Letters patent for an invention, issued without the signature of
the Secretary of the Interior, have no validity, although in every
other respect the requirements of law may be complied with and
although the issue without the Secretary's signature was
unintentional, accidental, and unknown to the Department of the
Interior or to the patentee; but this omission may be supplied by
the Secretary or Acting Secretary of the Interior at the time when
the correction is made, and from that time forward the letters
operate as a patent for the invention claimed.
An accounting for profits in a suit in equity to restrain an
infringement of letters patent can only be had when the
infringement complained of took place before the suit was commenced
and continued afterwards.
The Act of February 3, 1887, c. 93, "for the relief of Elon A.
Marsh and Minard Lefever," 24 Stat. 378, has no retroactive
effect.
The case, as stated by the Court, was as follows:
This is a suit in equity for the infringement of an alleged
patent of the United States which, it is averred, was obtained by
the complainant Marsh and his assignee and co-complainant, Lefever,
for a new and useful improvement in steam engine valve gear, with a
prayer that the defendant corporation may be required to account
for and pay over to the complainants the profits acquired by it,
and damages sustained by them by its unlawful acts, and be enjoined
from further infringement. The bill sets forth that the alleged
patent was obtained on the 28th day of December, 1880, and was in
due form of law, under the seal of the Patent Office of the United
States, signed by the Secretary of the Interior, countersigned by
the Commissioner of Patents, and dated on that day and year. The
answer of the defendant to these allegations is that it knows
nothing of the issue of the patent, except as informed
Page 128 U. S. 606
by the bill or by hearsay, and therefore neither admits nor
denies them, but leaves the complainants to make such proofs
thereof as they may deem advisable. A replication having been filed
to the answer, proofs were taken, among which there was put in
evidence an instrument in the form of a patent of the United
States, purporting to be signed, "A. BELL, Acting Secretary of the
Interior," and countersigned and sealed as alleged in the bill. By
stipulation of the parties, certain facts were admitted with
reference to this instrument, and allowed to be considered, "so far
as relevant, competent, or material, on any motion or at any stage
of the cause, including final hearing." The facts thus admitted
were substantially these:
That the instrument was received from the Patent Office by the
complainants Marsh and Lefever (the parties named therein as
patentees) on or about January 2, 1881, in all respects in the same
condition as it now is, save that the words "A. Bell" were not
thereon where they now appear; that the signature to it of E. M.
Marble, Commissioner of Patents, and the seal of the Patent Office,
are genuine; that neither of the complainants nor their counsel
knew of the omission of the signature of the Secretary of the
Interior to the instrument, but supposed it was in all respects
regular, their attention never having been called to the same until
on or about February 12, 1882, long after the commencement of the
present suit; that on or about February 17th following, it was sent
by the solicitor of the complainants to the Patent Office at
Washington, accompanied by a request of the complainants Marsh and
Lefever to have the mistake corrected, and that on or about
February 24th it was returned to the solicitor signed, "A. Bell,
Acting Secretary of the Interior," but without any other
change.
A letter dated April 28, 1882, from E. M. Marble, who was the
Commissioner of Patents when the instrument was issued, was also
admitted in evidence. The letter set forth the various steps taken
by Marsh and Lefever to obtain a patent for the invention claimed,
and by the officers of the Patent Office in preparing, executing,
and delivering it to them, and shows that every requirement of the
law and of the regulations of
Page 128 U. S. 607
the Patent Office was complied with when the instrument was
issued, except the affixing to it of the signature of the Acting
Secretary of the Interior, and that its omission, as established by
the history and record of the case, was purely accidental, and
probably was caused by the instrument's being inadvertently laid
aside or withdrawn from before the acting secretary while he was
engaged in signing patents.
The circuit court held that the signature of the Secretary of
the Interior was essential to render the instrument operative as a
patent of the United States for the invention claimed; that until
thus signed, it was not only a defective instrument, but was
entirely void, and therefore that the suit could not be maintained,
and it dismissed the bill. Its decree was entered on the 16th of
April, 1883, and from it the complainants on the 26th of February,
1885, took an appeal to this Court. Subsequently, and on the 3d of
February, 1887, Congress passed an act for the relief of the
patentees, reciting in its preamble the issue to them on the 28th
of December, 1880, of the letters patent mentioned in due form of
procedure, except that by accident or mistake they were not signed
by the Secretary of the Interior, and that they were signed by the
then Acting Secretary on February 24, 1882, and declaring as
follows:
"That the letters patent named in the preamble of this act are
hereby, and by this act, made legal, valid, complete, and
operative, in law and equity, from the 28th day of December, 1880,
to the same extent and for the same term that the same would have
been legal, valid, complete, and operative if the signature of the
Secretary of the Interior had at the time of the supposed issue of
said letters patent on the day aforesaid, been placed thereon, and
the omission of said signature thereon had not occurred,
provided however that the provisions of this act shall not
be held or construed to apply to or affect any suits now pending,
nor any cause of action arising prior to its passage."
