Supreme Court of United States.
*214 Mr. Ephraim Banning and Mr. Edmund Wetmore for appellant. (Mr. Hubert A. Banning was with them on the brief.)
Mr. Solicitor General also filed a brief for appellant.
Mr. L.L. Bond, (with whom was Mr. C.E. Pickard on the brief,) for appellees.
*220 MR. CHIEF JUSTICE FULLER, after stating the case, delivered the opinion of the court:
The grant was to "James Boyle, his heirs or assigns," and in this followed the language of section 4884 of the Revised Statutes. But although Boyle made the application, he was dead at the time the patent issued, and it was therefore held by the Circuit Court that the patent was utterly void for want of a grantee.
The reasoning of the court was that all the rights and remedies of inventors to the exclusive property in their inventions come from the statute, and that under sections 4886, 4895 and 4896 only three classes of persons are recognized to whom a patent for an invention can issue, namely: The inventor himself; the assignee of the inventor, when the assignment is made before the issue of the patent; and the executor or administrator of the inventor if he dies before the patent is granted; that a patent for an invention is a grant for the exclusive privilege of making, using and vending, and authorizing others to make, use and vend, an invention; and that just as the term was originally used in England, to describe written instruments emanating from the King, sealed with the great seal, whereby lands, honors or franchises were conferred upon individuals, so it is used in this country as descriptive of an instrument whereby some exclusive right is granted by the sovereign power to the person named therein. Hence, continued the court, a patent for an invention is a grant and must have a grantor and a grantee. It must grant the franchise *221 or monopoly to a person named and who is capable of taking, and in this respect a patent does not differ from a patent or deed for lands. And as a deed to a person not then living and his heirs would be void, since, the word heirs being one of limitation and not of purchase, there is no person to take under it, so a patent for an invention to a dead man is wholly inoperative, and such must be the construction of a patent issued under section 4884 to the patentee, his heirs or assigns, when the patentee thus named is dead at the date of the grant.
The conclusion reached rests upon the assumption that the form of grant specified in section 4884 can only be pursued when the inventor is living, and that the intention of Congress was that the personal representatives of the inventor could not be treated as grantees under that section.
We are to remember that it is to be assumed that James Boyle had made a useful invention and taken all the necessary steps to secure the benefits to be derived therefrom, and that in view of the policy of the government to encourage genius and promote the progress of the useful arts, by securing to the inventor a fair and reasonable remuneration, a liberal construction in favor of those who claim under him must be adopted in the solution of the principal question before us.
It is also to be observed that, under the practice of the Patent Office, a considerable time necessarily elapses after a patent for an invention is allowed before it actually issues; that the applicants often reside at a great distance; that the cases when an inventor dies between the date of the application and the allowance, and the allowance and the issue, must be of frequent occurrence; and that this may happen when neither the office nor the inventor's solicitors are aware of the death. The reflection is a natural one that Congress, which, in framing the provisions of the patent laws, must be presumed to have had these possible occurrences in mind, did not contemplate that all patents issued under such circumstances should be invalidated by the death of the inventor.
What, then, was the intention of Congress in providing for a grant to the "patentee, his heirs or assigns?" Must it be *222 construed as merely a personal grant to the individual, or may his personal representatives be treated as grantees?
"The words `heirs,' and `heirs of his body,'" says Mr. Williams, "are quite inapplicable to personal estate; the heir, as heir, has nothing to do with the personal property of his ancestor. Such property has nothing hereditary in its nature, but simply belongs to its owner for the time being. Hence, a gift of personal property to A. simply, without more, is sufficient to vest in him the absolute interest. Whilst, under the very same words, he would acquire a life interest only in real estate, he will become absolutely entitled to personal property." Williams' Pers. Prop. 297.
The privileges granted by letters patent are plainly an instance of an incorporeal kind of personal property, which, as personalty, in the absence of context to the contrary, would go to the executor or administrator in trust for the next of kin. Williams' Executors, 817; Schouler's Executors, § 200; Williams' Pers. Prop. 271; Patterson v. Kentucky, 97 U.S. 501; Millar v. Taylor, 4 Burrow, 2303; Shaw Relief Valve Co. v. New Bedford, 19 Fed. Rep. 753.
The rule in Shelley's Case was that when an estate of freehold is limited to a person for life, and the same instrument contains a limitation either mediate or immediate to his heirs or the heirs of his body, the word heirs is a word of limitation, and the grantee takes the whole estate either in fee tail or fee simple. This is a rule of law, and not a rule of construction. Evans v. Evans, [1892], 2 Ch. 173, 184, 188. It applies to nothing but real estate, and if resorted to in connection with personal estate, it is only by way of analogy, and as a rule of construction in order to promote the intention.
