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*104 In Re Casey's Patents
Stewart v. Casey
Court of Appeal
CA
Lindley, Bowen and Fry, L.JJ.
Subsequently J. Stewart and T. Charlton entered
into arrangements with the Defendant, J. Casey, to
introduce their patents to the mercantile world, and
he spent some time and money in pushing,
developing, and improving the inventions.
Ultimately, on the 29th of January, 1889, J.
Stewartand T. Charlton signed the following
document in favour of the Defendant J. Casey.
"James Casey, Esq.,
1891 Nov. 18, 19
"10, Philpot Lane, E.C.
Chancery Division
"Stewartand Charlton's Patents.
Romer, J.
1891 June 8
Letters Patent--Co-owners--Equitable assignment
of a Share--Registration-- Documents of Title,
Custody of--Patents, Designs, and Trade Marks
Act, 1883(46 & 47 Vict. c. 57), ss. 23, 85, 87, 90-Patents Rules, 1883, rr. 65, 68, Form L--Contract-Consideration--Past Services.
An equitable assignment of a patent or a share or
interest in it may be put upon the register.
A.and B., joint owners of certain patents, wrote to
C. as follows: "In consideration of your services as
the practical manager in working both our patents
... we hereby agree to give you one-third share of
the patents, the same to take effect from this date."
A. and B. afterwards deposited the letters patent
with C. to assist him in effecting a sale of the
patents, which however did not take place. C.
registered the above letter, and claimed to retain
possession of the letters patent as a co-owner of a
third share therein:-Held, (affirming the decision of Romer, J.), that
sect. 85 of the Patents, Designs, and Trade Marks
Act only excludes notices of trusts; and that the
letter was an immediate equitable assignment of an
interest in the patent, not defective for want of
consideration, and was properly entered on the
register.
ON the 28th of July, 1887, two letters patent, Nos.
10,512 and 10,513, were granted to J. Stewart and
T. Charlton, the one for "Improvements and means
and appliances for storing volatile or inflammable
liquids," and the other for "Improvements in and
appliances or vessels for storing, or storing and
transporting, volatile or inflammable liquids."
"Dear Sir,--We now have pleasure in stating that
in consideration of your services as the practical
manager in working *105 both our patents as above
for transit by steamer or for any land purposes, we
hereby agree to give you one third share of the
patents above-mentioned, the same to take effect
from this date. This is in addition to and in
combination with our agreement of the 29th
November last."
In June, 1889, J. Stewart and T. Charlton handed
the letters patent for both their said inventions to
the Defendant Casey to assist him in some
negotiations which he was then carrying on for a
sale of the patents, but a sale was not effected.
J. Stewart died in September, 1889, and the
Plaintiffs Isabella Stewart and Ernest Stewart were
the executors of his will; and they and the Plaintiff
T. Charlton subsequently applied to the Defendant
Casey to return them the letters patent, but he
claimed to retain possession of them as a owner of
a third share in the patents, and in December, 1889,
he registered the letter of the 29th of January, 1889.
The letter was entered on the register at full length;
and there was also on the list of proprietors of
patents an entry referring to the letter and stating
that the Defendant claimed an interest in the patent
under that document.
This action was commenced in June, 1890, and
claimed from the Defendant Casey delivery up of
the letters patent, and damages for their detention.
The Plaintiffs also gave a notice of motion to
rectify the register by expunging therefrom the
entry of the letter of the 29th of January, 1889.
The action and the motion were directed to be
heard together [FN1]
FN1 The following are the sections of the 46 & 47
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Vict. c. 57, specially referred to in the argument:-Sect. 23: "(1) There shall be kept at the Patent
Office a book called the Register of Patents,
wherein shall be entered the names and addresses
of grantees of patents, notifications of assignments
and of transmissions of patents, of licenses under
patents, and of amendments, extensions, and
revocations of patents, and such other matters
affecting the validity or proprietorship of patents as
may from time to time be prescribed. "(2) The
Register of Patents shall be prima facie evidence of
any matters by this Act directed or authorized to be
inserted therein. "(3.) Copies of deeds, licenses, and
other documents affecting the proprietorship in any
letters patent, or in any license thereunder, must be
supplied to the Comptroller in the prescribed
manner for filing in the Patent Office." Sect. 85:
"There shall not be entered in any register kept
under this Act, or be receivable by the Comptroller,
any notice of any trust expressed, implied, or
constructive. " Sect. 87: "... The person for the
time being entered in the Register of Patents,
Designs, or Trade-marks, as proprietor of a patent,
copyright in a design, or trade-mark, as the case
may be, shall, subject to any rights appearing from
such register to be vested in any other person, have
power absolutely to assign, grant licenses as to, or
otherwise deal with, the same and to give effectual
receipts for any consideration for such assignment,
license, or dealing. Provided that any equities in
respect of such patent, design, or trade-mark may
be enforced in like manner as in respect of any
other personal property." Sect. 90: "The Court
may, on the application of any person aggrieved by
the omission without sufficient cause of the name
of any person from any register kept under this Act,
or by any entry made without sufficient cause in
any such register, make such order for making,
expunging, or varying the entry, as the Court thinks
fit; or the Court may refuse the application; and in
either case may make such order with respect to the
costs of the proceedings as the Court thinks fit."