24 Stat. 378, c. 93.
Page 128 U. S. 609
MR. JUSTICE FIELD delivered the opinion of the Court.
In support of their appeal, the appellants now contend, in
substance, as follows:
"1st. That the defendant could not impeach the patent for the
irregularity in its signing and issue, this not being apparent on
its face, without pleading such defense, and regularly putting the
question in issue."
"2d. That the patent being regular on its face, evidence to show
that the signature was irregularly placed to it was
incompetent."
"3d. That the correction of the omission in the patent was
within the power of the Acting Secretary of the Interior at the
time, that when the omission was thus remedied, the patent was
operative from its original date, or at least from
Page 128 U. S. 610
the date of the correction, February 24, 1882, and that the
complainants were, even in this latter view, entitled to an
accounting from that date."
"4th. That if the patent did not become valid from its date on
the subsequent signature by the Acting Secretary of the Interior,
then the Act of Congress of February 3, 1887, cured all
irregularities in the signing of the patent, made it valid from its
date, and must govern the decision in this Court."
The first three positions may be considered together.
It is undoubtedly true as a general rule that a patent of the
United States, whether for land or for an invention, can be
attacked for defects not apparent on its face only by regular
proceedings instituted for that purpose, and is not open to
collateral attack except where specially provided by statute.
Eureka Co. v. Bailey
Co., 11 Wall. 488,
78 U. S. 492.
But this rule applies only to those cases where the patent has been
in fact executed, and the authority of the officers to issue the
same was complete. In such cases, the impeachment must be by
pleadings setting up the specific acts which it is alleged vitiate
and defeat the instrument. It is always open to show that an
instrument produced in evidence, whether in an action at law or in
a suit in equity in support of a claim or defense, was never
executed by the person whose signature it bears, but that it is a
simulated and forged document, and when the time of execution is
material to the enforcement of the instrument, it is competent to
show the date when the signature of the party was attached.
Antedating cannot be used to cut off existing rights or defenses of
third parties which would not be impaired or defeated if the true
date was given. With respect to patents for land, we have had
frequent occasion to assert their inviolability against collateral
attack where the Land Department had jurisdiction and the land
formed part of the public domain and the law provided for their
sale. But we have also held that if the land patented was never the
property of the United States, or had been previously sold, or
reserved for sale, or the officers had no authority to execute the
instrument, the fact could be shown in any action or proceeding
whenever the patent is offered
Page 128 U. S. 611
in evidence.
Smelting Co. v. Kemp, 104 U.
S. 636,
104 U. S. 641;
Steel v. Smelting Co., 106 U. S. 447,
106 U. S.
452-453;
Mahn v. Harwood, 112 U.
S. 354,
112 U. S. 358.
And so also may the fact be shown if the instrument itself was
never signed by the officers whose names are attached to it, or
when they were in office, or at the time stated. As was said in a
case lately before this Court, antedating by an agent after his
power has been revoked, so as to bind his principal, partakes of
the nature of forgery, and is always open to inquiry, no matter who
relies upon it.
Anthony v. Jasper County, 101 U.
S. 693,
101 U. S. 698.
The same doctrine applies when a patent is signed by an officer of
the Patent Office or Land Department after he has gone out of
office. His power to give effect to his acts as an officer of the
government is then at an end, and no efficacy can be imparted by
antedating them, even though the act be the correction of a mere
mistake or omission. The mistake or omission must stand in the
condition he left it so far as he is concerned, with all its
consequences. If corrected at all, it must be by officers in power
at the time of the correction who have succeeded to his
authority.
This doctrine has special force in its application to a patent
for an invention. A patent for land has, in the legislation of
Congress, a twofold operation. It conveys the title where
previously that remained in the United States, but where issued
upon the recognition and confirmation of a claim to a previously
existing title, it is evidence of record of the existence of that
title or of equities respecting the land requiring recognition by a
quitclaim from the government. It always imports that the
government conveys, or has previously conveyed, interests in the
lands -- something which it at the time owns or its predecessor
once owned. And by the proceedings previous to its issue there is
created in the claimant an equitable right to the conveyance of the
legal title, or his right to such title is so established that he
can enforce it against others who, with notice of his claims, may
have obtained the patent.
