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E.M. BOWDEN’S PATENTS SYNDICATE LIMITED
HERBERT SMITH AND CO
1904 May 4, 5
[1903 E. 750.]
2 Ch. 86
BEFORE: WARRINGTON J.
Walter and Sinclair , for the defendant
Solicitors: A. Withers; Phillips & Boyle
INTELLECTUAL PROPERTY:- Patent Action – Infringement – Practice – Parties – Title to Patent at date of Writ – Application for Patent – Assignment of Benefit of Protection – Equitable Assignee – Legal Owner not a Party – Amendment – Rules of Supreme Court, 1883, Order XVI, r. 11.
HISTORY AND SUMMARY OF FACTS
In June, 1897, B. applied for letters patent for an invention the subject of this action. By a deed of December, 1897, B. assigned to the plaintiffs all that the said invention and the benefit of the protection of the application of June, 1897. The patent was subsequently granted to B., and in accordance with the provisions of the Patents Act, 1883, s. 13, was dated back to June, 1897, the date of the application. In June, 1903, the writ in this action to restrain an alleged infringement of this patent was issued. B. was at this time entered in the register of patents as the owner. In October, 1903, B., in pursuance of the deed of December, 1897, assigned the said letters patent to the plaintiffs. B. had since died:-
Held, that the assignment of December, 1897, did not amount to an assignment of the letters patent, and consequently that the plaintiffs at the date of the commencement of this action were equitable assignees only of the patent, and were not entitled to maintain this action without bringing the legal owner of the patent before the Court. Leave was accordingly given to the plaintiffs to amend their writ and statement of claim by adding the executors of B. as plaintiffs on the terms of allowing the defendants to amend their statement of defence and particulars of objections; the costs of the day and any costs thrown away by reason of the necessity for making this amendment to be the defendants’ costs in any event.
This was an action to restrain the infringement of the plaintiffs’ patent, in which, on proceeding to prove the plaintiffs’ title to the principal patent, the question was raised whether, under the circumstances hereinafter stated, the plaintiff company were, at the date of the issue of the writ, entitled to maintain this action without joining the registered owner of the patent as plaintiff or defendant. The facts and documents, so far as material for the purposes of this report, were as follows:-
On June 14, 1897, E. M. Bowden applied for letters patent for the invention in question. By a deed of December 17, 1897, which contained recitals as to the grant of certain earlier letters patent, not material for the purposes of this report, and as to the application for the letters patent in question, which was in the stage of provisional protection, E. M. Bowden, as beneficial owner, assigned unto the plaintiff company “all that the said invention, and also all that and those the said letters patent and other protection described, mentioned, or referred to in the said schedule, and the sole and exclusive benefit thereof, and of all extensions and improvements thereof, and also all rights, powers, emoluments, and advantages whatsoever under or in respect of the said letters patent, and/or other premises or any part thereof …. To hold, use, exercise, and enjoy the said invention, letters patent, and premises unto and by the company, their successors and assigns absolutely.” In the schedule was the following entry: “14th June, 1897, No. 14,402 of Great Britain, application for letters patent.”
Letters patent were subsequently granted to E. M. Bowden, which, in accordance with the provisions of the Patents Act, 1883, s. 13, were dated June 14, 1897, the date of the application.
On July 2, 1903, the writ in this action was issued: at this time the only entry on the register of patents was the entry of E. M. Bowden as the owner of this patent, No. 14,402.
On October 13, 1903, a deed between E. M. Bowden of the one part and the plaintiff company of the other part was executed, by which, after reciting that E. M. Bowden was the inventor of “certain improvements in and relating to brakes for velocipedes and other road vehicles, and has obtained letters patent in respect thereof numbered 14,402, and dated 14th June, 1897, and also certain other letters patent”; and that “by virtue of an agreement dated the 17th day of December, 1897, made between the assignor of the one part and the company of the other part, the company is entitled to such inventions and letters patent, and has called upon the assignor to assign the same accordingly,” E. M. Bowden as beneficial owner, in consideration of the premises, assigned unto the company “all those the hereinbefore recited inventions and the letters patent granted in respect thereof and the full benefit thereof, and all rights, powers, privileges, and emoluments connected therewith, including a right to apply for the extensions of the terms granted by the said letters patent respectively to hold the same unto the company absolutely.”
The statement of claim contained an allegation that the plaintiff company were “the registered assignees of letters patent numbered 14,402 of 1897 granted to E. M. Bowden,” and claimed an injunction to restrain infringement of this patent by the defendants with the usual consequential relief. The defence was a denial of infringement and a denial of the validity of the patent in question.
Since the commencement of the action Bowden had died.
At the date of the writ the only person legally entitled to complain of any infringement was Bowden.]
Bowden had parted with all his interest in this patent to the plaintiff company, and had assigned all he could assign to the plaintiff company.
In the present state of things the defendant would not be protected by the judgment of this Court; a decision in favour of the defendant would not protect him against an action by the patentee.]
The objection is merely technical; we are prepared to join Bowden’s executors by amendment if necessary, and ask for leave accordingly under the Rules of Supreme Court, Order XVI., r. 11.
[ Walter , for defendant, referred to Nobel’s Explosives Co. v. Jones, Scott & Co. (1) to shew that leave to amend ought not to be granted.]
On the facts we submit that the plaintiff company are the legal owners of this patent, and in a position to sue the defendant for infringement without joining the executors of Bowden. The fact that we were not on the register at the time is not material.
