Page images
PDF
EPUB

CHAPTER XVI.

REMEDIES OF THE PATENTEE AND OF THE PUBLIC-ACTION FOR

INFRINGEMENT.

An action for infringement is the remedy which the patentee has, and the means which is given to him for enforcing his patent privileges.

The courts are bound to take notice of the patent, and are bound to give legal effect to it, provided it cannot be shown to have been granted contrary to law.

PARTIES TO THE ACTION. The Act of 1883 gives no directions as to what persons may be plaintiffs or defendants in an action for infringement, and therefore leaves the question of the parties to the action as it was before the passing of the Act.

The original grantee, it is obvious, so long as he has not parted with the whole of his interest in the patent, may be a plaintiff. And so may the assignee of a patent (a), even though he has acquired the right by assignment of two separate moieties, and the party sued is the original grantee (6).

The assignee of a portion of a patent may sue for an infringement of that part. Erle, C.J., in giving judgment in Dunnicliff v. Mallett (c), said: “The question is whether an assignment of part of a patent is valid. I incline to think that it is. It is every day's practice for the sake of economy to include in one patent several things which are in their nature perfectly distinct and severable.

Being therefore inclined to think that

(a) Electric Telegraph Co. v. Brett, 10 C. B. 838 ; 20 L. J., C. P. 123.

(b) Walton v. Lavater, 8 C. B.,

N. S. 162 ; 29 L. J., C. P. 275.

(c) 7 C. B., N. S. 209; 29 L. C. P. 70, 73.

[ocr errors]
[ocr errors]

a patent severable in its nature may be severed by the assignment of a part, I see no reason for holding that the assignee of a separate part which is the subject of infringement may not maintain an action.” The plaintiff in such an action would not be allowed to sever his part from the rest of the patent, and he would be liable to be defeated if it could be shown that the patent in any of its parts was void. But, on the other hand, he would have to show that his part alone would have been sufficient to support a patent, i.e., that it contains a new and useful invention. Sect. 33, however, of the Act of 1883, provides, “ Every patent

shall be granted for one invention only, but may contain more than one claim; but it shall not be competent for any person in an action or other proceeding to take any objection to a patent on the ground that it comprises more than one invention."

By sect. 36, “ A patentee may assign his patent for any place in or part of the United Kingdom, or Isle of Man, as effectually as if the patent were originally granted to extend to that place or part only." The assignee for a district will be in a position to bring an action for infringement, but it is obvious that the infringement must be within his district, otherwise he will be unable to prove damage.

One of several joint owners of a patent may bring an action in his own name to restrain infringement, or for damages, without joining his other co-owners (d), and he may sue alone for an account of profits, and for payment to the plaintiff of such part of such profits as the plaintiff should be entitled to.

Abinger, C.B., in Derosne v. Fairie (e), said that “a mere licensee could maintain no action against anyone else for the infringement of a patent.” He might, however, use the name of the grantor of the license for the purpose provided he were an exclusive licensee ($).

A mere licensee would have no exclusive right to use the invention; he is only a person who is permitted to use it. The grantor of such a license might grant a dozen other such licenses

a

(d) Shechan v. Great Eastern Railway Co., L. R., 16 Ch. D. 59; Dent v. Turpin, 2 J. & H. 139 ; see ante, Chap. XII.

(e) 1 Web. P. C. 154; see also Heap v. Hartley, 6 P. O. R. 495.

(f) Renard v. Levinstein, 2 Hem. & M. 628.

a

without prejudicing the rights of the license; but an exclusive licensee has a right of property in the monopoly, and stands very much in the same position as an assignee for a district. The term exclusive, as applied to a licensee, meaning exclusive within an

area.

When the exclusive licensee finds it necessary to protect his rights by bringing an action in the name of the licensor he is liable to give the licensor security for the costs (9) which, in the event of defeat, the licensor would have to pay. The right, however, to assign for particular districts will make this branch of the subject unimportant, since exclusive licenses were only a scheme for the purpose of, in effect, assigning for districts.

The assignees or trustees in bankruptcy of a patentee may maintain action for infringement in their own name (h), and so may the executors or administrators of a patentee.

A mortgagee of a patent is not a necessary party in an action for infringement of that patent (i), although, as we have seen, he should be joined on a petition for prolongation (k).

A mere agent to introduce, sell, and grant licenses for the use of a foreign patent in this country is not entitled to take proceedings to restrain infringement (1).