Langdeau v.
Hanes, 21 Wall. 521,
88 U. S. 529.
But the patent for an invention conveys nothing which the
government owns or its predecessors ever owned. The
Page 128 U. S. 612
invention is the product of the inventor's brain, and if made
known would be subject to the use of anyone, if that use were not
secured to him. Such security is afforded by the act of Congress
when his priority of invention is established before the officers
of the Patent Office and the patent is issued. The patent is the
evidence of his exclusive right to the use of the invention; it
therefore may be said to create a property interest in that
invention. Until the patent is issued, there is no property right
in it -- that is, no such right as the inventor can enforce. Until
then, there is no power over its use, which is one of the elements
of a right of property in anything capable of ownership. In
Gayler v.
Wilder, 10 How. 477,
51 U. S. 493,
this subject was to some extent considered when the Court, by Chief
Justice Taney, said:
"The inventor of a new and useful improvement certainly has no
exclusive right to it until he obtains a patent. This right is
created by the patent, and no suit can be maintained by the
inventor against anyone for using it before the patent is
issued."
And again:
"The monopoly did not exist at common law, and the rights,
therefore, which may be exercised under it cannot be regulated by
the rules of the common law. It is created by the act of Congress,
and no rights can be acquired in it unless authorized by statute,
and in the manner the statute prescribes."
Section 4883 of the Revised Statutes prescribes the manner in
which patents for inventions shall be attested. It declares
that
"All patents shall be issued in the name of the United States of
America under the seal of the Patent Office, and shall be signed by
the Secretary of the Interior and countersigned by the Commissioner
of Patents, and they shall be recorded, together with the
specifications, in the Patent Office, in books to be kept for that
purpose."
The signatures of all the officers here named must be attached
to the instrument or it will be an uncompleted document, and
therefore ineffectual to confer "the exclusive right to make, use,
and vend the invention or discovery throughout the United States,
and the territories thereof." The omission of one signature is no
more permissible than the omission of all. On this point we have a
pertinent adjudication in
McGarrahan v.
Mining
Page 128 U. S. 613
Co., 96 U. S. 316.
There, the question arose as to the validity of an instrument as a
patent for land of the United States which had not been
countersigned by the recorder of the General Land Office. The law
then in force respecting patents for land issued by the General
Land Office provided that they should be issued in the name of the
United States under the seal of said office, and be signed by the
President of the United States or by a secretary appointed by him
for that purpose and countersigned by the Recorder of the General
Land Office, and be recorded in said office in books to be kept for
that purpose, and the Court held that the fact that the instrument
was not countersigned by the Recorder of the General Land Office
was fatal to its validity, and that the instrument did not become
operative as a patent until it was attested by all the parties
named in the statute. Until then, the United States had not
executed a patent for a grant of lands. In deciding the case, the
Court, by Mr. Chief Justice Waite, said:
"Each and every one of the integral parts of the execution is
essential to the perfection of the patent. They are of equal
importance under the law, and one cannot be dispensed with more
than another. Neither is directory, but all are mandatory. The
question is not what, in the absence of statutory regulations,
would constitute a valid grant, but what the statute requires; not
what other statutes may prescribe, but what this does. Neither the
signing nor the sealing nor the countersigning can be omitted, any
more than the signing or the sealing or the acknowledgment by a
grantor, or the attestation by witnesses, when, by statute, such
forms are prescribed for the due execution of deeds by private
parties for the conveyance of lands. It has never been doubted that
in such cases, the omission of any of the statutory requirements
invalidates the deed. The legal title to lands cannot be conveyed,
except in the form provided by law."
This decision is as applicable to a patent for an invention as
it is to a patent for lands, and in accordance with it, the
instrument issued to the complainants Marsh and Lefever, for the
invention they claim, was not at the time it was issued, by reason
of the absence of the signature of the Secretary of the
Page 128 U. S. 614
Interior, operative to create any right in them. But though the
instrument was thus inoperative, they were not barred from
afterwards obtaining a correction of it so as to render it
effective as a patent, to which they had become entitled. Where
mistakes are committed by officers of the Land Department in
issuing evidence of a claimant's rights not amounting to errors of
judgment in the exercise of judicial discretion, but which are the
result of accident or inadvertence, they may be remedied upon
proper application to the department. We have an instance of such
action in the case of
Bell v.