We do not perceive any sound reason for holding that the word "heirs" in a patent for an invention should be regarded as a definition of the extent of the patentee's own interest in the patent. There is nothing technical in the word as used. It indicates persons who are to have the benefit in the event of death, but the absolute character of the interest of the patentee is not attributable to it. The words in the statute, "the patentee, his heirs or assigns," whether construed according *223 to the rules of grammar, or to the evident intent of Congress, mean "the patentee or his heirs or assigns." They comprehend the legal representatives, assignees in law and assignees in fact, and the phraseology raises no limitation in the sense of the strict common-law rule applied to realty.
It is said that if the word "heirs" were not used in the grant, the patent would end with the life of the patentee, and would have no descendible or inheritable quality, but we are not persuaded that this would be so, any more than that the omission of the word from any transfer of personal property would have that effect. The exercise of the right vested is not in its nature dependent upon the continued existence of the person whose merit earned the reward. The statute has long been that "the patentee" may obtain an extension in certain cases, without adding that his executors or administrators may do this, (Act 1836, 5 Stat. 117, 124, c. 357, § 18; Act 1870, 16 Stat. 198, 208, c. 230, § 63; Rev. Stat. § 4924;) yet it was decided that an executor or administrator can obtain an extension, Wilson v. Rousseau, 4 How. 646; and that the extended term is assignable, although not expressly so provided. Nicolson Pavement Co. v. Jenkins, 14 Wall. 452; Railroad Co. v. Trimble, 10 Wall. 367. And so, that a patent issued to an inventor after an assignment of his entire interest has been entered of record, immediately and by operation of law enures to the benefit of his assignee. Gayler v. Wilder, 10 How. 477.
If the patent had issued to Boyle when living, although an assignment of his entire interest had been recorded before, the patent would have enured to the benefit of the assignee, and it is difficult to see why, if Boyle died prior to the issue of the patent and after he had made the application and assigned his interest, the assignee should lose the benefit of the assignment because of the death.
Under section 4896, when the inventor dies before the patent is granted, the right of applying for and obtaining the patent devolves upon his executor or administrator in trust for his heirs at law or legatees, and doubt has been suggested as to the applicability of the section when the death transpires *224 after the application has been filed, but the rulings and practice of the Patent Office are to the effect that in the latter contingency no new application need be made or new fee be paid, but the executor or administrator may file his letters and the case be disposed of as if the applicant had not died. Rice v. Burt, Dec. Com. Pat. 1879, p. 291; Ex parte Smith, Dec. Com. Pat. 1888, p. 24.
Neither this section nor section 4895, providing that patents may be granted and issued, or reissued, to the assignee of the inventor or discoverer, prescribe any form of grant, which is alone to be found in section 4884. The statute does not require the patent to issue under section 4896 to the executor or administrator, and inasmuch as a patent is personal property, and as such goes to the executor or administrator, in trust for the next of kin, it would appear that this result would follow where the grant is to the patentee, his heirs or assigns.
Sections 4895 and 4896 cover cases where the application is made by the legal representatives or assignees, but where the application is made by the inventor, and he dies, a grant in the terms stated apparently accomplishes all the objects aimed at by both these sections.
Section 1 of the act of 1790 provided for a grant to "the petitioner or petitioners, his, her or their heirs, administrators or assigns," (1 Stat. 109, 110,) and the act of February 21, 1793, was in the same language. (1 Stat. 318, 321.) Section 5 of the act of 1836 read that the patent should "in its terms grant to the applicant or applicants, his or their heirs, administrators, executors, or assigns," etc. (5 Stat. 117, 119.) The statute of 1870 required the patent to contain "a grant to the patentee, his heirs or assigns," (16 Stat. 198, 201,) which is carried forward into section 4884 of the Revised Statutes.
As remarked by Judge Lowell in Shaw Relief Valve Co. v. New Bedford, ubi supra, the omission of the word "executors" prior to 1836 did not affect the title of the executors, nor did the omission of "administrators and executors" from the act of 1870 make any difference. "The law was not changed by it." Taking the sections together, the legislative intent seems to have been that a grant to the patentee, his *225 heirs or assigns, should vest title in the executor or administrator where the death occurred pending the application. If there be no executor or administrator, or letters of such are not recorded, still the general form of grant prescribed in section 4884 is applicable, and the patent may run to "the patentee, his heirs or assigns." The statute does not make it imperative that the patent shall issue in the name of the executor or administrator, the grant under section 4884 being sufficient to vest title in the patentee's legal representative, whether he be administrator, executor or assignee. If there are adverse claims of heirs and legatees, they may be left to be determined by the courts in whose jurisdiction they arise, rather than by the Patent Office. It is enough if it is found that the patent is proper to be granted, and it is so granted to the personal representatives of the deceased.
