Patent-Rights of Co-Patentees-Use of Patent-Account of Profits-Inconsistent Relief.

The inability of one of several joint-patentees profitably to use the invention without the consent of his co-patentees, as owners of a prior patent, does not entitle him to share with his co-patentees in the profits made by them from the use of the patent, there being no principle of law, in the absence of contract, to prevent any person not prohibited by statute from using any invention whatever, and no implied contract, where several persons jointly obtain letters patent, that no one of them shall use the invention without the consent of the others, or that he shall use it for their joint benefit.

The decision of the Master of the Rolls, 34 Law J. Rep. (N.s.) Chanc. 298, reversed.

Plaintiff cannot obtain relief inconsistent with the case made by the bill.

This was an appeal from a decision of the Master of the Rolls, reported 34 Law J. Rep. (N.S.) Chanc. 298.

The defendants, Thomas Green and his son Willoughby Green, were manufacturing

NEW SERIES, 35.-CHANC.

engineers, carrying on business together in partnership at Leeds, and having also a branch establishment in London, at No. 2, Victoria Street, Holborn. In 1859 Willoughby Green obtained a patent for improvements in mowing-machines, and in 1861 two other patents for further improvements were taken out in the joint names of the defendants and the plaintiff, who was in their employ at the Leeds works; and in August, 1862, the defendants and the plaintiff jointly granted a licence to Messrs. Cookey & Co., of Glasgow, to use one of the joint patents at certain royalties.

On the 25th of March, 1862, the plaintiff left the Leeds works and went to the London establishment, which up to that time had been managed by Willoughby Green; here he conducted the business till the 21st of January, 1863, when he was forcibly ejected by the defendants from the premises.

The plaintiff being unable profitably to work the joint patents without the consent of the owner of the patent of 1859, filed his bill on the 9th of May, 1863, praying for a declaration that he was entitled to share equally with the defendants in the joint patents, and in the profits of all articles made or sold by the defendants since the 21st of January, 1863, and in the royalties received by them under the licence

B

granted to Cookey & Co., and for an account of such profits and royalties; the bill also sought an account of the transactions between the parties as to the London business from the 25th of March, 1862, to the 21st of January, 1863, upon the footing of an alleged arrangement, by which the plaintiff was to carry on the London business on his own account upon certain special terms.

The defendants claimed the sole right in the joint patents by virtue of an alleged arrangement with the plaintiff, and submitted that, even if the plaintiff was a joint owner with them of the patents, he would only be entitled to use the patents himself and to share in the royalties arising under licences granted by the joint patentees, but not to share in or have an account of the profit made by the defendants by means of their use of the patents. They also denied the alleged arrangement with respect to carrying on the London business, and insisted that the plaintiff only managed that business as the servant of Thomas Green, whose business it had never ceased to be, at a salary of 2007. a year.

The Master of the Rolls, after remarking that any provision for the separate working of the joint patents would work great injustice, because the plaintiff could not use the patent in which he was interested without infringing the original patent, held, upon the evidence, that the defendants had failed in establishing any agreement by which the plaintiff had parted with his interest in the joint patents, and that the plaintiff was entitled to one-third of the profits made by the use of the joint patents only. Upon the second branch of the relief sought, his Honour, after reviewing the evidence, came to the conclusion that until some final agreement should be made between the parties, which never was made, the plaintiff was entitled to be remunerated for his services from the 25th of March, 1862, to the 21st of January, 1863, by commission or discount on the articles sold by him, and not by salary.

The defendants appealed.

Mr. Southgate and Mr. Kingdon, for the plaintiff, in support of the decree, cited

Re Russell's Patent, 2 De Gex & J. 130.
Hancock v. Bewley, Johns. 601.

M'Mahon v. Burchell, 5 Hare, 322;

s. c. 2 Phill. 127.

Eason v. Henderson, 12 Q.B. Rep. 986; s. c. 18 Law J. Rep. (N.s.) Q.B. 69. Henderson v. Eason, 17 Q.B. Rep. 701; s. c. 21 Law J. Rep. (N.S.) Q.B. 82; 2 Phill. 308.

Crosley v. the Derby Gas Light Company, 3 Myl. & Cr. 428.

Leake v. Cordeaux, 4 W. Rep. 806. Jefferys v. Boosey, 4 H.L. Cas. 815; s. c. 24 Law J. Rep. (N.S.) Exch. 81. 15 & 16 Vict. c. 83. s. 35.

Mr. Selwyn and Mr. Phear appeared for the defendants, and

Mr. Southgate was heard in reply.

The LORD CHANCELLOR (Nov. 4).—The bill in this case was filed for relief on two distinct grounds.