Hearne, 19 How. 252. It there appeared that a
patent for land was issued to one James Bell, while the records of
the office showed that one John Bell was the applicant and the
party entitled to it. Some years after it was received by James
Bell, he returned it to the General Land Office, and upon an
examination of the records of the department, and being satisfied
therefrom of the original mistake in the designation of the first
name of the party entitled to the patent, the Commissioner of the
General Land Office cancelled the original patent and issued a new
one to John Bell, and the question before the Court was as to the
power of the Commissioner to receive the original patent and to
issue a new one, upon which question the Court said:
"The commissioner of the General Land Office exercises a general
superintendence over the subordinate officers of his department,
and is clothed with liberal powers of control, to be exercised for
the purposes of justice, and to prevent the consequences of
inadvertence, irregularity, mistake, and fraud in the important and
extensive operations of that officer for the disposal of the public
domain. The power exercised in this case is a power to correct a
clerical mistake the existence of which is shown plainly by the
record, and is a necessary power in the administration of every
department."
It is true the omission of the signature of the Acting Secretary
of the Interior to the instrument issued to the complainants Marsh
and Lefever was not a mere clerical error, but an omission of a
signature essential to the creation of the instrument as a patent,
being in that respect like the omission of a
Page 128 U. S. 615
grantor's name to a deed. A clerical error, as its designation
imports, is an error of a clerk or a subordinate officer in
transcribing or entering an official proceeding ordered by another.
But we have no doubt that the power of the department to prevent
the consequences of inadvertences and mistakes in its officers
extends so far as to remedy an omission like the one under
consideration. The manner of affording the remedy is the only
question in such cases. Clearly it must be by the action of
existing officers of the department, not by former officers who
have gone out of office. Mr. Schurz, who was Secretary of the
Interior when the instrument in question was issued, could not have
supplied the omission by signing the document when it was returned
to the department for that purpose in February, 1882, for he was
then no longer in office. Mr. Kirkwood had succeeded him as
Secretary, and was then in office. He could undoubtedly have taken
up the application of the complainants Marsh and Lefever, and
having found upon examination that they were entitled, by
proceedings and proofs already had in the department, to the
patent, have signed the instrument, and delivered it to them in a
perfected form. This official duty, however, appears to have been
performed by Mr. Bell, who was Acting Secretary under him, as he
had been under Secretary Schurz. The omission in the instrument, as
originally issued, was thus supplied. The Revised Statutes (§ 177)
provide that in the case of the death, resignation, absence, or
sickness of the head of any department, the first or sole assistant
thereof shall, except in certain cases referred to (not material
here), perform the duties of such head until a successor is
appointed or such absence or sickness shall cease. The signing of
the instrument by Mr. Bell as Acting Secretary implies that one of
the conditions on which he was authorized to act in that capacity
had arisen. With his signature added, the instrument was complete.
No other signature was required, the same person who signed it as
Commissioner of Patents still continuing in office. The only
embarrassment from completing the instrument in this way arises
from its date. The signature, which completed its execution, was
attached February 24, 1882, while its date is December 28,
Page 128 U. S. 616
1880, more than thirteen months before. The statute declares
that
"Every patent shall bear date as of a day not later than six
months from the time at which it was passed and allowed and notice
thereof was sent to the applicant or his agent."
Rev.Stat. § 4885. This provision was intended to prescribe the
date on which the patent would begin to run, but should any
question arise in the future as to the duration of this patent, the
time at which its execution was completed by the signature of the
acting secretary may be proved. It would have been well if the date
of the signing had been added to his signature, or in some way
indicated on the instrument itself, so that it might have gone upon
the records of the Patent Office, as from that time only could the
instrument operate as a patent for the invention claimed unless
greater efficacy was imparted to it by the act of Congress, which
we shall presently consider.
The position that an accounting for profits earned subsequently
could be claimed in this suit is not tenable. An accounting for
such profits after suit can be demanded only where the infringement
complained of took place previously, and continued afterwards.
As to the Act of Congress passed February 3, 1887, for the
relief of the appellants, only a few words need be said. It may be
conceded that the defect arising from the omission of the
Secretary's signature to the instrument is cured as to the future
by that act, but it contains a proviso which excepts its provisions
from applying to or affecting any suits then pending, or any cause
of action arising prior to its passage. It is evident that Congress
did not intend to give to the act any retroactive effect and to
prevent such a construction inserted the proviso, thus limiting the
extent of its operation.
Wayman v.
Southard, 10 Wheat. 1,
23 U. S. 30. As
thus limited, the act, as well observed by counsel, is in harmony
with the law relating to reissues, allowing the inventor, upon the
surrender of his patent with a defective specification, to have a
new patent for the remainder of his term. For the reasons
expressed, it follows that
The decree below must be affirmed, and the cross-appeal,
being from rulings in the exclusion of evidence offered with
respect to the alleged infringement, must be dismissed.
