## Facts

- Daniel Fitzgerald obtained a patent (1843) for an improvement in fire-proof chests or safes using an interspace filled with nonconducting material, including plaster of Paris compositions.
- Before the patent issued, Fitzgerald executed and recorded (1839) an assignment to Enos Wilder purporting to convey Fitzgerald’s existing inchoate rights and the legal title he would later obtain.
- Enos Wilder later transferred his interest to Benjamin G. Wilder.
- Benjamin G. Wilder sued Charles J. Gayler and Leonard Brown in federal circuit court for infringing the patented safe.
- Defendants contended (1) the pre-issuance assignment did not transfer legal title, so Wilder lacked standing to sue in his own name, and (2) the patent was invalid because James Conner had earlier made and privately used a similar fire-proof safe (c. 1829–1832), which was not publicly disclosed and was later forgotten or abandoned.
- The circuit court entered judgment for Wilder; defendants sought review by writ of error.

## Issues

1. Whether an assignment executed and recorded before patent issuance, purporting to transfer both an inventor’s inchoate right and the future legal title, vests title sufficient for the assignee (or successor) to sue in his own name.
2. Whether an earlier invention that was privately used, not made public, and later forgotten or abandoned renders the later patentee not the “original and first inventor,” invalidating the patent.
3. Under the Patent Act of 1836 § 14, when a grant of exclusive territorial rights is an assignment allowing the grantee to sue in its own name, as opposed to a license requiring suit in the patentee’s name.

## Decision

- The Supreme Court affirmed the judgment for Wilder.
- The Court held the recorded pre-issuance assignment was effective to transfer the patent rights when the patent later issued, permitting the assignee’s successor to sue notwithstanding issuance in the inventor’s name.
- The Court held Conner’s prior, private, nonpublic use that was later forgotten or abandoned did not defeat Fitzgerald’s status as “original and first inventor” for patent purposes.
- The Court explained that only a transfer of the entire and unqualified monopoly for a defined territory constitutes an assignment under the statute; arrangements reserving significant rights to the patentee are licenses and do not confer a right to sue independently.

## Legal Principles

- A written assignment made and recorded before patent issuance can validly convey the inventor’s inchoate rights and the future legal title, vesting enforceable rights in the assignee upon issuance.
- A prior invention or use that remains nonpublic, is employed only for private purposes without bringing the invention into public knowledge, and is later abandoned or forgotten does not invalidate a later patent on “original and first inventor” grounds.
- Under the Patent Act of 1836 § 14, a territorial transfer is an assignment (with a right to sue in the grantee’s name) only if it conveys the entire and unqualified exclusive right for that territory; otherwise the transfer is a license and infringement suits must be brought in the patentee’s name.

## Conclusion

The Court upheld the patent and the plaintiff’s standing, ruling that a recorded pre-issuance assignment can vest enforceable title upon issuance and that an earlier, secret, abandoned use does not defeat a later patent; it also clarified that only a transfer of the full territorial monopoly qualifies as an assignment that permits the transferee to sue independently.


Gayler v. Wilder, 51 U.S. (10 How.) 477 (1850)