On the first branch of the case, the plaintiff by his bill alleged that he was interested, jointly and equally, with the defendants in the patents of the 20th and 31st of December, 1861; that the defendants had made profits by the manufacture and sale of machines manufactured by them according to the inventions thus patented, and had received money by way of royalty from the Messrs. Cookey, to whom a licence had been granted to use the inventions or one of them; and the bill prayed a declaration that the plaintiff was entitled to share equally with the defendants in the profits of the articles manufactured or sold by the plaintiffs under the same patents, and in all royalties received by them under the said licence.

The second branch of relief sought related to the profits made by the sale of lawnmowing machines, rollers and other machines, from the 25th of March, 1862, to the 21st of January, 1863, at No. 2, Victoria Street, Holborn. The bill alleged that this business, though carried on during that period in the name of the defendant Thomas Green, was in truth the business of the plaintiff, the goods there sold having been all purchased by him of the defendants, or one of them, and sold on his own account, though the trade continued to be carried on in the name of Thomas Green; and the bill prayed the necessary accounts and relief founded on this state of facts.

On the first branch of the case the defen

dants insisted that the patents, though granted to the three jointly, belonged solely to the defendant Thomas Green, who had paid all the costs of obtaining them, and that this had been acknowledged by the plaintiff. With regard to the second part of the case, the defendants denied that the business in London had ever ceased to be the business of Thomas Green, and insisted that during the period in question the plaintiff was managing it as the servant of Thomas Green.

As to the first branch of relief sought by the bill, there is conflicting evidence, on which the Master of the Rolls decided in favour of the plaintiff. In the view I take of the case, it is not necessary that I should come to any positive decision as to whether the plaintiff had a beneficial interest in these patents; but the inclination of my opinion is in conformity with the view taken by his Honour. Perhaps I ought rather to say, that whatever the truth may be, I incline to think there is no sufficient evidence to rebut the prima facie presumption arising from the fact that the letters patent were granted to three. Where such a grant has been made to two or more as joint inventors, it is dangerous for any Court to allow one of the grantees to set up a title against the others, founded on mere parol evidence, or inference from doubtful conduct. The grantee, who in such a case claims an exclusive right, ought to obtain written evidence on the subject; and if, by omitting to take this precaution, he is put to a loss, he has only himself to blame. But in the present case I do not feel it incumbent on me to pronounce a positive opinion as to whether the plaintiff was or was not beneficially interested in the patents; for even if he was, he did not, in my opinion, become thereby entitled to any relief in this suit.

The Master of the Rolls, by his decree, has declared that the plaintiff is entitled to one-third share of the letters patent, and to one-third share of the profits arising from the use of the invention patented subsequently to the 21st of January, 1863, and also to one-third part of all money which has arisen from licences granted under the patents. With great deference to the Master of the Rolls, I do not think he is entitled to any part of this relief. With respect to

money received from the royalties, the defendants deny that they have received anything, and this is not met by any evidence on the part of the plaintiff, though it would have been easy for him to have done so; for the only licence alleged by him to have been granted is one to certain gentlemen trading under the firm of Cookey & Co., who must have been able to prove payment by them on account of royalty to the defendants, if any such payment had been made. The case, therefore, comes to thisis the plaintiff entitled to relief on the score that the defendants have made profit by using the patented inventions in the manufacture and sale of their own goods? I think not. The letters patent grant to the three, their executors, administrators and assigns, that they, and every of them, by themselves, their servants and agents, or such other as they may agree with, and no others, shall for the term of fourteen years use, exercise and vend the said invention. The right conferred is a right to exclude all the world other than the grantees from using the invention. But there is no exclusion in the letters patent of any one of the patentees. The inability of any one of the patentees to use the invention, if any such inability exists, must be sought elsewhere than from the letters patent. But there is no principle, in the absence of contract, which can prevent any person not prohibited by statute from using any invention whatever. Is there, then, any implied contract, where two or more persons jointly obtain letters patent, that no one of them shall use the invention without the consent of the others? or if he does, that he shall use it for their joint benefit? I can discover no principle for such a doctrine. It would enable one of two patentees either to prevent the use of the invention altogether, or else to compel the other patentee to risk his skill and capital in the use of the invention, on the terms of his being accountable for half the profit, if profit should be made, without being able to call on his co-patentee for contribution if there should be loss.

This would be to place the parties in a relation to each other which, I think, no Court can assume to have been intended, in the absence of express contract to that effect. I am of opinion, therefore, that the decree is wrong in declaring that the plain

tiff is entitled to one-third share of the profits made by the defendants from the use of the patents, and that he has failed altogether in establishing any title to relief, so far as relates to the patents. The conclusion at which I have thus arrived is in strict conformity with what was done in the case of Ex parte Russell, cited and commented on during the argument. In that case two persons were applying for patents for the same invention-Russell, the master, and Muntz, the servant. Russell applied to have the Great Seal affixed to his letters patent; Muntz opposed, on the ground that the invention was not his master's. It seemed to me, on the evidence, that the invention was partly that of Russell, the master, and partly that of Muntz, the servant, and I therefore decided that the Great Seal should not be affixed to the letters patent of Russell, except on the terms that they should be assigned to a trustee for Russell and Muntz, Muntz agreeing to abandon his application for his own letters patent. To this the parties agreed; and it appears that on a subsequent day a discussion took place as to the form of the proposed trust, and it was ordered, in conformity with what I consider to be the rights of two persons jointly obtaining letters patent, that the letters patent should be assigned to two trustees, and that each patentee should have a free licence to himself and his partners. This case, however, was so much one of arrangement between the parties, that if I had not been satisfied of the soundness of the ground on which it rested, I should have paused before I relied on it as an authority.

