## Facts

- North Branch Products, Inc., a Michigan manufacturer of drill bushings and related items, employed W. Reuen Fisher, a Canadian resident, as a key corporate officer and general manager overseeing research, engineering, manufacturing, and sales.
- North Branch alleged Fisher used corporate machinery, facilities, materials, employees, and funds to develop improved drill-bushing products with greater commercial value.
- North Branch alleged it paid the expenses of obtaining multiple U.S. patents and filing related applications, but Fisher procured the patents and applications in his own name without informing other corporate decisionmakers.
- The patents involved included U.S. Patent Nos. 2,766,084; 2,744,424; 2,737,425; 2,766,083; and 2,543,840.
- North Branch sought a declaration that it, not Fisher, owned the patents and applications and that Fisher held any legal title for the corporation’s benefit.
- North Branch filed in the U.S. District Court for the District of Columbia under 35 U.S.C. § 293, serving Fisher by publication as a nonresident patentee who had not designated a domestic agent.
- Fisher moved to quash service and dismiss for lack of personal and subject-matter jurisdiction; after those objections were rejected, he answered and asserted a counterclaim for infringement and royalties.
- The district court later dismissed the action on forum non conveniens grounds; North Branch appealed.

## Issues

1. Whether 35 U.S.C. § 293 permits suit in the District of Columbia to determine ownership of U.S. patents and applications against a nonresident patentee who has not designated a domestic agent, and whether service by publication is valid.
2. Whether a defendant who answers on the merits and files a permissive counterclaim for affirmative relief submits to the court’s jurisdiction, barring dismissal on forum non conveniens grounds.
3. Whether patents developed by a corporate officer/employee within the scope of duties and with corporate resources may be treated in equity as belonging to the corporation, supporting remedies such as assignment or constructive trust.

## Decision

- The district court held § 293 applied to this type of patent-rights dispute and upheld service by publication, denying Fisher’s motion to quash and dismiss.
- The district court later dismissed the case on forum non conveniens grounds.
- The D.C. Circuit held the district court had subject-matter jurisdiction under § 293.
- The D.C. Circuit held Fisher’s permissive counterclaim for infringement and royalties constituted submission to jurisdiction.
- The D.C. Circuit reversed the forum non conveniens dismissal and remanded for further proceedings.

## Legal Principles

- A suit determining title to patents and patent applications is a “proceeding affecting the patent or rights thereunder” within 35 U.S.C. § 293, permitting jurisdiction in the District of Columbia over a nonresident patentee who has not designated a domestic agent.
- Where § 293 applies, service by publication may be used to bring the nonresident patentee before the court.
- A defendant who seeks affirmative relief through a permissive counterclaim may waive or forfeit objections inconsistent with the court’s authority to adjudicate the opposing party’s related claims, and may not obtain dismissal on forum non conveniens after invoking the forum for personal benefit.
- An officer/employee who develops inventions using corporate resources and in the course of corporate duties may be required in equity to treat resulting patent rights as held for the corporation, including through assignment and accounting-type relief.

## Conclusion

The case recognized broad D.D.C. jurisdiction and publication service under 35 U.S.C. § 293 for disputes over patent ownership against a nonresident patentee, and held that filing a permissive counterclaim for affirmative relief constitutes submission to jurisdiction, making a later forum non conveniens dismissal improper while the ownership dispute proceeds on remand.


North Branch Prods., Inc. v. Fisher, 131 U.S.P.Q. 135 (1961)