#### William Bernard, Plaintiff, *v.*Otto H. Huebel, Defendant.

(Supreme Court, New York Special Term,

January, 1901.)

Unpatented invention — Trespass, upon rights thereunder, maintainable — Jurisdiction.

A complaint which alleges that the defendant, by being confidentially employed to construct a model of an invention of the plaintiff, obtained knowledge of it, that he then asserted himself to be the inventor, that he delayed the issue of a patent to the plaintiff until the end of a lengthy contest, and that in the meantime he derived profits from making and selling it, states a cause of action for trespass upon the plaintiff’s rights in the invention as unpatented, and the action itself may be brought in a State court.

Demurrer to complaint for insufficiency and for lack of jurisdiction of the subject.

*612George Q. Collins, for plaintiff.

Seabury G. Mastiek, for defendant.

Bischoff, J.

The allegations disclose the defendant’s fraudulent attempt to obtain the benefit of the plaintiff’s invention through the use of information given him by the plaintiff, touching that invention, when employing him to construct a model, and it is made to appear that, with the knowledge thus obtained in confidence, and under a pledge of secrecy, the defendant asserted himself to be the- inventor, delayed the issuance of a patent to the plaintiff until 'after the termination of a lengthy contest, and enjoyed the profits derived from making and selling the article in the meantime.

Upon this demurrer, the court is not concerned with the question of the particular elements of damage which might be included in a verdict, for if there was legal injury through the invasion of a property right of the plaintiff, the complaint is sufficient irrespective of the *quantum*of damages, and that some property right was invaded is, I think, clear.

An inventor’s interest in his invention, prior to the issuance of letters patent, is of value, in legal contemplation, sufficient to afford consideration for a contract to' pay him the reasonable value of its use by another, although, in the absence of .the agreement, the inventor would he in no position to demand compensation for the same use, unless he were the holder of a patent giving him the exclusive legal right. Nilsson v. De Haven, 47 App. Div. 537.

In other words, the inventor, if content with an agreement for the use of his invention, may benefit by it without obtaining the patent, but otherwise his rights against the public generally, if to be enjoyed, must be founded upon the patent.

In the case at bar no agreement Was made between the parties for the use of the invention, but fraud intervened and by that fraud the plaintiff was prevented from obtaining, the patent to which he was entitled and by which alone could, he protect his right in the invention, in the absence of an agreement by the defendant to pay him for its use.

To say that in such a case the inventor’s property right was not invaded to the same extent 'as though the defendant had failed to carry out an agreement to pay the reasonable value therefor, pend*613ing the issuance of the patent, would he to disregard the broad rule that no party may he permitted to take advantage of hia own wrong.

For the purposes of my decision, I am not concerned with the question whether certain of the allegations wonld suffice for an action for malicious prosecution, and my conclusion being that a cause of action for trespass is disclosed by the violation of the plaintiff’s rights in the invention as unpatented, the point that the court has no jurisdiction is without force, the exclusive jurisdiction of the Federal courts over patent rights not being brought in question.

Demurrer overruled, with costs; leave to defendant to plead over within twenty days upon payment of costs.