*106 They were heard before Mr. Justice Romer
on the 8th of June, 1891.
E. M. Daniel, for the Plaintiffs:-The letter is an executory agreement, and not
capable of registration. It was intended that when
the Defendant had rendered certain services he was
to have a share in the patents, and the patentees
would be trustees of that interest for him, but he
has not rendered those services. But if it is an
equitable assignment, then it is not a document
which the Legislature contemplated should be
registered. It is not an assignment of the patent
within the terms of sect. 23 of the Patents, &c., Act,
1883, and of rules 65-68 of the Patents Rules,
1883, which are based on the section. No trust is to
appear on the register, sect. 85; and entry on the
register gives a legal right to deal with the patent,
leaving equities to be enforced in the usual manner,
sect. 87. The intention of the Legislature is that
deeds and other formal documents affecting the
legal title in patents should appear on the register,
and not every indefinite document like the present.
Form L in the schedule to the rules supports this
view. But if the Defendant is entitled to a third
share of the patents, he has no right to retain the
letters patent which were given him only for a
particular purpose that has failed.
*107 Cutler, Q.C., and Bissill, for the Defendant:The letter is clear and consistent, and conferred an
immediate interest on the Defendant. It is not a
trust, and therefore it can be registered. A patent is
a chose in action and there is no difference between
a legal and equitable interest in it, and a deed is not
necessary for transmitting any interest in it. The 3rd
sub-section of sect. 23 points to documents other
than deeds. This is a document "affecting the
proprietorship" of the patent, and therefore capable
of registration. As to the retention of the letters
patent, the Defendant is a co-owner, and has
expended considerable sums in relation to them.
Daniel, in reply.
ROMER, J.:--
The first point I have to consider is, what is the
effect of the document of the 29th of January,
1889, bearing in mind the prior correspondence and
the surrounding facts which have been put in
evidence before me? In my judgment, it was
intended to confer by that document on the
Defendant a one-third share in the patents as from
its date. On the evidence there was clearly
consideration enough to support the transaction,
and it was not intended that the interest conferred
on the Defendant should be in any way conditional.
Indeed the document in itself is plain as shewing
that it was intended to take effect from its very
date. It appears to me, therefore, that in the broad
sense of the term, it was an assignment of an
interest in the patents, that interest being a onethird interest, and that the Defendant became
entitled to that one-third interest as and from the
date of the document.
That being so, the next question is, whether the
Comptroller has rightly permitted an entry on the
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Register of Patents of the Defendant's interest
under that document? I think the Comptroller was
right. If it was, as I think in the broad sense of the
term it was, "an assignment of an interest" in the
patents, then it comes within the provisions of rule
65, and is a matter affecting the proprietorship of
the patents, which it is prescribed by rule 65 shall
be entered in the register--I am bound to say not
*108 in so many terms, but by necessary, or, at any
rate, sufficient implication. But, in addition to that,
even if it was not an assignment properly so called
of an interest in a patent, then it appears to me it
was a "document affecting the proprietorship" of
the patents, and which, therefore, under rule 68,
should be entered in the register according to the
provisions of sect. 23 of the Act. I agree that rule
68 does not in absolute terms prescribe its entry,
but it does, I think, by necessary, or, at any rate,
sufficient implication. That being so, I think that
the entry by the Comptroller was proper, and that
the motion to expunge the entry fails, and must be
refused with costs.
