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expired; and the agreement which the bill sought to enforce was an agreement by which, independently of the patent, the proprietors had entered into covenants not to sell that which was the subject of the patent, except to each other. But, in order to support the patent, the specification should be so clear as to enable all the world to use the invention so soon as the term for which it has been granted is at an end.” Lord Eldon concluded by saying that he thought he ought not to continue the injunction; and that, if he did not mention the case again, his opinion must be considered to be that the injunction must be dissolved.5
In the same case, a similar agreement had been made between James and the plaintiff, respecting an invention by James of certain pills called Analeptic Pills, but for which no patent had been obtained. Lord Eldon remarked, that, “with regard to the Analeptic Pills, if the art and method of preparing them were a secret, what signified an injunction, the court possessing no means of determining, on any occasion, whether it had or had not been violated? This court could do nothing but put the parties in a way to tộy their legal rights by an action. That was the utmost extent to which it would go, and he would not even order the injunction to be continued
• Newbery v. James, 2 Meriv. 446.
in the mean time, till an action should be tried. The only way by which a specific performance could be effected would be by a perpetual injunction; but this would be of no avail, unless a disclosure were made to enable the court to ascertain whether it was or was not infringed; for if a party comes here to complain of a breach of injunction, it is incumbent on him first to show that the injunction has been violated."6
A motion was made for an injunction to restrain the defendant from making use of or communicating certain recipes for veterinary medicines, and from printing and publishing certain papers of directions for the mode of administering them. The plaintiff, who was the proprietor of the medicines, had employed the defendant as an assistant, under an agreement, by which he was to be instructed in the general knowledge of the business, but was not to be taught the mode of composing the medicines; afterwards the defendant left the plaintiff, and the latter had lately discovered that he had, while in his service, surreptitiously got access to his book of recipes, and copied them, and was selling the medicines, with printed papers for administering them, which were almost literal copies of those composed by the plaintiff. Lord Eldon granted the injunction, upon the
Newbery v. James, 2 Meriv. 446. See also Williams v. Williams, 3 Meriv. 157.
ground of there having been a breach of trust and confidence; but confined it, so as not to prevent the defendant from administering the medicine to any animals then under course, it being stated in the papers of directions, that a sudden discontinuance would be prejudicial.'
But though an inventor cannot assert a right of property in an invention independently of the patent law, still he has an interest in his invention for which he proposes to take out a patent, before he has actually taken it out, and such an interest as he may, to some purposes, vindicate in a suit. It has been held, in England, that a man has such a property in his invention before a patent is procured, that if he agree to inform another person of the secret, who binds himself in a penalty not to avail himself or take any undue advantage of the communication, he may maintain an action for the breach of that contract. In the United States, an agreement for the assignment of a patent right before the patent is taken out, is a matter of familiar practice, and its validity is recognised by the adjudged cases.
So an agreement on the interest that the parties to the agreement shall respectively have in the patent when taken out, has been held valid. Two
? Yovatt v. Winyard, 1 Jac. & W. 394.
persons, in order to secure to themselves the benefit of an invention, mutually covenanted that one should have the exclusive use and sale of the machines in Massachusetts and Rhode Island, and the other in the rest of the United States, and that neither should use them in the district of the other, under the forfeiture of a certain sum for each machine so used. They subsequently obtained a joint patent for the invention. It was held, in a suit by the one against the other for a breach of the covenant, that if the patent was void, still the contract was valid. Wilde J. said, “the patent formed no part of the consideration of the contract, for it existed only in contemplation when the contract was made. The most that can be said is, that the contracting parties had, at the time, the expectation of securing the profitable use of their invention by obtaining a valid patent, and nothing is averred in the pleadings from which we can inser that this expectation has been defeated or is likely to be."'10
10 Stearns v. Barrett, 1 Pick. 443.
Assignment. Agreement to Assign.
The eleventh section of the act of 1836 provides that "
every patent shall be assignable in 'law, either as to the whole interest or any
thereof, by any instrument in writing; which assignment, and also every grant and conveyance of the exclusive right under any patent, to make and use, and to grant to others to make and use, the thing patented within and throughout any specified part or portion of the United States, shall be recorded in the patent office within three months from the execution thereof."
This varies from the corresponding provision in the act of 1793, s. 4, which provided only for the recording of the assignment of a share, not for that of a license.
The inventor may assign his interest before taking out the patent,' for then he has a right which becomes property on the patent being taken out. This right, or inchoate property, has been so far respected in England that the inventor may enforce an agreement made respecting it.?
1 Herbert v. Adams, 4 Mason, 15. · Smith v. Dickinson, supra.