CHAPTER IV

THE PERSON ENTITLED TO A PATENT

ONLY AN INVENTOR IS ENTITLED TO APPLY for a patent for the invention. The patent itself may, if the inventor requests, be issued to another,200 but the same section of the statute which provides for this declares "in all cases of an application by an assignee for the issue of a patent, the application shall be made and the specification sworn to by the inventor or discoverer." Another section provides201 "The applicant shall make oath that he does verily believe himself to be the original and first inventor or discoverer of the art, machine, manufacture, composition or improvement for which he solicits a patent." The only exception to the requirement that the inventor himself must apply for the patent is that of § 4896 which provides that, "When any person, having made any new invention or discovery for which a patent might have been granted, dies before a patent is granted, the right of applying for and obtaining the patent shall devolve on his executor or administrator, in trust for the heirs at law of the deceased, in case he shall have died intestate; or if he shall have left a will disposing of the same, then in trust for his devisees, in as full manner and on the same terms and conditions as the same might have been claimed or enjoyed by him in his lifetime; and when any person having any new invention or discovery for which a patent might have been granted becomes insane before a patent is granted the right of applying for and obtaining the patent shall devolve on his legally appointed guardian, conservator, or representative in trust for his estate in as full manner and on the same terms and conditions as the same might have been claimed or enjoyed by him while sane; and when the application is made by such legal representatives

200 § 4895.

201 § 4892.

the oath or affirmation required to be made shall be so varied in form that it can be made by them. The executor or administrator duly authorized under the law of any foreign country to administer upon the estate of the deceased inventor shall, in case the said inventor was not domiciled in the United States at the time of his death, have the right to apply for and obtain the patent. The authority of such foreign executor or administrator shall be proved by certificate of a diplomatic or consular officer of the United States. The foregoing section, as to insane persons, is to cover all applications now on file in the Patent Office or which may be hereafter made."

With this exception, a patent which has been isssued upon the application of one who is not the inventor of the device thereby covered is void. It is no defense to this invalidity that the application was made with the express consent of the inventor. In Kennedy v. Hazelton,202 the defendant had contracted to assign to plaintiff all patents which he might thereafter obtain from the United States or Canada for inventions appertaining to steam boilers. After this contract he did invent an improvement on steam boilers. In order to evade the effect of his contract he entered into an arrangement with one Goulding whereby application for a patent for this invention was to be made in Goulding's name as inventor, though at the defendant's expense. Goulding, then, "at the request and by the procurement of the defendant" filed an application and the patent was granted. He then assigned it to defendant. Plaintiff brought suit in equity to compel defendant to assign this patent to him, according to the terms of the contract spoken of. The court refused this request on the ground that it could not compel the assignment of an absolutely void patent, and referred the plaintiff to an action at law for breach of court. In finding that the patent issued to Goulding was void the court said, "The patent law makes it essential to the validity of a patent, that it shall be granted on the application, supported by the oath, of the original and first inventor (or of his executor or administrator), whether the patent is issued to him or

202 128 U. S. 667.

to his assignee. A patent which is not supported by the oath of the inventor, but applied for by one who is not the inventor, is unauthorized by law, and void, and, whether taken out in the name of the applicant or of any assignee of his, confers no rights as against the public. Rev. Stat. §§ 4886, 4920.

"The patent issued by the Commissioner to the defendant as assignee of Goulding is only prima facie evidence that Goulding was the inventor of the improvement patented; and the presumption of its validity in this respect is rebutted and overthrown by the distinct allegation in the bill, admitted by the demurrer, that the defendant, and not Goulding, was the in

ventor.

"As the patent, upon the plaintiff's own showing, conferred no title or right upon the defendant, a court of equity will not order him to assign it to the plaintiff-not only because that would be to decree a conveyance of property in which the defendant, has, and can confer, no title but also because its only possible value or use to the plaintiff would be to enable him to impose upon the public by asserting rights under a void patent.

203

Even if the true inventor joins in making application with some one else who was not jointly an inventor with him, the patent is void. Conversely if an invention has been the joint production of two persons, an application by one of them alone as inventor is insufficient to support a patent. In the words of the court,204 "it is one thing to say that the machine was invented by Louis Royer, for example, and quite another thing to say that it was invented by Herman and Louis Royer. If this machine was invented by Herman and Louis, then it would be untrue to say that it was invented by Louis only or by Herman. If, on the other hand, it was invented solely by Louis or solely by Herman, then it would be equally untrue to say that it was invented by Herman and Louis; and you are to understand the law to be that if, in this respect, the patent contains a statement which is untrue, and not in accordance 203 Hammond v. Pratt, 16 O. G. 1235.

