Treatise on the Law of Patents Section 170

The following section from the Curtis Treatise on the Law of Patents is interesting in my estimation.

Section 170 The statutes however which authorize the assignment of an invention before the patent has been obtained appear to embrace only the cases of perfected or completed inventions. There can properly speaking be no assignment of an inchoate or incomplete invention although a contract to convey a future invention may be valid and may be enforced by a bill for a specific performance. But the legal title to an invention can pass to another only by a conveyance which operates upon the thing invented after it has become capable of being made the subject of an application for a patent This is apparent from the provisions of the statute which require the specification and the application to be made in the name of the inventor. A contract to convey a future invention or an improvement to be made upon a past invention cannot alone authorize a patent to be taken by the party in whose favor such contract was intended to operate.

George T. Curtis, A Treatise on the Law of Patents for Useful Inventions (1873).

75 thoughts on “Treatise on the Law of Patents Section 170

  1. 5

    And did the author of that treatise make any attempt to reconcile his view with Gayler v. Wilder, 51 U.S. 477, 493 (“And when the party has acquired an inchoate right to it, and the power to make that right perfect and absolute at his pleasure, the assignment of his whole interest, whether executed before or after the patent issued, is equally within the provisions of the act of Congress.”)

    1. 5.1

      …and on closer inspection, I see the point about title remaining equitable at least until conception. So then there is no conflict with Gayler.

      But doesn’t the assignee’s title become legal at the moment of conception? And in that case, the more relevant question is whether equitable claims can survive a transfer of legal title. The answer was usually no for personalty. link to

      1. 5.1.1

        Thanks Michael – Interesting issues. I need to go back to read Gayer. Is the inchoate right being discussed the incomplete invention or instead the pending patent application?

    2. 5.2

      Michael, may I ask you to review and comment on this post link to (Number 110 in the companion thread on Briefing.

      Curtis was talking about the requirements of what is not 35 USC 152 that requires a recorded assignment from the inventor before an assignee might be issued a patent.

      Now Gayler does say that the assignee has the power to perfect at his pleasure. That is not consistent with a equitable interest and is not an equitable interest. What Gayler is taking about is clearly something different, perhaps recording his assignment, which can be at his pleasure.

      1. 5.2.1


        You continue to lean too hard on 152 – which is merely an option for proceeding at the Office for a time of grant.


          anon, I acknowledge that one can assign a patent application or patent without recording.

          But I do not agree that assigning an invention has any force and effect because an invention not property — an invention is not a legal right. One does not obtain a legal right to exclude as a matter of common law just because he invented something. Compare a work of authorship. This could be protected at common law against publication.

          The only legal rights involved here are statutory. An inventor must file for a patent. The right to file cannot be assigned. The only property beyond that is the filed application, which can be assigned, and the patent, which can be assigned. But an assignment of either of these would be a legal assignment.

          The bottom line, a present assignment of a future invention gets one nothing because an invention itself is not property.

  2. 4

    Back from the dead after some thinking.

    Going back to first principles here. Patents are unlike trademarks and copyrights in the sense that there is no cause of action for a patent unless a sovereign body grants a limited right.

    Said sovereign body can revoke the right. A third party is not a sovereign body.

    Only third party disputes over patents require trial by jury.

    Patents can be universally revoked by congress so long as it is not a bill of attainder. Agency law avoids this issue.

    Time to stop chasing ghosts…

    1. 4.1

      T, confused thinking there. We have executive, legislative and judiciary. The power to issue patents is in congress. It creates patent laws and delegates to the executive the duty to examine and issue patents. The courts decide validity and infringement and have the sole power to revoke patents not issued in accordance with law (invalid) — according to many Supreme Court cases.

      Each branch of government has a distinct role. Congress cannot constitutionally abrogate the role of the courts — but that specific issue is before the courts as we speak.

      1. 4.1.1

        The power to revoke patents MAY be congressional as well as judicial. So you are making a circular argument.


          Invalidity historically and today is a defense to infringement so, the Article III power to revoke patents may be incidental.



              Everyone is entitled to an opinion.

              But such expressions of opinion that are clearly so uninformed from someone who has stated that they are a registered attorney just is not of any value to any sense of engaged and intelligent conversation.

              Rather, this type of dross can only muck things up.