Then as to the action: that is practically disposed
of by what I have already said; but I think both
parties were to a certain extent wrong. The
Plaintiffs were wrong in seeking to establish that
the Defendant had no interest in the patents, and no
right in respect of the documents which were in his
possession, except as an agent for them, and the
Defendant was wrong in retaining possession of the
letters patent as against the Plaintiffs. It appears to
me that the Defendant obtained possession of the
documents of title, the letters patent, for the
purpose of carrying out the sale which was referred
to in the correspondence, and that when the sale
fell through the Defendant, as the owner of onethird of the letters patent, could not properly retain
them as against the Plaintiffs. But I need not further
deal with the matter, because the Defendant has
undertaken, notwithstanding his right to one-third
of the letters patent, to hand over to the Plaintiffs,
as owners of two-thirds of the letters patent, the
two documents in question, and I need upon that
undertaking make no other order in the action
except that each party pay their own costs. There
will be liberty to apply.
(H. L. F.)
The Plaintiffs appealed from this decision. The
appeal came on to be heard on the 18th of
November, 1891.
E. M. Daniel, and W. Mackenzie, for the
Appellants:-An ambiguous and informal document like the
letter of the 29th of January, 1889, ought not to be
on the register as an assignment within sects. 23,
85, and 87 of the Patents, &c., Act, 1883 *109 . It
is not an assignment; it cannot amount to more than
an agreement to assign. There was no consideration
for the agreement, and no immediate interest
passed. It at most confers only an equitable title,
which may be enforced by proceedings in Equity
like any other equitable demand, but of which by
the express provision of the Act no notice can be
placed on the register. An assignment should be by
deed.
[BOWEN, L.J.:--Was it so under 15 & 16 Vict. c.
83, s. 35?]
The point has not been decided, though it has
been held that a license need not be made by deed:
Chanter v. Dewhurst [FN2]. A mere licensee
cannot sue alone: Heap v. Hartley [FN3]. The old
rule still applies to assignments. As there is no
legal assignment, there ought to be no entry on the
register.
FN2 12 M. & W. 823.
FN3 5 Rep. Pat. Cas. 603.
[They also referred to rules 65 and 68 of the
Patents Rules, 1883.]
Cutler, Q.C., and Bissill, for the Defendant, were
not called on.
LINDLEY, L.J.:-This is an appeal from an Order made by Mr.
Justice Romer, and the question raised by the
appeal is whether an entry on the Register of
Patents ought to be expunged. In order to determine
that question, the first thing is to see what the entry
is. We have sent for and looked at the book, and
have seen what is registered. What is registered is
this: There is on the file in the Patent Office a letter
dated the 29th of January, 1889, written and signed
by Stewart and Charlton, who are the registered
proprietors of the two patents, addressed to Mr.
Casey, at whose request this document was entered
on the register. The letter runs thus: "Dear Sir,-Stewart and Charlton's Patents,--We now have
pleasure in stating that in consideration of your
services as the practical manager in working our
patents as above, for transit by steamer or for any
land purposes, we agree to give you one third share
of the patents above mentioned, the same to take
effect from this date. This is in addition to and in
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combination with our agreement of the *110 29th
November last." Casey has taken that document, as
I say, to the Comptroller, with a request to have it
registered, and that document has been registered.
In addition to that there is in the book of
proprietors an entry referring to this registered
document, and stating in substance that Casey
claims an interest in these patents under it. The
application to us, therefore, is to expunge those two
entries, and the question is whether Messrs. Stewart
and Charlton are entitled to have them expunged.
For that purpose we must have regard to the
sections in the Patent Act of 1883 which relate to
this matter, and see what can be properly
registered, and what the expunging section says
about removing from the register entries
improperly made.
The important sections are 23, 85, 87, and 90.
[His Lordship read sect. 23, and continued:--]
Pausing there for a moment, and bearing in mind
that before the Act of 1883 the right method of
assigning a patent was by deed, and not finding in
the present Act anything that alters the law in that
respect, I suppose it must be taken that the proper
mode of assigning a patent is by deed now; but
bearing that in mind, it is quite obvious that
something more than assignments by deed may be
registered. The words of sect. 23, "affecting the
validity or proprietorship of patents," point
indisputably, taken in conjunction with the context,
to something besides deeds, and something besides
probates of wills and matters of that kind.
Then sect. 85 must be construed with sect. 23, and
the two must be read as one, so as to work together.