Walter and Sinclair , for the defendant. The assignment of December, 1897, has not been, and could not be, registered; the plaintiff was only an equitable assignee at the date of the writ, and an equitable assignee cannot sue in his own name; an exclusive licensee cannot sue without joining the patentee: Heap v. Hartley (1) ; the legal owner of the patent must be a party. On the documents in this case the plaintiff was not the legal owner of this patent when the action was commenced. If any amendment is allowed, it must be on terms that the defendant is allowed to amend the defence and particulars of objection, and has the costs occasioned by this delay.
This question, I confess, has caused me some considerable embarrassment. [His Lordship, after calling particular attention to the allegation in the statement of claim that the plaintiffs were “the registered assignees” of the patent numbered 14,402, and having stated the facts and the material portions of the documents as above, continued:-]
In that state of circumstances, the question I have to determine is whether at the date of the issue of the writ in this action the plaintiffs were entitled to maintain this action against the defendants for infringement of this patent, No. 14,402, without making Mr. Bowden a party, either as plaintiff or defendant. In the first place, were the plaintiffs, E. M. Bowden’s Patents Syndicate, Limited, at the date of the issue of the writ legal assignees of this patent or not? If they were the legal assignees, then the question, which, judging from a passage which I see in Mr. Frost’s book, is undecided, would arise, namely, whether they are entitled to sue before the registration. If they were not the legal assignees, that question does not arise.
(1) (1888) 5 Rep. Pat. Cas. 603.
(2) (1899) 16 Rep. Pat. Cas. 447.
(3) (1865) 2 H. & M. 628.
The first question I have to decide, therefore, is, Were the syndicate at the date of the writ legal assignees of the patent? It has been contended by Mr. Terrell that they are, and the way in which he puts it is this. He says that the assignment was an assignment of the rights granted or acquired by the application for the patent; amongst those rights was a right to have the patent, when granted, dated back to a date anterior to the assignment, and that, when granted, the patent itself passed by the assignment of the protection. In my opinion that is not the true view of this deed. In my opinion, although the words of the assignment are, an assignment of “the protection,” whatever that may mean, what the deed really amounts to is, an assignment of such beneficial rights as the fact of the protection, when perfected by the granting of the letters patent, may confer on the person who has made the application. I think it was really in law nothing more than an agreement to assign that patent to the assignee. I cannot satisfy myself, notwithstanding the ingenious way in which Mr. Terrell has put the case to me, that this amounts to an assignment of the patent, or that it would have been competent to the assignee to have it entered on the register as an assignment. I hold, therefore, that the plaintiffs, the Bowden’s Patents Syndicate, Limited, at the date of the commencement of the action were the equitable assignees, and not legal assignees, of the patent.
Now that being so, are they entitled to sue for the protection of that of which they are the equitable assignees without joining the person in whom, upon the register, the patent is vested? No authority directly in point has been cited to me on either side. I confess I am rather surprised at this. I should have thought it would have been a point which would have constantly arisen, and which ought to have been decided, so that there might be no further doubt about it; but no authority has been cited. One case has been referred to in which the plaintiffs were equitable assignees. I am alluding to the case of Actien-Gesellschaft fr Cartonnagen Industrie v. Temler (1) , before Stirling J. But as I understand that case, it was an application, to begin with, for an interlocutory injunction, and I can quite understand that in such a case as that, even if it had been necessary ultimately to amend the writ, it may have been that the learned judge would have entertained an application for an interlocutory injunction, because it very often happens that it is necessary to make an order at once, possibly without waiting for an amendment. But treating that case cited as an authority, it is enough for me to say there is no authority at all upon this point, because the point does not seem to have been raised or discussed. The decision of the learned judge was on a different point altogether. I think, therefore, I am right in saying that no authority on either side has been cited to me on this point.
Now what is the general rule of the Court with regard to an action brought by an equitable owner of property? The common case with which we are most familiar is an action relating to some debt in respect of which the provisions of the Judicature Act, which allow an assignee to bring an action in his own name without joining the assignor, have not been complied with. In that case, unless I am much mistaken, the well-accepted practice of this Court is that the legal owner of the property in question must be a party to the action, either as plaintiff or defendant. He is the proper person to bring the action. If he does not bring the action, then the course which the plaintiff adopts is that of proving that fact and making him a defendant. But the practice of the Court, as I understand it, is that the legal owner of the property must be before the Court somehow, in order that he may be bound. Applying that to the present case and holding, as I do, that that agreement of December, 1897, is not a legal but an equitable assignment of the patent, the conclusion I come to is that it is necessary in order to enable these parties to maintain this action to have the legal owner of the patent before the Court.
Now Mr. Bowden is dead, and I understand at present his will has not been proved. The present legal owners of the patent are the assignees under that deed of October, 1903; but the legal owners of the patent at the date of the issue of the writ would be either Mr. Bowden if he were alive, or his executors if he were dead. Therefore it would be necessary, in my opinion, to add the executors of Mr. Bowden as plaintiffs in the action. For that purpose it is obvious that the matter must stand over in order that they may be added.
I have been asked to allow the amendment, and I propose to do so; and the question now arises as to the terms on which that ought to be granted. I think I should be right in allowing the plaintiffs to amend their writ and statement of claim by adding the executors of Bowden as plaintiffs, by making the necessary allegations in the statement of claim, on terms of allowing the defendants to amend their statement of defence. I think with regard to the costs that the costs of yesterday and to-day, and any costs thrown away by reason of the necessity of making the amendment, ought to be the defendants’ costs in any event.
 2 Ch. 86
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