McALEER
v.
UNITED STATES.

*429 Mr. Tallmadge A. Lambert for appellant.

Mr. Assistant Attorney General Conrad for appellees.

MR. CHIEF JUSTICE FULLER, after stating the case, delivered the opinion of the court.

The Court of Claims held that this case fell within the rulings made by that court in Solomons v. United States, 22 Cow. Cl. 335, 342, and Davis v. United States, 23 Cow. Cl. 329. In the first of these cases, Clark, Solomons' assignor, chief of the Bureau of Engraving and Printing, was assigned the duty of devising a stamp, and did so. There was no agreement or understanding between the officers of the government and Clark concerning the right of the government to use the invention, or the remuneration, if any, which should be paid for it, and no express license to use the invention was given by him to the government, nor any notice prohibiting its use by intimating that he would demand a royalty. The Court of Claims held "that while the government did not obtain a specific interest in the patent, nor a monopoly of the invention, nor a right to share *430 in the profits thereof, nor to exclude other persons from the use of it, nevertheless it acquired the right to manufacture and use the stamp in its revenue service without liability to the inventor."

In the second case, Davis was foreman of the machine and foundry division of the Ordnance Department of the Washington Navy Yard, and invented and received a patent for a vent-closing firing attachment. The cost of experiments was paid by the United States, and the patents were taken out under the advice of the chief of the Ordnance Bureau, and after they were issued the Navy Department paid him a sum of money to reimburse him for the expense incurred in securing them as a royalty for the right to their use. The Court of Claims held that he could not recover, and reiterated, as the principle announced in Solomons' case, "that every public officer being in some measure or degree a guardian of the public welfare, no transaction growing out of his official services or position can be allowed to enure to his personal benefit, and that from such transactions, as in the cases of guardian and ward, or trustee and cestui que trust, the law will not imply a contract."

It is argued that the devising of the stamp by Clark came within the scope of his official employment, and, similarly, that Davis was employed for the specific purpose of doing what in fact he accomplished in making his invention, while McAleer was not employed to invent and did not accept a royalty in satisfaction of his claims.

The case of Solomons subsequently came before this court, Solomons v. United States, 137 U.S. 342, 346, and the judgment of the Court of Claims was affirmed. Mr. Justice Brewer, delivering the opinion of the court, said: "If one is employed to devise or perfect an instrument, or a means for accomplishing a prescribed result, he cannot, after successfully accomplishing the work for which he was employed, plead title thereto as against his employer. That which he has been employed and paid to accomplish becomes, when accomplished, the property of his employer. Whatever rights as an individual he may have had in and to his *431 inventive powers, and that which they are able to accomplish, he has sold in advance to his employer. So, also, when one is in the employ of another in a certain line of work, and devises an improved method or instrument for doing that work, and uses the property of his employer and the services of other employés to develop and put in practicable form his invention, and explicitly assents to the use by his employer of such invention, a jury, or a court trying the facts is warranted in finding that he has so far recognized the obligations of service flowing from his employment and the benefits resulting from his use of the property, and the assistance of the co-employés of his employer, as to have given to such employer an irrevocable license to use such invention." And M'Clurg v. Kingsland, 1 How. 202, was cited as decisive.

In the case at bar, as clearly summarized by the Court of Claims, the invention was made while petitioner was in the employment of the government as a skilled mechanic, whose duty it was to secure the most efficient service from the machines in his care, to keep them in repair, and to apply such improvements as experience might suggest. While so employed he devised the improvements in question, to be applied to the machines then under his charge as a machinist; doing the work largely in office hours and entirely with government tools and machinery; and he took out the patent at the solicitation of the bureau officers, and at the expense of the government. This was in 1875; he was discharged in 1877; the device was not used until 1879, and before it worked efficiently required certain mechanical changes, which were perfected and applied by government machinists, using government tools and material. Three days after the issue of the patent he executed the assignment set forth in the findings, whereby he covenanted, "for the sum of one dollar and other valuable consideration to me (him) paid" by the United States Treasury Department, that that department and its bureaus should have "the right to make and use machines containing the improvements claimed in said letters patent to the full end of the term for which said letters *432 patent are granted." But it is said that there is a distinction between the right to use and the use of an invention, and that in this instance, while the right to use was absolute, the actual use was to be compensated for by the continuous employment of McAleer in accordance with a contemporaneous agreement to that effect between him and the superintendent of the bureau. We do not regard this position as tenable. The instrument constituted a contract fully executed on both sides, which gave the right to the Treasury Department, without liability for remuneration thereafter, to make and use the machines containing the patented improvement to the end of the term for which the letters were granted. It was a complete legal obligation in itself, with no uncertainty as to the object or extent of the engagement, and could not be defeated, contradicted, or varied by proof of any collateral parol agreement inconsistent with its terms. Seitz v. Brewers' Refrigerating Machine Co., 141 U.S. 510.

The agreement that McAleer's "assignment should hold good only during plaintiff's employment in said Bureau of Engraving and Printing and not longer," was thus inconsistent and must be regarded as in defeasance and not as imposing a condition precedent to the use, the right to which had been completely granted for good and valuable consideration.

Moreover, the petition does not seek recovery for breach of any such collateral agreement, but proceeds upon an implied agreement under the licenses. We think the Court of Claims properly held that the case came within their previous rulings, which as we have seen, were in accordance with the decisions of this court, and that the instrument executed by McAleer secured by covenant the right to use the device in the Treasury Department, which right would, under the circumstances, have otherwise been implied.

Judgment affirmed.