[His Lordship read sect. 85, and continued:--]
Reading those two sections together, there are two
methods of interpreting them. One is, to say that
sect. 85 excludes and renders it improper to register
any document of any sort or kind which upon the
perusal of it gives notice of any trust. That is one
method of reading it; and the other is to confine
sect. 85 to that which it speaks of, "notice of any
trust." If you put the first interpretation on sect. 85
you destroy sect. 23, or a great deal of it. You
cannot put such a Construction on sect. 85 as to
exclude from registration all documents affecting
the proprietorship of the patents which, when
looked at, will shew that there is a trust. That
cannot be the theory of it. If that had been so, sect.
23 would have been *111 very differently worded.
In order to interpret the two sections together, you
must draw a distinction between agreements and
other documents which do affect the proprietorship
and simple notices of trusts; and whereas, on the
one hand, notice of a trust is not to be put on,
documents which affect the proprietorship, whether
by creating trusts or otherwise, are not to be
excluded. That is how I understand these sections,
and that interpretation will make them work, and
make them work in practice, as I believe, in fact,
they are worked. Then sect. 87 is this: [His
Lordship read that section.] That section again
throws light, I think, on the true construction of the
two previous sections, 23 and 85, which shews that
the interpretation I have suggested is the correct
one.
Then sect. 90 is as follows:--[His Lordship read
the section.] There is no question, I suppose, that
Mr. Daniel'sclients are persons who would be
aggrieved and entitled to apply to have this entry
expunged if this entry were not properly on the
register itself.
Now, passing to the rules, which we must do in
order to see how this is practically worked, we
begin with rule 64, under the head of "Register of
Patents." Rule 64 says, that "the Comptroller shall
cause to be entered on the Register of Patents the
name, address, and description of the patentee as
the grantee thereof," so as to give a sort of root of
title. Everything must come on the register. Then
rule 65: "Where a person becomes entitled to a
patent or to any share or interest therein, by
assignment, either throughout the United Kingdom
and the Isle of Man, or for any place or places
therein, or by transmission or other operation of
law"--that is, assignment, or transmission, or other
operation of law--"a request for the entry of his
name in the register as such complete or partial
proprietor of the patent, or of such share or interest
therein, as the case may be, shall be addressed to
the Comptroller." Now, is "assignment" there to be
read as assignment by deed? That, I think, would
be putting far too narrow a construction on it, as I
think will be apparent when we look at rule 68.
Rule 68 says, and it must be taken in connection
with rule 65: "Every assignment and every other
document containing, giving effect to, or being
evidence of, the transmission of a patent or
affecting the proprietorship thereof *112 as
claimed by such request, except such documents as
are matters of record, shall be produced to the
Comptroller, together with the request." That
indicates something far less formal than a legal
assignment by deed. It is impossible, I think, to cut
those words down so as to exclude agreements
relating to, or, in the language of the rule,
"affecting the proprietorship" of the patent. Then
rule 69 is only, that "There shall also be left with
the request an examined copy of the assignment or
other document above required to be produced."
In pursuance of these enactments and rules, Mr.
Casey did, as I have said, take this letter to the
Comptroller and request him to register it. The
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Comptroller has done so, as I have mentioned; and
the question is whether he has done wrong. It
appears to me that there is nothing wrong, and that
this is one of those documents which are intended
to be registered under sect. 23, and which do not
amount to an infringement of the prohibition
against entry of notices of trusts under sect. 85. The
effect of this document is unquestionably to give
Mr. Casey an immediate equitable interest in these
patents. I do not think any one can say that he is
interested as legal proprietor, and I do not say he is
so entitled. That is quite another matter; but that he
has an immediate equitable interest in one-third of
the patents is too plain for reasonable doubt. It is
not simply an agreement to transfer the patents-that might be different--but it is an agreement "to
give you one-third share of the patents above
mentioned, the same to take effect from this date."
Those are the important words which convert this
into an immediate equitable assignment of the
patent. Mr. Casey was quite right in having that
registered. The only conceivable doubt was
whether registering this document was an
infringement of sect. 85, referring to notices of
trusts, and I think it is not. Therefore, this appeal
must be dismissed.