204 Royer v. Coupe, 29 Fed. 358, 363; Hartshorn v. Saginaw Barrel Co., 119 U. S. 664.

with the facts, then the penalty which the patentee pays is that his patent is absolutely void, and of no effect."205

Effect on real inventor's rights of another's application. Just how the rights of the real inventor would be affected by an application made in the name of some one else is not certain. If the application were made without the consent, express or tacit, of the true inventor, his right would not be in any way derogated thereby. On the other hand; if the true inventor, knowing that he was the inventor, should consciously permit application to be made by another as inventor, it is highly probable that this would be considered as conclusive evidence of his intent to abandon his invention to the public. To deliberately allow another to ask for a patent would be tantamount to a gift of the invention to the world, since the inventor would be presumed to know that the patent, if issued to the other, would be void and of no protection against use by the world. The only doubt might arise in those cases where one who was a joint inventor had applied for a patent in his own name, as sole inventor, honestly believing that to be the fact. Or conversely, it might arise in cases where an inventor honestly be

205 Welsbach Light Co. v. Cosmopolitan, etc. Light Co., 104 Fed. 83, 43 C. C. A. 418; DeLaval Separator Co. v. Vermont Farm Machine Co., 135 Fed. 772, 68 C. C. A. 474, "It is true that the testimony of an inventor in derogation of the validity of his own patent is usually open to suspicion; and in case like this, where he has made oath, for the purpose of obtaining a joint patent, that he and another inventor were the joint inventors of the subject-matter, the court should reject his subsequent testimony to the contrary, unless it carries a clear conviction that he did not intend to falsify originally, but made the oath under misapprehension or mistake. In this case the applicants were foreigners, supposedly unfamiliar with our law of patents; and they had agreed to be joint owners of the patent. Each had devised improvements which were within its general scope, and those which had been the work of Reuther were disclosed and illustrated in the specification and drawings, as well as were those which were the work of Melotte. Thus both had contributed to the invention in its entirety. Under these circumstances it is not strange that they did not discriminate between the things devised and the things which were not necessarily covered by the claims, and that they should have considered themselves joint inventors of the entirety, although some of the improvements were independently devised by one and some of them by the other." Heulings v. Reid, 58 Fed. 868.

lieved another to be entitled to joint credit, and made application, accordingly, jointly with the other. Whether such an application, would, of itself, preclude the true inventor from making another application when he should discover his mistake seems not to have been definitely passed on by the courts.

207

Right not reSTRICTED TO PARTICULAR PERSONS. The right to obtain a patent is not restricted to any class of persons as respects sex, age, race, citizenship or anything else. According to the statute, "Any person" who has made an invention may have a patent therefore. Within the universal scope of this privilege come aliens,206 married women, and children.2 While a corporation is a "legal person," in some senses, it could not, of course, apply for a patent; it has no mind of its own with which to invent anything. But it may be made the assignee of a patent, and a patent, applied for by the inventor, may issue in the name of a corporation.

PÁTENT MAY BE ISSUED IN NAME OF ANOTHER. Although only the inventor may apply for a patent, the patent itself may be issued to anyone else whom the inventor designates, by an assignment of his right which has been put on record in the Patent Office. 418 The exclusive right of enjoyment of the invention is then, of course, in the assignee, the patentee named. The patent when issued is not rendered invalid by the fact that the person in whose name it was asked to be issued, and to whom it was eventually granted, was no longer living at the date of issue. The statute reads in the disjunctive, in providing that the patent shall grant the monopoly to the "patentee, his heirs, or assigns." Hence if the patentee himself be dead, the grant takes effect in his heirs or assigns. This circumstance, the death of the patentee before actual issue of the patent, was one of the elements in the case of DeLaVergne

206 Shaw v. Cooper, 7 Peters 292.

207 Fetter v. Newhall, 17 Fed. 841. R. S. Title XI, $480, "All officers and employes of the Patent Office shall be incapable, during the period for which they hold their appointments, to acquire or take, directly or indirectly, except by inheritance or bequest, any right or interest in any patent issued by the Office."