              This is not America’s Leading Source of uninformed dross – at least that’s not what I think the good professor wants this “ecosystem” to be.

              Well, let me place a caveat on that and state that’s not what a reasonable expectation of a discussion section on law would want as an “ecosystem.”


                anon, there are some professors who have posted the same drivel here as did T about the structure of government, etc. Recall, for example, the recent post arguing that patents were privileges, not property; where Dennis had to delete posts about his alleged bias?


              In what case did the Court rule on this SPECIFIC issue. Whether congress has the power to revoke an improperly issued patent.


                T, Congress?

                That issue never came up at the Supreme Court precisely in that manner. However, Supreme Court decided many times, including in McCormick Harvesting, that only the courts have the power to revoke a patent.

                1. Prior post flagged for some reason. Wondering if exclamation points set the filter off.

                  “That issue never came up at the Supreme Court precisely in that manner”

                  That is the whole point. The framing of the issue makes a difference.

                  McCormick harvesting said reissues are unconstitutional. Congress made the case moot in 1952.


            T, is is not incidental. The Supreme Court has directly ruled on this point numbers of times.

    2. 4.2

      Back too soon as clearly your thinking remains fundamentally flawed.

      (Small ”for instance:” you attempted to break patents from copyright, but they come from the same constitutional clause and allocation of authority)

      Your ability to get things wrong on the most basic levels is incredible.

      1. 4.2.1

        So what if they are from the same clause? They are in different parts of the clause and have a different history as I stated above.


          You act as if I don’t know these basic things. I do. I just disagree with your view of what the law is.


            I heard a news story T about some teacher formally shredding the Constitution because it offended her class. I can assume that this occurs only if the teacher and the class do not understand the Constitution or if, as you say, they understand the Constitution but no not agree with it.

            Trust me, T, anon and I both believe that you do not understand the Constitution. But that is only our opinion.


            You disagree with basic black letter law and want to superimpose your “feelings” based philosophy of mere made-up law.

            You are so off base that there is no hope for you. You do not even “get” why you are so off base.

  3. 3

    Ҥ 170. The statutes, however, which authorize the assignment
    of an invention before the patent has been obtained, appear to embrace
    only the cases of perfected or completed inventions.”

    The assignment statutes have not materially changed since ’67.

    The issue may be one of Federal Law after all.

    1. 3.1

      Compare the statutes:

      “35 U.S.C. 152 Issue of patent to assignee.
      Patents may be granted to the assignee of the inventor of record in the Patent and Trademark Office, upon the application made and the specification sworn to by the inventor, except as otherwise provided in this title.
      (Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat. 1949.)”

      “SECTION 6. [See act of 1836, ch. 357, § 5.] And be it further enacte4,
      That any patent hereafter to be issued, may be made and issued to the
      assignee or assignees of the inventor or discoverer, the assignment thereof
      being first entered of record, and the application therefor being duly made.
      and the specification duly sworn to by the inventor….”

    1. 2.1

      P.S. 1873 is even before mergers of law and equity courts, much less the 1938 decision of the Supreme Court that Federal Courts should be looking to state laws for issues not made exclusively Federal, rather than generating a “federal common law.”

      1. 2.1.1

        Don’t tell Ned this. He loves to cite 100+ year old case law. I mean, how could that reasoning not apply to technology today?


          His point is simple – it’s a foundational question of liberty and the separation of powers. Either you get it, or you don’t.


            If you are referring to Ned’s view on the separation of powers, I am sure that you are aware that that view is not consistent – therefore, your “either or” is a miss.


                Pure B$ anony.

                Ned knows full well – it is his adoration of the Supreme Court and placing that Court ABOVE the constitution which has been explained that provides the inconsistency in his views on separation of powers.

                1. anony,

                  It appears that it your lack of understanding is a “you” issue.

                  You should be aware that the separation of powers doctrine applies to any combination of the three branches of the government.

                  a) The Executive usurping the power of the Legislative.
                  b) The Executive usurping the power of the Judicial.
                  c) The Legislative usurping the power of the Executive.
                  d) The Legislative usurping the power of the Judicial.
                  e) The Judicial usurping the power of the Executive.
                  f) The Judicial usurping the power of the Legislative.

                  Ned’s currently active case focuses on b), while his “look the other way because it aligns with his Windmill chase” on 101 focuses on f).

