is incapable of (4 Taunt. 754), it had been established that patent rights of a bankrupt pass by act and operation of law to his assignees in bankruptcy for the benefit of creditors. In Hesse v. Stevenson, Lord Alvanley, in delivering the opin ion of the court, used this language: It is said that although by the assignment every right and interest, and every right of action, as well as right of possession and possibility of interest, is taken out of the bankrupt and vested in the assignees, yet that the fruits of a man's own invention do not pass. It is true that the schemes which a man may have in his own head before he obtains his certificate, or the fruits which he makes of such schemes, do not pass, nor could the assignees require him to assign them over, provided he does not carry his schemes into effect until after he has obtained his certificate; but if he avails himself of his knowledge and skill, and thereby acquires a beneficial interest, which may be the subject of assignment, I cannot frame to myself an argument why that interest should not pass in the same manner as any other property acquired by his personal industry.' Patent rights being, therefore, assignable by the voluntary act of the owner and by act and operation of law, it followed that a court of equity could compel the defendant to assign them to a receiver, to be sold and applied to the satisfaction of judgments against him, and the supreme court affirmed the order of the special term. 'If,' said the court, the use of a monopoly which such a grant confers is not sufficiently productive in the hands of the inventor to pay his debts, the privilege bestowed, being a right of property as declared by Chief Justice Taney, should be transferred to the person designated by law and sold for the benefit of the creditor. It would be a marvellous, if not unjust, perpetuation of the ideal if an inventor, having obtained a patent, thus divulging his secret and at the same time acquiring a property in it for practicable purposes, should be permitted to hold it unused against his creditors until, either by compromise or the lapse of time, his obligations should be discharged, and this, too, although it might be one which, by assignment or upon manufacture of the thing invented, would readily yield enough to pay all existing liabilities.'' 57 Cal. 520 (523). In Ashcroft v. Walworth (1872), 2 O. G. 546, Shepley, J.: (547) "It might have been competent for the court under the insolvent law to have compelled the debtor to execute such an instrument in writing as, in accordance with the provisions of the Patent Act, would have been effectual to transfer the title in the patent to the assignee. If a right in a patent were such property as did not come within the exceptions of the insolvent law as property not liable to attachment, or if it is of such a nature that it is subject to the operation of State insolvent laws, this would seem to have been the only proper and effectual mode to have made it available for the benefit of the credi tors. Without such a conveyance as the statute of the United States contemplates, we do not think the assignee acquires any legal title to any interest the debtor may have in any letterspatent. To invest the assignee with the legal title the court must compel a transfer in conformity with the requirements of the Patent Act." Holmes, 152 (154); 5 Fisher, 528 (530). That the receiver of an insolvent is entitled to his patents, and the court doing so, it has been held that the court of equity, in order to effectuate its own decree, may appoint a trustee to make the assignment in the name and on behalf of the recalcitrant or incapacitated owner, and that this conveyance is equivalent to one executed by himself.2 Whether a State insolvent court could exercise the former power over the owner of a patented invention depends on the authority conferred upon it by the local law. The latter power, whose existence in any court is still open to question, must be derived expressly or impliedly from the laws of the United States. SECTION V. OF THE TRANSFER OF LETTERS-PATENT: LICENSES. § 806. License Defined: Distinguished from Assignment and Grant. Any conveyance of an interest in a patented invention, which cannot operate as an assignment or a grant, is a may order the debtor to assign them to him, see In re Keach (1884), 14 R. I. 571; Carver v. Peck (1881), 131 Mass. 291. That a patent may be reached by a creditor's bill, see Gillett v. Bate (1881), 86 N. Y. 87; 10 Abb. N. C. 88. That a patent may be subjected to the debts of the patentee by a creditor's bill, even against a fraudulent assignee, and where the citizenship of the parties is different the Federal courts have jurisdiction, see Gorrell v. Dickson (1886), 26 Fed. Rep. 454. That a patent is assigned by the operation of law upon the bankruptcy of the owner, and though it cannot be seized on execution, it can be reached by a creditor's bill and by proceedings supplementary to execution, see Barnes v. Morgan (1875), 3 Hun, 703; 6 Thomp. & C. 105. That the want of novelty or utility is no defence to a creditor's bill against the patentee or a fraudulent assignee, see Gillett v. Bate (1881), 86 N. Y. 87; 10 Abb. N. C. 88. That unpatented inventions cannot be reached by a creditor's bill, see Gillett v. Bate (1881), 86 N. Y. 87; 10 Abb. N. C. 88. That an incomplete and experimental invention cannot be reached by a credi tor's bill, see Ryan v. Lee (1882), 14 Mo. App. 599. 2 That a court of equity may direct the sale of an inventor's interest in his patent to satisfy a judgment against him, and will require the patentee to assign as provided in Sec. 4898, Rev. Stat., and, if he refuses, will appoint a trustee to make the assignment, see Murray v. Ager (1881), 20 O. G. 1311; 1 Mackey, 87. That a patent right cannot be reached by a creditor's bill under Gen. Stat. Mass. c. 113, § 2, cl. 11, see Carver v. Peck (1881), 131 Mass. 291. license. A license is distinguished from these other forms of transferring letters-patent by the single characteristic that an assignment and a grant transfer the monopoly as well as the invention, while a license transfers only the invention and does not affect the monopoly otherwise than by estopping the licensor from exercising its prohibitory powers in derogation of the privileges conferred by him upon the licensee.2 Whether a given conveyance carries both the monopoly and the invention is usually determined by the language in which it describes the transferred interest in the invention, such instrument rarely mentioning the monopoly or treating it as the subject-matter of the alienation. Hence if the interest in the invention which the conveyance purports to transfer is one to which the law annexes the monopoly, the instrument is a grant or an assignment; and, on the contrary, if this interest is such that its alienation leaves the monopoly still residing, in contemplation of law, in the alienor, the conveyance is a mere license. This contract of license is governed and defined by State law, as distinguished from statutory Patent Law, and is subject to the incidents which attach to all agreements.3 § 806. 1 That anything less than a grant or an assignment is a license, see Potter v. Holland (1858), 1 Fisher, 327; 4 Blatch. 206. 2 In Sanford v. Messer (1872), 2 O. G. 470, Shepley, J.: (471) "Any assignment which does not convey to the assignee the entire and unqualified monopoly which the patentee holds in the territory specified, or an undivided interest in the entire monopoly, is a mere license." 5 Fisher, 411 (412); Holmes, 149 (150). See also Theberath v. Celluloid Mfg. Co. (1880), 3 Fed. Rep. 143; 5 Bann. & A. 577. That while an assignment and grant convey the monopoly, a license merely waives the monopoly as to the licensee, see Howe v. Wooldredge (1866), 12 Allen, 18; Buss v. Putney (1859), 38 N. H. 44. That the sole matter conveyed in a license is the right not to be sued, see Hawks v. Swett (1875), 4 Hun, 146; 6 Thomp. & C. 529. That a license may be granted before the patent issues, see Kelly v. Porter (1883), 8 Sawyer, 482; 17 Fed. Rep. 519. 8 That licenses are governed by State laws, see State of Missouri ». Bell Telephone Co. (1885), 23 Fed. Rep. 539. That the Federal courts may determine, in an infringement case, whether there is an outstanding license or not, see Hammacher v. Wilson (1886), 26 Fed. Rep. 239; 36 O. G. 233. That a common carrier, though licensed by a patentee to carry on business with one customer only, may be compelled to carry it on with all, see State of Missouri v. Bell Telephone Co. (1885), 23 Fed. Rep. 539. That a license under an expired pat. し |