Sections 4895 and 4896 designate who should make the oath in case of death or assignment, but where the application has been made in the lifetime of the inventor, and remains in effect unchanged, there is no necessity for a new application or oath, except, of course, in the case of a reissue; and, as we have seen, a grant to the patentee, his heirs or assigns, sufficiently designates in whom the title to the patent shall vest in case of assignment or death.
In view of these considerations, as the language of the statute admits of a construction which, in sustaining the grant, effectuates the settled policy of the government in favor of inventors, our judgment is that that construction should be adopted, and that the statute should be read in the alternative, and the grant be treated as made to the patentee or his heirs or assigns. This conclusion is supported by the practice advisedly adopted in the Land Office, (another branch of the Executive department known as that of the Interior,) of using disjunctive terms for the purpose of preventing the defeat of grants by the death of the original grantee. In Hogan v. Page, 2 Wall. 605, 607, the court, speaking through Mr. Justice Nelson, said:
"A difficulty had occurred at the Land Office, at an early day, in respect to the form of patent certificates and of *226 patents, arising out of applications to have them issued in the name of the assignee, or present claimant, thereby imposing upon the office the burden of inquiring into the derivative title presented by the applicant. This difficulty, also, existed in respect to the boards of commissioners under the acts of Congress for the settlement of French and Spanish claims. The result seems to have been, after consulting the Attorney General, that the Commissioner of the Land Office recommended a formula that has since been very generally observed, namely, the issuing of the patent certificate, and even the patent, to the original grantee, or his legal representatives, and the same has been adopted by the several boards of commissioners. This formula, `or his legal representatives,' embraces representatives of the original grantee in the land, by contract, such as assignees or grantees, as well as by operation of law, and leaves the question open to inquiry in a court of justice as to the party to whom the certificate, patent or confirmation should enure."
And see Carpenter v. Rannels, 19 Wall. 138; Bowman v. Long, 89 Illinois, 19; Warnecke v. Lembca, 71 Illinois, 91; Read v. Kearsley, 14 Michigan, 215, 225; Grand Gulf Railroad v. Bryan, 8 Sm. & Marsh. 234.
The action spoken of by Mr. Justice Nelson was evidently taken in order to prevent hardships occurring under the old form of land grants, as indicated in Galloway v. Finley, 12 Pet. 264, and other cases; but no such action was considered necessary in reference to invention patents, although the same reason might have existed if the same form had originally been prescribed.
It appears from the certificate that James Boyle died on November 27, 1875, and that the application was thereafter prosecuted by the attorneys who had been previously appointed by him for that purpose, under the direction of Thomas L. Rankin, who had been appointed temporary administrator of Boyle's estate, March 9, 1876, and who obtained the patent and paid all the Patent Office and solicitors' fees therefor. It is also stated that prior to Boyle's application he had made a contract with Rankin, by which it was agreed *227 that the latter should advance the money to apply for and obtain the patent, and Boyle should assign to Rankin a one-half interest in the invention and patent; and that on December 2, 1875, Rankin made an agreement with Theresa Boyle, the widow of James Boyle, "then acting as executrix de son tort," by virtue of which Rankin was to acquire the right to the whole patent. Under the statutes of Texas a temporary administrator possesses the rights and powers of a general administrator so far as expressly confided to him by the order of appointment. 1 Sayles' Tex. Civ. Stat. 584.
The failure to record the title papers in the Patent Office, it appearing that the administrator and equitable owner in part obtained the patent, cannot, in the view we take of the case, make the patent void. The identity of the grantee might be determined by extrinsic testimony. If the grant be construed as made directly to the heirs, executors, administrators or assigns of Boyle, there can be no doubt as to its validity, even though when the patent issued it was not made to appear who they were.
The case of Eagleton Manufacturing Co. v. West, 111 U.S. 490, is cited to the proposition that, where the inventor dies, a patent is invalid when not issued upon the application and oath of his personal representative, but in that case the application was so amended after the inventor's death that it was equivalent to a new application, yet none such had been made, nor had the administratrix made the oath rendered necessary under such circumstances. In the case at bar the application remained in substance unchanged and no new application or oath was essential to jurisdiction.