                  It is the same doctrine – but with opposing “views” because one aligns with what he “wants” and the other is diametrically opposed to what he “wants.”

                  Your binary nature comment then of “Either you get it, or you don’t.cannot work because in the one instance Ned appears to “get it,” while in the other, he “does not.”

                2. I would further point out that those who put this country together spoke explicitly about the dangers of the Judicial branch usurping too much power, even providing a source for you to inform yourself (See the Federalist Papers).


                I think anon realizes this but thinks that he just knows better than us due to his God given ability to understand patent law better than everybody else.

                1. It is clearly our job to figure out what he is saying. If we can’t we are just not as smart as he. Get it?

                2. A little more than (two) day(s) late, and much more than a dollar short.

                  Maybe you want to notice the additional information provided instead of “thinking yourself cute” and posting a rather meaningless “rebuttal.”

                3. The fact that your posts are unclear is something that I suspect almost everybody who comments on this blog agrees with.

                  Clarity is based on the perception of others.

                4. The perception of others is NOT the filter you want to make it out to be.

                  Especially when that “perception” is tainted with fantasy as is your views.

    2. 2.2

      Paul, I said this elsewhere but I say that again here that the initial ownership of an invention is a matter of federal law, not state law. Stanford v. Roche held that the initial ownership is in the inventor.

      State law can thereafter determine the assignability of these rights. But that is a horse of a different color, do you agree?

      In other words, what the Federal Circuit could hold here is that the initial ownership is in the inventor and state law governs whether and how the inventor’s rights may be assigned.

      1. 2.2.1

        In other words, what the Federal Circuit could hold here is that the initial ownership is in the inventor and state law governs whether and how the inventor’s rights may be assigned.

        Seems reasonable. I don’t think anyone cares if the employee inventor has “initial ownership” of his/her invention for some unmeasurably tiny length of time before that ownership is automatically transferred to the inventor’s employer by contract. At the same time, it also seems reasonable to have one set of Federal laws govern the “whether and how” rather than a patchwork of them, especially since the underlying facts in many instances (when was the invention conceived, etc) will be highly patent-specific.



          You say “seems reasonable” and then want to contradict that by changing the state law part of Ned’s statement to one of a federal control.

          If indeed you agree with Ned on the reasonableness, then why do you then contradict him?

      2. 2.2.2

        I think it is more accurate to say that Federal law governs what acts constitute a patentable invention, and who is an inventor of a patented invention. Federal law does not apply to an invention that is invented, maintained, assigned, or sued on as as trade secret rather than patented.
        As to assignments, they are partially Federal in that there is a patent statute on the assignment of patent applications and patents, albiet limited in effect – e.g. to be in writing and to be recorded in the PTO [with limited benefit].


          Federal law does not apply to an invention that is invented, maintained, assigned, or sued on as as trade secret rather than patented.

          Excellent point – and one that I made to Ned while discussing the AIA’s “Soliloquy” and the fixing of the mistake of conflating time of protection under trade secret and time of protection under patent.

          As to the Federal assignment statute, one should remember as well that availing oneself of use of that statute is optional.


            Anon, inventing one of the federal statutes for assignment is necessary in order for an assignee to take control of the application and the patent in his name 35 USC §152.

            As well, legal title, artist was a license for one who has legal title, is required for standing.


              The previous post should read completely scrambled my post somehow. I didn’t write it that way.

              anon, what I intended the say is that 152 and standing both require legal title.


          Actually Paul, I believe the federal statutes can be construed to require a legal assignment before one can record – just like federal law can demand legal assignment for standing.

          In other words if a corporation files a patent application naming inventor but does not obtain his signature and has only an equitable assignment, that is not a legal assignment under the statutes. Statutes require the inventor actually sign the patent application filed by the assignee. See post three above especially at 3.1.

          On the other hand, the combination of an equitable assignment plus the inventor signature in an application filed by the assignee might be sufficient to be a legal assignment.


            Actually Ned, I do believe that the AIA would indicate the opposite with its BOTH procedural and substantive penalty changes.



                Do you understand why Lemley was fighting so hard to change the ability to pursue patenting in the AIA?