BOWEN, L.J.:--
This is the first time that this particular point has
come before the Court, and perhaps that may be an
excuse for my adding a few words of my own to
shew that we have all brought our minds *113 to
bear on this question. I will begin by saying what it
is exactly that we are deciding, and what the point
of law is. What I understand our decision to be is
this, that equitable assignments of a patent, or of a
share in a patent, may be entered on the register,
not indeed as legal assignments, but entered under
sect. 23 of the Act, in combination with rule 65, as
documents which affect the proprietorship of
patents, and as such prescribed by rule 65 for entry.
Now, that being the point of what we decide, let
us see how the case has reached that point. This is
an application to expunge the entry on the register,
not of the name of a person, but of a document
which has been put on the register. This
application, when first launched by Mr. Daniel,
whose materials only became perfect in his hands
during the progress of the case, was launched by
him as a case in which he had a right to expunge
the entry of the assignment of a patent. He said that
this document is not the assignment of a patent
under sect. 87, and ought, therefore, not to be put
upon the register as such. If, indeed, this had been
the case of the entry under sect. 87 of the
assignment of a patent and the treatment under sect.
87 of Mr. Cutler's client as a person who had
become entitled by assignment under that section,
at the present moment it strikes me that Mr. Daniel
would have been right. It is not necessary to decide
the question; but, as I think we all entertain the
same opinion, I do not see why I should not
mention it, always reserving our right to decide, if
the question really arises, differently. But it
certainly does strike one that a patent which is
created by deed can only be assigned by deed, and
for that view one may refer shortly to the case in
Coke [FN4], and the case, although it was a
copyright case, of Power v. Walker [FN5]. In
illustration of that view, one may mention that
licenses are by deed; and it does strike me as
probable that now, as before the Act, legal
proprietorship is that which is dealt with under sect.
87, and that the person who is the proprietor of the
patent means the proprietor of the patent in law.
Therefore, it would be wrong, it seems to me, to
treat a writing not under deed as if it was an assign*114 ment of a patent which would give a right to
the person who claimed under it to consider
himself as the legal proprietor. It may seem strange
that in these days still there should be differences
between transactions which are effected by seal and
transactions which are not--for instance, between
equitable rights and legal rights. But the theory of
the law of registration, both about patents and
many other things which could be mentioned,
being based on the wish to simplify transactions, I
think has gone constantly to this, that the legal
estate is that which for the purpose of business it is
desirable to keep to as regards the register, and I
am not at all sure that that is not the true view of
sect. 87 of the Act. But during the argument it
transpired that nothing had been done of the sort
which Mr. Daniel supposed. We sent for the
register and examined it, and there is no change of
the legal proprietorship effected on the register.
Nothing at all has happened except an entry on the
register by means of the filing of this document,
which I will examine in a moment. Therefore, even
if what has been effected would not be justified by
sect. 87, it is not one of those transactions which
are to be judged by sect. 87, but by some other
section. What other section is there that justifies
entries upon the register, even though they do not
amount to the legal transfer of title? Sect. 23, which
creates the register, and says that the names and
addresses of grantees of patents, notifications of
assignments, transmissions of patents and of
licenses, are to be entered, "and such other matters
affecting the validity or proprietorship of patents as
may from time to time be prescribed." "Prescribed"
in the section means, of course, prescribed by rule.
We have, therefore, not merely to consider whether
this is a legal assignment of the patents, but
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whether it is a matter that affects the proprietorship
of the patents; and if we consider that it is a matter
which affects the proprietorship of the patents, then
the only real question remains, whether it is such a
matter as is prescribed by rule, or comes within the
rule.
FN4 Lincoln College's Case, 3 Rep. 63a.
FN5 3 M. & S. 7.
Now, first, is it a matter affecting the
proprietorship of the patents? For that purpose the
document itself must be examined. The document
is one by which the signatories agree with Mr.
Casey to give him "one-third share of the patents
*115 above mentioned, the same to take effect
from this date." It cannot be denied that that is an
equitable assignment if it is anything. It is not an
agreement to take effect at some future date. It is an
agreement to give him the share as from the date of
the document, and it immediately passes in Equity
the right to the third share.
