Overruling the First Patent Case

The Patent Act permits a patent to be divided up regionally within the United States.

The applicant, patentee, or his assigns [may] grant and convey an exclusive right under his application for patent, or patents, to the whole or any specified part of the United States.

35 U.S.C. 261.  The allowance for geographic division was added as part of the Patent Act of 1836 and overruled the very first Supreme Court patent law decision, Tyler v. Tuel, 10 U.S. 324 (1810).  In Tyler, the Supreme Court found that a patent assignment excepting a few specific counties was not a “true assignment” and therefore the purported assignees had no right to sue on the case.  The court suggested that exceptions might be found in equity.

If you are curious, the assignment excluded the counties of “Chittenden, Addison, Rutland and Windham, in the state of Vermont.”


27 thoughts on “Overruling the First Patent Case

  1. 4

    the title of this post should be “ABROGATING” the first supreme court patent case – not “OVERRULING”

    1. 4.1

      Fair point. It is common enough in colloquial parlance to speak of §271(f) as “overruling” Deepsouth (see, e.g., URL below). You are correct, however, that properly speaking the judgment in Deepsouth really was final for those parties (§271(f) had no effect on them), so this is more properly “abrogation” rather than “overruling.”

      link to yahoo.com

  2. 3

    Perhaps more importantly (and certainly more subtle), should be the (ready) recognition that the Supreme Court is NOT “Supreme,” and that over-riding the Supreme Court can (and does) happen.

    (this is a hint to the many ethically-absent attorneys out there who do not recognize their state oath of office that places ALL THREE branches under the duty to the Constitution)

    1. 3.1

      The Supreme Court is the final arbiter of the current state of the law. Of course, the law is subject to change, which can abrogate a Supreme Court decision. Do you think this is profound? You seem to have trouble with the concept that the Supreme Court is correct by definition with respect to interpretation of the law until either the law changes or the Supreme Court changes its interpretation.

      1. 3.1.1

        I draw a distinction (as should you) between interpretation and legislating from the bench.

        Or do you have trouble with that concept?


          The concept of legislating from the bench is easy to understand, but in practice it is phrase used by whiners to express unhappiness with Supreme Court decisions.


            Yeah, I am going to call B$ on that — and note that true ‘mere interpretation’ is in fact distinguishable from other aspects of Common Law law writing (as IS permitted in other areas of law such as torts — or law not Expressly delegated to the Legislative Branch (in the Constitution).

            Did you happen to forget that legal lesson or was that something that you somehow managed never to learn?


              Someone has to be the final arbiter and it isn’t you. No amount of gnashing of teeth will change that. The lesson to be learned here is that your personal interpretation of the US Constitution has zero value. If the past is any indicator, this is something that you will never learn.


                As usual you are too full (or f001) of yourself.

                Someone has to be the final arbiter and it isn’t you. No amount of gnashing of teeth will change that.

                Great- and nice strawman, as I never said that I have to be any type of final arbiter.

                But as to law (and this is a basic thing that YOU should have learned in grade school) the “final arbiter” is NOT any single one branch of the government. The concept is called checks and balances, and EACH branch is checked and balanced by the others — NO branch is above the Constitution itself. IF you are an attorney, and it seems more and more UNLIKELY so, then you should dust off the oath you swore upon becoming a member of the State bar.

                Tell me what it says.

                As to “The lesson to be learned here is that your personal interpretation of the US Constitution has zero value. If the past is any indicator, this is something that you will never learn.” You are quite incorrect in a number of ways. First, the fact that you attempt to set out what the lesson is to be is preposterous. You have a long history of simply jumping to the wrong take on legal issues. Second, what I have provided is NOT “my personal interpretation,” and thus – and as such – it clearly had ALL the legal value in the world. You may not like that I have plainly presented ‘what is,’ but that does not change anything. As to the past being an indicator, you err doubly in thinking that I am wrong (you cannot present one example of such), and you err as to thinking that I cannot learn. Here, you are simply in error and it would be error for me to “learn” the





                that you are spooning out.

                1. And the admissions keep rolling in.

                  (1) paid to post.

                  (2) identifies as male.

                  Where did you learn the

                2. Ah, my pal Shifty shows up — and immolates himself immediately with these so called “admissions”

                  As to “paid to post,” we’ve covered this. It is less that I am paid to post and more that I have struck an enterprising deal on YOUR choices of posts. For different posts of YOUR doing, I merely collect from the varying levels of inanities.

                  As of the “male,” excuse me, but why in the world would you think this to be any type of great revelation? Are you indulging in some type of ISM?

                3. Comment in moderation. Apparently the ad hoc comedy committee is meeting to determine if my response to your nonsense is compliant with contemporary comic standards.

                  Why are you in a protected class, Snowflake?

                4. The editing certainly has gone odd again, but your choice has again earned my some coin.

                  The strawman assertion of “protected class” is a complete miss.


                If the past is any indicator, this is something that you will never learn.

                And yet, here you are trying to reason with a stone wall. Evidently, there is more than one person around here who has failed to learn the relevant lesson.


          No rational attorney these days could validly dispute the right of Congress to pass new legislation overruling Sup. Ct. interpretations of prior federal legislation or case law, providing the new legislation is Constitutional, which only the Sup. Ct gets to decide, and gets to ultimately interpret, only if properly challenged, and only if it wants to. [The mere personal opinions of individuals labeling it as “legislating from the bench” is of course, legally irrelevant, no matter how widely agreed with.]

    2. 3.2

      The supreme court cannot be “overriden.” Congress can’t change a final supreme court decision. They can only change the law prospectively.

  3. 2

    I think that—even in view of the statutory amendment—the Tyler holding is correct that the soi-disant “assignment” is no true assignment, but is rather a territorially limited license. Likewise, even with the statutory amendment, the “assignee” (or licensee, more properly) could not sue without the participation of the holder of the unconveyed rights. Such a suit would open the patent to invalidation, which would necessarily touch on the interests of the holder of those unconveyed rights.

      1. 2.1.2

        Also, interferences, reexaminations, IPRs and other post-grant proceedings are in rem proceedings against patent claims irrespective of ownership of the patent being [rarely ever] carved up territorially.

    1. 2.2

      The plaintiffs in Tyler were assignees of “all the right, title, and privilege in, unto, and over the said improvement in the said patent . . . in any part of the United States excepting in the Counties of Chittenden, Addison, Rutland, and Windham, in the State of Vermont.” That sure sounds like a true geographic-area-assignment to me. This wasn’t a situation where someone obtains an “assignment” of the patent in a small geographic area that just so happens to encompass the manufacturing facilities of his competitor.

      Also, regarding whether the geographic-area-assignor has to be joined in a suit, Waterman v. Mackenzie, 138 U.S. 232, 255, says the assignee for a specified area of the United States has the right to sue infringers “in the name of the assignee alone.”

      1. 2.2.1

        Two points:

        (1) Thanks for that. The correct citation, however, is 138 U.S. 252.

        (2) I guess that I am puzzled by that. If the assignee of the territorial assignment asserts for infringement with the territory, one possibility is that the defendant can defend on grounds of invalidity. If the defendant wins on that defense, the the patent is invalid everywhere, not just in the territory. With that in mind, how can the suit proceed without the owner of the interests in the territories that were not assigned?

  4. 1

    Note the recent mandamus involving an attempt to maintain venue in Waco Texas by such a regionally-split assignment?

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