      3. 2.2.3

        The following may have some relevence on the question, since “ownership” of inventions would only seem to apply when there is a patent (which comes under federal law):

        Thomas Jefferson to Isaac McPherson
        13 Aug. 1813 Writings 13:333-35

        It has been pretended by some, (and in England especially,) that inventors have a natural and exclusive right to their inventions, and not merely for their own lives, but inheritable to their heirs. But while it is a moot question whether the origin of any kind of property is derived from nature at all, it would be singular to admit a natural and even an hereditary right to inventors. It is agreed by those who have seriously considered the subject, that no individual has, of natural right, a separate property in an acre of land, for instance. By an universal law, indeed, whatever, whether fixed or movable, belongs to all men equally and in common, is the property for the moment of him who occupies it, but when he relinquishes the occupation, the property goes with it. Stable ownership is the gift of social law, and is given late in the progress of society. It would be curious then, if an idea, the fugitive fermentation of an individual brain, could, of natural right, be claimed in exclusive and stable property. If nature has made any one thing less susceptible than all others of exclusive property, it is the action of the thinking power called an idea, which an individual may exclusively possess as long as he keeps it to himself; but the moment it is divulged, it forces itself into the possession of every one, and the receiver cannot dispossess himself of it. Its peculiar character, too, is that no one possesses the less, because every other possesses the whole of it. He who receives an idea from me, receives instruction himself without lessening mine; as he who lights his taper at mine, receives light without darkening me. That ideas should freely spread from one to another over the globe, for the moral and mutual instruction of man, and improvement of his condition, seems to have been peculiarly and benevolently designed by nature, when she made them, like fire, expansible over all space, without lessening their density in any point, and like the air in which we breathe, move, and have our physical being, incapable of confinement or exclusive appropriation. Inventions then cannot, in nature, be a subject of property. Society may give an exclusive right to the profits arising from them, as an encouragement to men to pursue ideas which may produce utility, but this may or may not be done, according to the will and convenience of the society, without claim or complaint from anybody. Accordingly, it is a fact, as far as I am informed, that England was, until we copied her, the only country on earth which ever, by a general law, gave a legal right to the exclusive use of an idea. In some other countries it is sometimes done, in a great case, and by a special and personal act, but, generally speaking, other nations have thought that these monopolies produce more embarrassment than advantage to society; and it may be observed that the nations which refuse monopolies of invention, are as fruitful as England in new and useful devices.

        Considering the exclusive right to invention as given not of natural right, but for the benefit of society, I know well the difficulty of drawing a line between the things which are worth to the public the embarrassment of an exclusive patent, and those which are not. As a member of the patent board for several years, while the law authorized a board to grant or refuse patents, I saw with what slow progress a system of general rules could be matured.


          Far too many people put far too much emphasis on this letter, which was not ever written in the context of actual US law.

          We could dissect this and analyze it to see what Jefferson was talking about (a desire for a different law than what was actually on the books based on a philosophical point of view), if you want to – but I don’t think that you are quite open to what the take away of that discussion would be.


            The question under discussion is whether one can actually assign ownership in advance of any patent application, or indeed prior to the invention itself, and if so what is the legal theory that might justify such an assignment. If there is no existing property to which to assign ownership, what is one assigning? Regardless of TJ’s motivations for writing his letter, as a Secretary of State he did have prior experience in executing the US patent law of the time, and his opinion and reasons for arguing no ownership of inventions in the absence of some kind of patent system has some merit. When does ownership in an invention arise (at the time of conception, at the time of filing a property claim in the form of a patent application, at the time of patent grant) and how does that affect what exactly is being tranferred in an assignment? If there is no existing property to assign at the time of the agreement, does the various possible wording in an employment agreement “do assign” or “agree to assign” have any practical difference in outcome? I contend that regardless of the wording of the employment agreement, it only creates a future obligation to assign, not an actual assignment in advance, since there is nothing existing to assign (indeed no guarantee that there will ever be an invention or subsequent patent application from any particular employee, nor any obligation to invent).


              Mark, consider 35 USC §152 (see note 3.1 above) that allows a patent to issue to an assignee of record upon the application signed by the inventor. Thus regardless of state law to the contrary, the application itself must be assigned to the assignee by the inventor, and the inventor must sign the application (declaration).

              The question is whether this assignment of record can be some general assignment of inventions in the future without without any proof that the specific application is within the scope of that agreement. I think not. I think the patent office requires, and I agree that it should require, that the application itself, by number or title, be assigned by the inventor to the assignee. This is a legal assignment.