But then it was said by Mr. Daniel, "But there is
no consideration, and this document is not under
seal." We will see if there is consideration. The
consideration is stated, such as it is. It is, "in
consideration of your services as the practical
manager in working our patents as above for transit
by steamer." Then says Mr. Daniel, "Yes, but that
is a future consideration, and a future
consideration, if nothing were done under it or
nothing was proved to be done, would fail." The
answer to that is that the consideration is not the
rendering of the services, as is plain from the fact
that the document is to take effect in Equity from
the date. The consideration must be something
other than rendering services in the future. It is the
promise to render them which those words imply,
that constitutes the consideration; and the promise
to render future services, if an effectual promise, is
certainly good consideration. Then, driven from
that, Mr. Daniel said, "Oh! but it is past services
that it means, and past services are not a
consideration for anything." Well, that raises the
old question--or might raise it, if there was not an
answer to it--of Lampleigh v. Braithwait [FN6], a
subject of great interest to every scientific lawyer,
as to whether a past service will support a promise.
I do not propose to discuss that question, or,
perhaps, I should not have finished this week. I
should have to examine the whole state of the law
as to, and the history of the subject of,
consideration, which, I need hardly say, I do not
propose to do. But the answer to Mr. Daniel's point
is clear. Even if it were true, as some scientific
students of law believe, that a past service cannot
support a future promise, you must look at the
document and see if the promise cannot receive a
proper effect in some other way. Now, the fact of a
past service raises an implication that at the time it
was rendered it was to be paid for, and, if it was a
service which was to be paid *116 for, when you
get in the subsequent document a promise to pay,
that promise may be treated either as an admission
which evidences or as a positive bargain which
fixes the amount of that reasonable remuneration
on the faith of which the service was originally
rendered. So that here for past services there is
ample justification for the promise to give the third
share. Therefore, this is an equitable assignment
which cannot be impeached.
FN6 1 Sm. L. C. 8th Ed. p. 151.
If it is an equitable assignment, it is a document
which affects the proprietorship of the patent. It
does not alter the proprietorship, but it affects it
because it gives a man a right in equity to have it
altered at law. The only objection to that could be,
if it was a valid one, the objection which might
arise under sect. 85, which says that notices of
trusts are not to be entered upon the register. If it
could be made out that an equitable assignment
was not to be entered on the register simply
because it created a trust, and therefore carried with
it the notice of the trust which was created--if sect.
85 was to be expanded or stretched to that
enormous length, then Mr. Daniel's client might
succeed. But what does sect. 85 mean? Trusts had
been registered up to that time by the Patent Office;
but this section intended that notices of trusts, as
distinct from documents which created trusts in
Equity, were not to be sent to the Comptroller and
entered upon the register. Nobody has a right under
this Act to affect the register with the burden of a
notice of a trust. That is what I think this section
means. Nobody who may have gone to the register
and examined it shall be in peril of being affected
with notice of a trust or any other interest except
that which appears on the register. Again, by sect.
87, to go back for a moment in order to make this
point clear, the assignment of the legal
proprietorship of the patent is to take effect
"subject to any rights appearing from such register
to be vested in any other person." Sect. 85then
becomes important. The assignee takes subject to
the rights which appear on the register to be vested
in somebody else; but nobody is to clog the register
by simply giving a notice of a trust, whether the
trust is expressed, implied, or constructive. That
does not prevent a document being entered which
affects the proprietorship, nor can such document
be expunged on the ground that, although it affects
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[1892] 1 Ch. 104
1891 WL 8784 (CA)
(Cite as: [1892] 1 Ch. 104)
Page 7
the proprietorship, *117 anybody who reads the
document will see there is a trust created by it.
All that remains, therefore, to be considered is
whether this entry is prescribed by the rules. There
is a little difficulty about the rules, but the rules
must have such working effect given to them as
makes them intelligible and sensible. Rule 65 is the
rule which we must consider in order to see
whether this is an entry affecting the proprietorship
which comes within it. In regard to that rule, it
must be recollected that the Act of Parliament
under sect. 23 intended that matters which affected
the proprietorship, but which did not amount to a
transfer of proprietorship, should be entered if the
rules so prescribed; and when you come to the rule
you see that a person has a right to request the
entry, not merely of the assignment of the patent,
but of the assignment of any interest in the patent.
There, I think, the word "assignment" must receive
a liberal interpretation, and not the confined one
which has been given it under rule 65 when dealing
with assignments of a patent. I think the word is
large enough to cover equitable assignments of
interests or equitable assignments of a patent, and
that there is a right to have entered upon the
register as a document affecting the proprietorship
of a patent any equitable assignment either of a
patent or of any share or interest in a patent. That
seems to me the true view of this Act. Rule 68,
which the Lord Justice Lindley called attention to,
bears that out most completely, because it is not
only that "every assignment," but every other
document of title is to be produced to the
Comptroller, and such other proof of title as he
may require for his satisfaction. Therefore, I come
back to say, that what we have decided is, that
under this Act the equitable assignment of a patent,
or of a share or interest in a patent, may be entered
on the register under sect. 23 by virtue of the
operation of rule 65, which is wide enough to
include those documents though they do not fall
under sect. 87 of the Act.
