Becker v. General Chain Co., 1497.

• Decision Date: 12 May 1921
• Docket Number: 1497.
• Parties: BECKER v. GENERAL CHAIN CO.
• Court: U.S. Court of Appeals — First Circuit

273 F. 419

BECKER v. GENERAL CHAIN CO.

No. 1497.

United States Court of Appeals, First Circuit.

May 12, 1921

Edwin J. Prindle, of New York City (Clarence O. McKay, of New York City, Russell M. Everett, of Newark, N.J., and Francis J. V Dakin, of Boston, Mass., on the brief), for appellant.

A. D Salinger, of Boston, Mass., for appellee.

Before BINGHAM and JOHNSON, Circuit Judges, and ALDRICH, District judge.

BINGHAM Circuit Judge.

This is an appeal from a decree of the District Court for Massachusetts dismissing a bill in equity brought under section 4915, R.S. (Comp. St. Sec. 9460), by Becker, assignee through mesne assignments, dated January 26, 1916, and April 7, 1917, of the entire interest in the invention and application of Robert Hauschild, serial No. 654,658, for letters patent filed October 14, 1911. The defendant is the General Chain Company, assignee of the invention and application, serial No. 679,428, of Eugene Speidel. This assignment was made March 6, 1919, after a decision by the Court of Appeals of the District of Columbia (March 3, 1919) in favor of the Speidel application in an interference proceeding between the two applications. 48 App.D.C. 419. The Hauschild assignment was made pending the prosecution of his application in the Patent Office. This bill was filed March 2, 1920.

In the court below the defendant moved to dismiss upon the ground that the bill was brought by the assignee, instead of the inventor, Hauschild. The plaintiff filed a motion to amend by making Hauschild a party plaintiff. The latter motion was not made until after the expiration of one year from the last action of the Patent Office on the Hauschild application. The court denied the plaintiff's motion to amend and granted the defendant's motion to dismiss the bill.

It does not appear from the record whether the assignment executed by Hauschild contained a request to the Commissioner of Patents to issue the patent to the assignee. But it does appear that the assignments were duly records of the Patent Office and that the plaintiff, after obtaining his assignment prosecuted the application by taking an appeal from the decision of the Examiners in Chief to the Commissioner of Patents, and from his decision to the Court of Appeals of the District of Columbia.

It is contended on behalf of the defendant that the bill was properly dismissed for the reason that an assignee of an application for a patent, which has been denied by the Patent Office, is not a proper party to a bill under section 4915, as he is not an applicant within the meaning of that terms as employed in the act; that, while proceedings under section 4915 are not appeals, but independent suits in equity (Greenwood v. Dover, 194 F. 91, 114 C.C.A. 169), they are, nevertheless, a part of the application for a patent (Gandy v. Marble, 122 U.S. 432, 7 Sup.Ct. 1290, 30 L.Ed. 1223), and in essence a continuation of the proceedings on the application in the Patent Office; that the provisions of law contained in section 4895, R.S. (Comp. St. Sec. 9439), and other sections preceding and following it relating to applications for patents, require that the application for the issue of a patent shall be made by the inventor or discoverer, if he is alive; that an assignee cannot make such an application; and that, if he does not come within the meaning of the provisions of law regulating an application in the Patent Office, he is not an applicant within the meaning of that term as employed in section 4915. In other words, its position is that the inventor, if living, is an indispensable party plaintiff in a bill in equity under section 4915.

Section 4915, Rev. St. (Comp. St. Sec. 9460) reads as follows:

'Sec. 4915. Whenever a patent on application is refused, either by the Commissioner of Patents or by the Supreme Court of the District of Columbia upon appeal from the Commissioner, the applicant may have remedy by bill in equity; and the court having cognizance thereof, on notice to adverse parties and other due proceedings had, may adjudge that such applicant is entitled, according to law, to receive a patent for his invention, as specified in his claim, or for any part thereof, as the facts in the case may appear. * * * '

Section 4895, Rev. St. (Comp. St. Sec. 9439) is as follows:

'Sec. 4895. Patents may be granted and issued or reissued to the assignee of the inventor or discoverer; but the assignment must first be entered of record in the Patent Office. And 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; and in all cases of an application for a reissue of any patent, the application must be made and corrected specification signed by the inventor or discoverer, if he is living. * * * '

The subject-matter contained in section 4915 first appeared in section 16 of the Act of July 4, 1836 (5 Stat.at Large, 123). Section 16 was amended by section 10 of the Act of March 3, 1839 (5 Stat.at Large, 354), but not in a manner affecting the question here involved. It was re-enacted in section 52 of the Act of July 8, 1870 (16 Stat.at Large, 205), in the language now found in section 4915.

The subject-matter of section 4895 was first dealt with by Congress in section 6 of the Act of March 3, 1837 (5 Stat.at Large, 193). It then read:

'Sec. 6. And be it further enacted, that any patent hereafter to be issued, may be made and issued to the assignee or assignees of the inventor or discoverer, the assignment thereof being first entered of record, and the application therefor being duly made, and the specification duly sworn to by the inventor. * * * ' In section 33 of the Act of July 8, 1870 (16 Stat.at Large, 202), section 6 of the Act of 1837 was amended to read as follows:

'Sec. 33. And be it further enacted, that patents may be granted and issued or reissued to the assignee of the inventor or discoverer, the assignment thereof being first entered of record in the Patent Office; but in such case the application for the patent shall be made and the specification sworn to by the inventor or discoverer; and also, if he be living, in case of an application for reissue.'

Under either section 6 or section 33 an inventor could assign his right to obtain a patent, prior to filing an application and specification verified by his oath. Section 33 was amended in the Revised Statutes of 1878, and as now found in section 4895 authorizes an assignee to make application for the issue of a patent, and provides how he shall do it. In such case it requires that the application or petition shall be made-- that is, signed-- and the specification sworn to by the inventor or discoverer, if he is living. And the further provisions of the section recognize that if he is not living or is insane, the assignee must have the application or petition signed and the specification sworn to by the executor or guardian of the inventor (section 4896 (Comp. St. Sec. 9440)). This not only plainly appears from section 4895, but is evidently the meaning placed upon it by the Patent Office, for, in this very proceeding, the plaintiff, after obtaining his assignment, was permitted to prosecute the application in the Patent Office, and did so during the greater portion of the proceedings in that office. See Rev. St. Secs. 4909, 4910, 4911, Act Feb. 9, 1893, 27 Stat.at Large, c. 74, Sec. 9 (Comp. St. Secs. 9454-9456).

Then again rule 17 of the Patent Office provides that 'an applicant or an assignee of the entire interest may prosecute his own case,' and rule 5 that 'the assignee of the entire interest of an invention is entitled to hold correspondence with the office to the exclusion of the inventor. ' Under the latter rule it is held that upon the request of such an assignee the inventor shall be excluded from participation in the proceedings. See Stoddard's Annotated Patent Office Rules, pp. 10, 11.

Instead therefore, of an assignee being unable to prosecute an application in the Patent Office under section 4895, as the defendant contends, the contrary is true, for the law authorizes and the practice and rules of the Patent Office permit it; and, as a proceeding under section 4915 is in reality a continuation of the prosecution of the original application, there would seem to be no reason why the assignee of the entire right to a patent, who is permitted to prosecute an application in the Patent Office under section 4895, should not be allowed to do so in this court under ...