Re Casey’s Patents [1892] 1 Ch 104

KEY POINTS

• Letters Patent are important for co-owners as they establish ownership rights and can impact equitable share assignments. Share assignment under the Patents Act 1883 is achieved through equitable means, ensuring fairness among co-owners.

• Title documents must be registered as per the Patents Act 1883, preserving ownership rights. Sections 23, 85, 87, and 90 of the Patents Act 1883 are relevant to co-owners and share assignment. Rules 65, 68, and Form L in the Patents Rules 1883 influence Letters Patent registration.

• Contracts are essential for co-owners and share assignment under the Patents Act 1883, outlining terms and conditions.

• When a contract involves past services, special considerations apply within this legal framework.

FACTS

• An equitable patent assignment or a share or interest in it can be recorded on the register.

• In this case, A. and B. jointly owned certain patents and communicated with C. through a letter. The letter stated, "Considering your services as the practical manager in working both our patents... we at this moment agree to give you a one-third share of the patents, the same to take effect from this date."

• Subsequently, A. and B. entrusted the physical letters patent to C. with the purpose of aiding him in facilitating the sale of the patents. However, no sale of the patents occurred.

• C. registered the aforementioned letter and claimed his right to maintain possession of the letters patent as a co-owner, holding a one-third share in them.

JUDGEMENT

• The court upheld the decision of Romer, J., affirming that section 85 of the Patents, Designs, and Trade Marks Act specifically excludes notices of trusts. 

• The letter in question constituted an immediate equitable assignment of a patent interest, was not flawed due to a lack of consideration, and was appropriately registered.

COMMENTARY

• A. and B., who jointly owned certain patents, acknowledged C.'s services through a letter, agreeing to grant him a one-third share in the patents. They entrusted the physical patents to C. for potential sale, which did not happen.

• C. registered the letter and claimed a one-third co-ownership share of the patents. The court upheld this decision, stating that the Patents, Designs, and Trade Marks Act allows for the registration of equitable patent assignments. Section 85 of the Act excludes notices of trusts, and the letter in question constituted a valid immediate equitable assignment, not lacking consideration, and was correctly registered.

ORIGINAL ANALYSIS

• Plaintiffs used Defendant to promote their inventions and “in consideration of [his] services” they offered him 1/3 of the patents in a letter, effective immediately. 

• Plaintiffs then tried to claim no contract either because:

  1. The consideration was future consideration (i.e. services in the future) or 

  2. was past consideration, which was defective. 

Bowen LJ

• With others, ruled that Defendant was to retain his share of the patents since:

  1. If it is future consideration then the consideration is the promise to render services, not the services themselves (which, Plaintiffs argued, were not completed) and

  2. that from the evidence Bowen LJ could conclude that payment was really part of the initial deal, so that the question of past consideration is not really ruled on. 

• He explicitly avoids ruling on whether past consideration is valid.