FRY, L.J.:--
The first question in this case is, what is the
document of the 29th of January, 1889? Is it an
agreement and nothing more, *118 or does it
amount to an equitable assignment? The distinction
I take to be this: That an agreement which does not
exhibit the intention of the parties that the property
shall pass at once does not take effect as an
equitable assignment at once, but only when, from
the terms of the agreement, it can be gathered that
the intention of the parties is that the equitable
property shall pass. On the other hand, where the
intention is that the property shall pass either at
once or upon the satisfaction of some condition,
then the equitable property does pass at once or
upon satisfaction of that condition, as the case may
be. Now here the document upon its very face
expresses the intention that the property shall pass
at once--that it shall come out of the grantors and
be vested in the grantee on the very day of the
writing of the instrument. The instrument,
therefore, is, in my opinion, not merely an
agreement, but it is an agreement which effects an
equitable assignment of an equitable interest in the
patent.
That being so, we have to apply ourselves to the
statute, and I shall be very short in expressing my
view of it. I think that this case is governed by the
23rd section of the statute of 1883, taken in
conjunction with the 65th rule. I incline to think
that the words "notifications of assignments" in the
earlier part of sect. 23 apply only to legal
assignments of patents; but then there are the
words, "and such other matters affecting the
validity or proprietorship of patents as may from
time to time be prescribed." We know that the
prescription is found in rule 65, and that says, that
"Where a person becomes entitled to a patent or to
any share or interest therein, by assignment." It
appears to me that that clause does not extend to
agreements which do not operate as an assignment
of the equitable interest, but that it does extend to
agreements which do make an equitable
assignment of an interest. It is impossible, I think,
according to the reasonable construction of these
rules, to hold that interest must be a legal interest.
"Any interest" must include equitable interests.
They are the commonest kind of interest to create
in property. They are as familiar to every lawyer as
legal interests. The language, therefore, must
include, in my view, equitable interests. Equitable
interests pass by *119 equitable assignments, and
that is exactly what this instrument is.
That it was the intention of the Legislature and the
expectation of the Legislature that interests other
than legal interests constituting proprietorship
should appear is plain from the 87th section. That
puts the power of conferring a title--a power of
absolute assignment--in the hands of the person
who for the time being is entered on the Register of
Patents as proprietor. But, subject to what?
"Subject to any rights appearing from such register
to be vested in any other person." The rights of
proprietorship are purely legal rights; but any other
rights--any right that may appear on the register-must, therefore, be, if not a legal right to
proprietorship, either a legal right of some lesser
description or an equitable right; and, therefore, it
seems to me to be plain that the Legislature
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[1892] 1 Ch. 104
1891 WL 8784 (CA)
(Cite as: [1892] 1 Ch. 104)
Page 8
contemplated the prescription by the rules of a
power to enter on the register rights which were not
rights of proprietorship--including equitable rights.
The only other question is this. Is all that obvious
intention of the Act excluded by the 85th section? I
take exactly the same view of that section that has
been expressed by my learned Brothers. I think it
prevents A. from being put on the register with
notice that he is a trustee for B.; but B.'s estate may,
if B. goes through the proper formalities, makes his
request, and produces his documents, be put on the
register, not because A. is his trustee, but because
B. has an equitable interest. So, in the present case,
it is impossible to say that the fact that this
equitable assignment may create a trust prevents it
from creating an interest within the meaning of the
word used in the rule, or a right within the meaning
of the 87th section which would preclude its being
put on the register. I think, therefore, that the 85th
section must be read in the mode already
suggested, and that the view taken in this case by
the learned Judge in the Court below was perfectly
accurate. The appeal must, therefore, be dismissed
with costs.
Representation
Solicitor for Plaintiffs: H. M. Smith. Solicitor for
Defendant: H. Nanson.
(M. W.)
(c) Incorporated Council of Law Reporting For
England & Wales
END OF DOCUMENT
Copr. © West 2004 No Claim to Orig. Govt. Works