Chemical Foundation v. General Aniline Works

• Decision Date: 23 September 1938
• Docket Number: No. 6600.,6600.
• Citation: 99 F.2d 276
• Parties: CHEMICAL FOUNDATION, Inc., v. GENERAL ANILINE WORKS, Inc.
• Court: U.S. Court of Appeals — Third Circuit

99 F.2d 276 (1938)

CHEMICAL FOUNDATION, Inc., v. GENERAL ANILINE WORKS, Inc.^*

No. 6600.

Circuit Court of Appeals, Third Circuit.

September 23, 1938.

William G. Mahaffy, of Wilmington, Del. (Drury W. Cooper, Paul Kolisch, and Seward Davis, all of New York City, of counsel), for appellant.

Thomas G. Haight, of Jersey City, N. J., and George F. Scull, of New York City, for appellee.

Before BUFFINGTON and BIGGS, Circuit Judges, and DICKINSON, District Judge.

BUFFINGTON, Circuit Judge.

In the court below The Chemical Foundation, Incorporated, filed a bill against General Aniline Works, Inc., to compel it to assign to the plaintiff patents Nos. 1,637,023, No. 1,699,432, and a divisional application No. 192,780. The patents were granted to Herz and by him assigned to the defendant.

The exhaustive opinion of the trial Judge, reported in D.C., 20 F.Supp. 509, states in detail all the facts, statutes and contentions made and by reference thereto we avoid needless repetition. After careful consideration, we find ourselves in full accord with the decree of the court dismissing the bill and as a further opinion by this court would be but an effort to clothe in different language what has been stated by the trial Judge, we refrain from needless repetition and affirm the court's decree and limit ourselves to a brief statement of the reasons constraining us to do so.

As stated by the Judge, "the crux of the case is what, if anything, was seized by the Alien Property Custodian on March 22, 1919". As we view it, it is the grant of a patent for an invention that creates property and unless some trust or contract relation exists, the conception of an invention, so long as it is not patented is not property which can be levied on or seized and taken in execution. It follows, therefore, that so long as the inventor himself, or by his constituted agent, does not seek a patent and so long as he is under no trust or contract obligation, the mere conception of an invention cannot be seized and sold, and this because as stated in 48 Corpus Juris 15, "an inventor has a natural right separate from, and independent of, any patent grant to make, use, and vend his invention, and to deprive the public of the benefits of his invention by keeping it a secret."

Now that was the situation here. An attempt was made by one Brown to take out a patent in the name of Herz, but as he had no authorization from Herz, such attempt was futile. The Brown application was not only unauthorized by Herz, but it did not comply with the statutory requirement of his signature. In the former regard the court said: "The Brown application was filed without the authority of Herz. The only power of attorney given to Brown by Herz was to file the original application Serial No. 13,944, which became abandoned on September 9, 1917. Therefore the application by Brown was a nullity in law."

It follows, therefore, that so far as the Brown application is concerned no property in Herz's invention was acquired by the Chemical Foundation or its assignor, the Alien Property Custodian. In that regard the defendant-appellee contends — and rightly so — that: "Herz has never been under any duty, either to the Government or to appellant, to do any act which would make good appellant's claimed title. He does not occupy the position of an assignor nor of a trustee for the benefit of appellant. So much of his property as was taken, was taken by forcible seizure. As to that, he was helpless. But such seizure put him under no obligation to give the Government something which it had not taken." (Italics ours.)

So holding, and without discussing the further defences set up by the defendant-appellee, we now affirm the decree dismissing the bill.

BIGGS, Circuit Judge (concurring).

The first application, No. 13,944, disclosing the invention at issue was filed by Edmond Congar Brown under a power of attorney from the inventor, Herz, in the United States Patent Office upon March 12, 1915. This application became abandoned on September 9, 1917. A French patent, No. 478,107, disclosing the invention was issued to Herz upon an application filed upon July 14, 1914. The French patent was published upon November 24, 1915, and was in the library of the United States Patent Office upon February 28, 1916.

Edmond Congar Brown filed a second application on behalf of Herz and purportedly acting under his authority in the United States Patent Office upon August 2, 1918. This application was numbered 248,015 and disclosed the same invention as application No. 13,944. Brown filed application No. 248,015 purportedly as a divisional application of No. 13,944. I presume he did this for two reasons: First, if the second application was a divisional application of the first he preserved the original filing date, viz., March 12, 1915. Second, the original power of attorney filed with No. 13,944 authorized him to file a divisional application under that parent application, and if application No. 248,015 was not a divisional application Brown was unauthorized by the power of attorney to file it. Application No. 248,015 was clearly not a divisional application since its purported parent, application No. 13,944, was abandoned before it was filed and Brown therefore was without authority under his power of attorney to file it.

The only circumstance which served to keep the invention disclosed by the French patent out of the public domain in the United States was the corresponding application, No. 13,944, filed by Herz' agent in the United States Patent Office, pursuant to the provisions of R.S. § 4887, 35 U.S. C.A. § 32, which prescribes the period of a year in which such corresponding application must be filed in the United States Patent Office if the property right in the invention in the United States is to be preserved. When application No. 13,944 became abandoned, the invention disclosed by the French patent passed into the public domain. Had Edmond Congar Brown been able to preserve application No. 248,015 as a divisional application to No. 13,944 he would have been able to preserve Herz' original filing date, viz., March 12, 1915, and the invention disclosed by the French patent would not have passed into the public domain.

Since the invention was in the public domain it was not subject to seizure by the United States through its Alien Property Custodian pursuant to the Trading with the Enemy Act, c. 106, 40 Stat. 411, as amended, 50 U.S.C.A. appendix. It follows therefore when the Alien Property Custodian seized application No. 248,015, he in fact seized nothing more than a piece of paper, the property right to the invention being in the public domain.

Actually Herz' right to the patents here in suit, viz., United States Patents Nos. 1,637,023 and 1,699,432, are derived from an entirely different source from any yet referred to in this opinion. The Nolan Act, c. 126, Sec. 2, 41 Stat. 1314, 35 U.S.C.A. § 81, operated retroactively to create in Herz the property right to his invention in the United States based upon his German application of April and July, 1914. The Nolan Act operated to take the property right in the invention out of the public domain and put it back into Herz. Actually the property right in the invention disclosed by the two United States patents just referred to and in applications ...