Upon the second branch of the case his Lordship went minutely into the evidence, and came to the conclusion that the plaintiff had not succeeded in making out that in conducting the business in Victoria Street, he was anything else than the agent or servant of Thomas Green, and therefore that he had failed to establish any title to the relief prayed by the bill. With all respect to the Master of the Rolls, his Lordship was of opinion that the relief given by the decree was inconsistent with the case made by the bill; for by the bill the plaintiff emphatically insisted that he carried on the London business on his own account, for his own benefit, and at his own risk, though he used the name of Thomas Green,

as one well known in connexion with the trade. There was no suggestion in the bill that he was carrying on the business on commission. Upon such a bill it was impossible for this Court to give relief, founded on the assumption that the plaintiff, though failing to make out his title as owner of the business, was yet entitled to relief on the footing of his having been an agent selling on stipulated terms of commission. The defendants had had no opportunity of meeting such a case, which not only was not the case made by the bill, but was absolutely inconsistent with it.

His Lordship was, therefore, of opinion, that on the second branch of the bill, as well as on the first, the plaintiff had wholly failed to establish any title to relief, and, consequently, his bill must be dismissed with costs.

Mr. Southgate and Mr. Bevir, in support of the motion.-Before the Chancery Improvement Act (15 & 16 Vict. c. 86), a defendant demurring to part of the bill was bound to answer or plead to the rest. Since that act, after the time allowed for filing interrogatories has elapsed, a defendant who has not been required to answer, may demur to part of the bill without answering or pleading to the rest of the bill

Burton v. Robertson (1), because, by the 12th section, he cannot then be called to answer; but the former practice must

(1) 1 Jo. & H. 38; s. c. 29 Law J. Rep. (N.S.) Chanc. 747.

Statute of Mortmain—Attestation.

A voluntary conveyance of land to charitable uses was executed by the grantor in the presence of a witness, who signed the attestation clause, and in the presence of two other persons, who executed the deed at the same time for the purpose of conveying an outstanding legal estate, but did not sign the attestation clause :-Held, that the deed was not sealed and delivered in the presence of two witnesses within the meaning of the Statute of Mortmain (9 Geo. 2. c. 36).

This was a suit instituted by the residuary devisees in trust under the will of Thomas Bunn to obtain a declaration of the rights of the persons interested in the estate of Thomas Bunn and of his sister Jane Bunn, and especially to try the question of the validity of two deeds of conveyance to charitable uses. One question upon which the validity of one of these deeds depended, was, whether it was or was not executed in the presence of two witnesses as required by the Statute of Mortmain (9 Geo. 2.

c. 36), and it is upon this point only that the case is here reported.

By the deed in question, Jane Bunn, being beneficially entitled in fee simple to the land, and Jane Bunn and the two plaintiffs, having the legal estate in the land as residuary devisees of Thomas Bunn, conveyed certain freehold land to trustees for charitable uses.

Jane Bunn and the plaintiffs signed, sealed and delivered the deed at the same time in the presence of each other, and in the presence of another person, who alone signed the attestation clause.

Jane Bunn died intestate as to the land.

Mr. Hobhouse and Mr. Rendall, for the plaintiffs.

Mr. Selwyn and Mr. Phear, for the trustees of the charity, contended that the deed was executed in compliance with the statute. It was proved that two witnesses were present at the execution, and it was not necessary that they should have signed the deed; but they had signed it, and the fact of their being parties did not make them the less witnesses.

Mr. Baggallay and Mr. J. Pearson, for the heir of Jane Bunn, contended that as the plaintiffs, though present when the deed was executed by James Bunn, were not present for the purpose of witnessing her execution, and as, though they signed the deed, they did not sign it for the purpose of attesting such execution, the provisions of the statute had not been complied with.

The argument was on the 26th of June; and on the 4th of November,

The MASTER OF THE ROLLS said, that he was of opinion that the deed had not been attested by two witnesses, as required by the Statute of Mortmain. Attesting a will or deed meant that one or more persons were present at the time of the execution of the instrument for that purpose, and that as evidence thereof they signed the attestation clause stating such execution. The fact that any number of persons were present when Jane Bunn executed the deed would not comply with the provisions of the statute, if they did not sign the deed as witnesess attesting such execution. Were it otherwise, all the cases on powers