# Marsh v. Nichols Shepherd Company/Opinion of the Court

* Court Documents
* Case Syllabus
* Opinion of the Court
United States Supreme Court
128 U.S. 605
Marsh v. Nichols Shepherd Company
In support of their appeal, the appellants now contend, in substance, as follows: (1) That the defendant could not impeach the 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; (2) that the patent being regular on its face, evidence to show that the signature was irregularly placed to it was incompetent; (3) 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 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; (4) 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, 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 in evidence. Smelting Co. v. Kemp, 104 U.S. 636, 641; Steel v. Smelting Co., 106 U.S. 447, 452, 453, 1 Sup. Ct. Rep. 389; Mahn v. Harwood, 112 U.S. 354, 358, 5 Sup. Ct. Rep. 174. 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 Co., 101 U.S. 693, 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, 529. But the patent for an invention conveys nothing which the government owns or its predecessors ever owned. The invention is the product of the inventor's brain, and if made known would be subject to the use of any one, 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, 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 any one 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 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 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 canceled 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 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. Rev. St. § 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, 1880, more than 13 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. St. § 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, 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; and it is so ordered.

## Notes

This work is in the public domain in the United States because it is a work of the United States federal government (see 17 U.S.C. 105).
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