              Thus FilmTec cannot properly be decided because it seems to suggest that one can effectively assign a patent to another without complying with 35 USC § 152.



                You appear to be misconstruing that section of law.

                That section deals with the initial grant ONLY. That section is not the be-all and end-all of ability to assign.

                1. While anon, what we’re talking about is not so much the ownership of an invention but the ownership of a patent.

                  On grant, the owner of a patent is either the named inventor(s) or the assignee. The assignee only owns the patent if he has recorded an assignment from the inventors and the inventors have signed the application.

                2. Ned – the act of recording is optional.

                  Problematic perhaps if not taken, but optional nonetheless.



              Respectfully, you are becoming lost in the elements of the discussion here.

              What exactly is it that is being treated as property in any assignment of a pre-granted “thing”….?

              You are (or should be) aware that such things as “choices of action” can be treated as property and transacted, right?

              As to Jefferson and the letter – you seek to “bank” on the notion of authority – and do so improperly. The letter was not written with such authority in mind. The letter was a philosophical rumination – and that of a single man, outside of the confines of law at the time the letter was written. Just because our Supreme Court (in their own ever mashing of the wax nose of patent law) chose to place improper emphasis on the letter, does NOT make such emphasis magically “proper.” That fallacy is the mere “emperor’s clothes” fallacy.

              Your “wish” of “ I contend that regardless of the wording of the employment agreement, it only creates a future obligation to assign” is simply wrong. Such would make the differences available in choice of words meaningless. Such is elevating the misbegotten dissent in Stanford v Roche into controlling law.

              Your position of “all or nothing” also misses upon the notion of what an inchoate right is – as if that were nothing at all. Such is clear error.


                Re: “you seek to “bank” on the notion of authority”:

                The letter was cited for its content, not because of any authority or lack thereof. Have actually read the letter itself? Because an inventor can exclusively possess his conceived invention only as long as he keeps it to himself, only patenting can give truly give it the attribute of property.

                1. The content Mark is not law – but one man’s philosophy.

                  You attempting to cite for content – rather misses the point of that content.


          Mark, there is a difference between an invention and a patent. No one has a right to the invention of the inventor. All he has to do is keep it secret. The problem is, of course if he uses the invention to make products, others can soon figure out what he is doing and copy. That is why we have patents. But the invention is something created by the inventor and it is his and his alone to share with others or to abandon at his discretion.


            Correct. Which is why the attributes of property (including assignability of ownership) do not reside in the invention as such, but only in the patent rights that are applied for and granted based on such invention.


              Mark – you still miss (see above and the reality of how we treat “choices of action”)….

  4. 1

    The Curtis treatise has been shown to be rather incomplete in the modern understanding of several patent issues.

    It should be pointed out that it is NOT law, never was law, and cannot in any stretch of the imagination be deemed persuasive on current patent law.

    1. 1.1

      Anon, so long as you continue to believe that Curtis has nothing to say on patent law and should be ignored, you are deluding yourself.

      1. 1.1.1


        You claim not to “understand” then apparently purposefully misread what I clearly wrote.

        Let me add a little further emphasis:

        The Curtis treatise has been shown to be rather incomplete in the modern understanding of several patent issues.

        Did I say that Curtis has NOTHING to say?

        No – clearly not.


          But anon, if you say that Curtis is incomplete on a number of issues, but do not say which the issues, the reader must assume that the reason you raise this point is that Curtis is not to be regarded as reliable on this issue.



            You are doing that over-reading and under-understanding thing again.

            Look at your post at 1.1. You have made a statement of “absoluteness” which is wrong on its face.

            Compare then your post at You have now “moved the goalpost” to remark upon a single issue.

            And yes – on this very single issue, my comment applies.
            Likewise, as I stated there are OTHER single issues for which the treatise of Curtis has been shown to be deficient in regards to modern patent law.

            One simply cannot be lazy and pick from Curtis any old thing that may be in Curtis and ASSUME that that thing is applicable, much less persuasive, and even far less authoritative.

            That’s not critical legal thinking – that is shoddy legal thinking.


              Anon, Curtis was talking about the statute that is almost word for word identical with the modern 35 USC § 152. His discussion of that statute and the relevant case law appurtenant thereto at the time is relevant to interpretation of the modern statute because they are the same.

              See post 3.1 above for comparison the words of the two statutes.

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