As defendants, a person physically using a patented invention is liable, such as a contractor (m). When a person in the position of a servant uses a patented invention, the master, in law, is the person who physically uses the invention as well as the servant, and the master may be sued. If a servant uses an invention in the course of his employment the master is liable, even though the master has told the servant to avoid infringing the patent (w). The directors of a company whose servants infringe an invention are personally liable (0).

5

(g) Evans v. Rees, 2 Q. B. 334 ; Spicer v. Todd, 1 D. P. R. 306.

(h) Bloxam v. Elsee, 6 B. & C. 169.

(i) Van Gelder v. Sowerby Bridge Flour Co., 7 P. O. R. 208.

(k) Church's Patent, 3 P. O. R. 95.

(1) Adams v. North British Railway Co., 29 L. T., N. S. 367.

(m) Denley v. Blore, 38 Lond Jour.

224.

(n) Betts v. De Vitre, L. R., 3 Ch. 429 ; Sykes v. Howarth, L. R., 12 Ch. D. 826 ; Whatman v. Pearson, L. R., 3 C. P. 422.

(0) Betts v. De Vitre. L. R., 3 Ch. 429, 441 ; Spencer v. Ancoats Rubber Co., 6 P. O. R. 46.

An architect specifying the use of a patented invention is not liable (P).

Aliens infringing a patent in this country by vending or otherwise are liable if they come within the jurisdiction of the courts (1). A person ordering goods to be made in England which are an infringement of a patent, although intended for exportation to him abroad, infringes the patent. “He that causes or procures to be made may be well said to have made himself.” Per Tindal, C.J. ().

A company, to whom the business of the defendants was assigned while an action for infringement of a patent was pending against them, cannot be joined as co-defendants in that action (s).

But where an indemnity was given by a third party to the defendants after the commencement of the action, it was held that the

person giving such an indemnity should be joined as a party under R.S.C. Order XVI. r. 48 (t), but such third party will only be bound by the decision of the Court so far as such decision falls within the terms of the order by which he was directed to appear (u).

An action is properly brought by the patentee against a company who are innocent carriers of infringing articles, to restrain them from dealing with or handing over such articles to other persons, and on the discovery of the name of the consignee, such consignee should be joined as a co-defendant in the action (x).

The manufacturer and patentee of a machine, the use of which is claimed to be an infringement of another patent, cannot compel the plaintiff to join him as a co-defendant with the person by whom the machine was used and against whom the action for infringement was brought (y).

(P) Denley v. Blore, 38 Lond. Jour. 224.

(9) Caldwell v. Vanrlissengen, 9 Hare, 415.

(r) Gibson v. Brand, 11 L. J., C. P. 177, 183.

(8) Briggs v. Lardeur, 2 P. O. R. 13. (t) Edison v. Holland, 3 P. O. R. 395.

(u) Edison v. Holland, 6 P. O. R. 243, 286.

(«) IVashburn and Moen Manufactur. ing Co. v. Cunard Stenmship Co., 6 P. 0. R. 398, 403.

(y) Moser v. Marsden, 9 P. O. R. 214.

CHAPTER XVII.

THE CAUSE OF ACTION-INFRINGEMENT.

The infringement of a patent is the doing that which the patent prohibits from being done (a). The words of the Royal Command are as follows: “We do by these presents for us, our heirs and successors, strictly command all our subjects whatsoever within our United Kingdom of Great Britain and Ireland and the Isle of Man, that they do not at any time during the continuance of the said term of fourteen years, either directly or indirectly make use of or put in practice the said invention, or any part of the same, nor in anywise imitate the same, nor make or cause to be made any addition thereto or subtraction therefrom, whereby tu pretend themselves the inventors thereof, without the consent, license or agreement of the said patentee in writing under his hand and seal, on pain, &c.”

There is no duty cast upon a patentee to inform persons that what they are doing amounts to an infringement of his patent, and he is not estopped by omitting to give such information, although he knew of the infringement, from subsequently bringing his action (6).

The question of infringement or no infringement is one of fact, and therefore is for the jury (c). But this refers to the mere infringement alone within the meaning of Tindal, C.J., in Munts v. Foster (d), when he told the jury that “for the purpose of inquiring whether the defendants have infringed the patent or not, we are to assume that it is a good patent, that no objection

(a) Walton V. Bateman, 1 Web. P. C. 613.

(6) Proctor v. Bennis, L. R., 36 C. D. 740.

(c) Walton v. Potter, 1 Web. P. C. 585; De la Rue v. Dickenson, 7 E. & B. 738.

(d) 2 Web. P. C. 99.

« PreviousContinue »