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MARSH V. NICHOLS, SHEPARD & CO., 128 U. S. 605 (1888)

U.S. Supreme Court

Marsh v. Nichols, Shepard & Co., 128 U.S. 605 (1888)

Marsh v. Nichols, Shepard and Company

Nos. 72, 95

Argued November 9, 1888

Decided December 10, 1888

128 U.S. 605


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

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