Wende v. Horine

• Decision Date: 20 October 1911
• Docket Number: 29,099.
• Citation: 191 F. 620
• Parties: WENDE v. HORINE.
• Court: U.S. District Court — Northern District of Illinois

191 F. 620

WENDE v. HORINE.

No. 29,099.

United States Circuit Court, N.D. Illinois, Eastern Division.

October 20, 1911

Charles C. Bulkley and George E. Waldo, for complainant.

Bond Adams, Pickard & Jackson, for defendant.

KOHLSAAT Circuit Judge.

Objection for want of parties under equity rule 52 (29 S.Ct. XXXI).

Complainant files his bill under section 4915, R.S. (U.S. Comp. St. 1901 p. 3392), praying that he be adjudged entitled to receive a patent upon his application serial No. 699,941, for improvements in manifolding apparatus, filed in the Patent Office December 21, 1898, notwithstanding the action of the Patent Office denying said application. Horine, his successful rival in Patent Office interference proceedings is made defendant.

The answer alleges that, pending the application, complainant duly assigned the 'entire right, title, and interest in and to his said application for letters patent * * * and in and to the invention covered by said application ' to third parties not joined in the bill, and that at the time of filing the bill herein and now, complainant had and has no interest in or title to said invention or application.

Complainant has treated this allegation of the answer as an objection for want of parties, and under the provisions of equity rule 52 has brought the matter before the court as such. It develops however, upon the argument, that the issues raised present not merely the question of whether or not the assignee should be joined, but extend to the sufficiency as a matter of law of this averment of the answer; it being contended by defendant that complainant, having assigned his entire interest, is incapable of instituting suit.

If this view should prevail, the suit must be dismissed, and complainant would be compelled to bring a new proceeding, making the assignee complainant. It is now more than a year since the last action of the Patent Office, and a new suit would doubtless be met by a defense of constructive abandonment, which, if it should prevail, would be a bar to further proceedings. It is therefore important to determine whether or not Wende bears such a relation to the proceedings for the procurement of a patent as to make him a competent party complainant.

So far as the record discloses, the assignment did not contain a request to the Commissioner of Patents that the patent issue to the assignee. This omission is urged as showing an equity remaining in the assignor.

It is very clear that an assignment of an invention pending application, containing a request that the patent issue to the assignee, and being duly recorded, will vest the complete legal title to the patent, when granted, in the assignee. Gayler v. Wilder, 10 How. 477, 13 L.Ed. 504. In such case the assignor retains no title, legal or equitable.

A careful consideration of the reasons upon which the decision in Gayler v. Wilder, supra, is based, seems to warrant the corollary that in the absence of such a request the assignment would be ineffective to pass legal title. And in Harrison v. Morton, 83 Md. 476, 35 A. 102, the Supreme Court of Maryland in a well-considered case so held. Opposed to this view, however, is the consideration that the inventor has vested in him, pending application, an absolute property right. The statute expressly provides that this right may be assigned, and its assignability is not made to depend upon the presence or absence in the instrument of assignment of a request to the Commissioner that the patent issue to the assignee. Assuming that, as in the case at bar, the language of the instrument shows a clear intention of the assignor to convey every right and title to the invention vested in him, there seems to be no legal principle or rule which would prevent such intention from being effective. It would seem clear that the conveyance of all title and right to the invention, i.e., the inchoate right to obtain a patent, would carry the patent when issued. Again, such an instrument of assignment might well be held to be a present transfer of the patent to be granted; it being well settled that property, corporeal or incorporeal, having a mere potential existence, may form the subject of a valid contract of sale. 24 Am. & Eng. Ency. of Law (2d Ed.) 1042, and authorities cited.

While the decision in Harrison v. Morton, supra, is consistent with the reasoning of the court in Gayler v. Wilder, supra, it cannot be so easily reconciled with the opinion of the court in Railroad Company v. Trimble, 10 Wall. 367, 379 19 L.Ed. 948. In the latter case the assignment contained no request that the patent issue to the assignee, yet the court held that the complete legal title passed, apparently considering the question of the presence or absence of a request in the assignment as immaterial, and basing its decision upon the intent of the parties as evidenced by the...