We ought, perhaps, to add that in our opinion the patent would not be absolutely void, even if the objections taken by appellees were better founded than we hold they are. If the proceedings in the Patent Office may be considered as analogous to the condition of a pending suit at law upon the death of the plaintiff, the great weight of authority in this country is to the effect that where the court has acquired jurisdiction of the subject-matter and the person during the lifetime of a party, a judgment for or against a dead man is not wholly *228 void or open to collateral attack. It is very rarely that proceedings are wholly void and without force or effect as to all persons and for all purposes, and therefore incapable of being or being made otherwise; and we are entirely clear that this patent cannot be treated as falling within that class.
The record shows, as we have said, the existence of a contract between Rankin and Boyle, by which the latter was to advance the money to apply for and obtain the patent for a half interest, and that Rankin carried out the contract on his part. The agreement between Rankin and the widow, then acting as having a colorable right to administer, is also set out, under which Mrs. Boyle agreed that as soon as she should receive five thousand dollars in the way specified she would "release any further interest in said patents to be obtained and the machines then in use." Rankin was appointed temporary administrator, March 9, 1876, and on July 18, 1876, the temporary letters of administration issued to Rankin "were superseded by the appointment of the said Theresa Boyle as permanent administratrix. She thereafter filed an inventory of her husband's estate, in which she included the patent in question as held and owned jointly with Thomas L. Rankin. Neither Theresa Boyle, nor her children, nor Thomas L. Rankin ever repudiated the proceedings whereby said patent was obtained, but enjoyed the beneficial ownership thereof, and sold their interest therein for a valuable consideration."
When Mrs. Boyle took out the letters of administration, her prior acts, presumably upon this record beneficial to the estate and certainly not such as appellees have any right to complain of, should be viewed in the same light as though she had been made administratrix upon the death of her husband. And upon the facts stated, without discussing the particular nature of the instrument of December 2, 1875, we conclude that Rankin acquired under the two contracts the equitable title to the patent; and the circumstance that there was no record evidence of the transaction in the Patent Office made no difference, in the absence of question as to the rights of third parties. The patent, therefore, enured to his benefit. Hartshorn v. Day, 19 How. 211; Day v. Union *229 India Rubber Co., 20 How. 216; Gayler v. Wilder, 10 How. 477.
Boyle made the oath to the application filed in his lifetime in accordance with section 4892 of the Revised Statutes, and the certificate states that after his death "the specification originally filed with said application for a patent was amended within the scope of the original oath and the invention described in said original specification, and by way of limitation of the claims, but without the filing of any new oath or power of attorney." In Eagleton Manufacturing Co. v. West Manufacturing Co., 111 U.S. 490, 498, before referred to, the patent was held invalid because the authority given to Eagleton's attorneys ended at his death, and the patent was granted upon amendments made by the attorneys without any new oath by the administratrix. And Mr. Justice Blatchford, speaking for the court, said that the file wrapper showed, "beyond doubt, that there was no suggestion, in the specification signed and sworn to by Eagleton, of the invention described in the amendment," and that "in view of the entire change in the specification, as to the invention described, the patent, to be valid, should have been granted on an application made and sworn to by the administratrix. The specification, as issued, bears the signature of Eagleton and not of the administratrix, and it is sufficiently shown that the patent was granted on the application and oath of Eagleton, and for an invention which he never made."
In the case at bar, there was not only no amplification of the original application by the amendment, but it was within the scope of the original specification and a limitation and narrowing of the original claim, so that it was the identical invention sworn to by Boyle, and there was no more reason for requiring a new oath from his administratrix than there would have been for requiring it from Boyle himself. The attorneys who had acted for Boyle continued to act under Rankin's direction, and although it is not shown that their authority was conferred in writing by a power of attorney executed and filed in accordance with the rules of the office, that is not a fatal objection, since the attorneys had authority *230 in fact, and their acts were subsequently ratified by Rankin and by Mrs. Boyle.
We are of opinion that the grant was not void because of the death of Boyle before the patent was issued, and that it should be construed in the alternative as a grant to James Boyle, or his heirs, or assigns, which would include a grantee or grantees in being, capable of taking the patent and to whose benefit the grant would enure; that the patent should be construed as a grant to Thomas L. Rankin as assignee, and held to have been obtained by the authority of Mrs. Boyle as administratrix, as well as of Rankin; and that the amendment did not render the patent absolutely void, nor did the fact that no oath was filed after Boyle's death.
These conclusions answer the questions propounded, and will be certified accordingly.
