The deed from the plaintiff to the defendant was, as stated by the court, sufficient to convey to him any right the plaintiff might have in the patent according to its terms. It was also correctly said by the judge, that by the law as it was at the date of the deed, the patent would be void if 'the specifications contained any improvement which was previously known and used, though it contained others of his own invention that were new. (2 Kent’s Com. 370 ; Burnton v. Hawks, 4 Barn. & Ald. 541, per Abbott, C. J. ; 3 Wheaton, Appendix, note 2, p. 22; Head v. Stephens, 19 Wend. 411; Moody v. Fiske, 2 Mason’s Rep. 118.)
It appears to have been assumed on the trial that the speci fication annexed to the patent claimed something as the plaintiff’s invention which had been before known and used. The judge seems to have charged upon that supposition, and the assumption was not objected to by the defendant’s counsel. The court correctly decided that the filing the disclaimer was not a condition precedent to obtaining the benefits of the act of 1837. The party loses that by an unreasonable delay in filing the disclaimer.' (Laws of U. S. 24th Cong. 2d Sess. p. 83, § 9, last proviso.) The question as to unreasonable delay, was not however raised, but it was urged that the filing a disclaimer was a condition precedent. So also in advising the jury that if the plaintiff’s specifications embraced too much, he was not bound to prove affirmatively that it was so by acci dent or mistake, and not from an intention to deceive or defraud the public. The law presumes no one to have acted illegally or fraudulently. (1 Phil. Ev. 195.) Besides, the party charging the wrong, having the affirmative, is on that account bound to prove it, even though it were a negative proposition. (Id. pp. 194, 195.)
But the learned judge further charged, that the act of congress referred to applied to the patent in this case; and also that the passage of that law, prior to the expiration of the eighteen months within which the defendant had the right to return the deed, together with the failure to return it within the time stipulated, afforded a sufficient consideration for the agree*319ment, “if the patent included any useful and new invention or discovery which was truly and bona fide the patentee’s.” To this the defendant’s counsel objects that the act was passed after the contract in question was made, and he argues that it would have no retrospective operation on the rights and interests of these parties in respect to an agreement previously made; that it could only affect the validity of the patent with respect to subsequent rights and contracts, and that the jury should therefore have been instructed that the agreement was without consideration and void if the specification contained any thing of which the plaintiff was not the inventor, and that the act was inapplicable to the case; and moreover, at all events that if part of the thing patented were in previous use, there was a fraud on the defendant which should prevent a recovery, as he had been induced to pay the price for the whole alleged improvement patented, when the plaintiff really owned but part of it. It will be unnecessary to decide what would have been the effect of the act of 1837 on the rights and obligations of these parties, if there had been, previous to the time of its passage, an absolute sale of the right in question to the defendant. For at that date, the agreement between them was still ambulatory, the defendant then, and for nearly a year after, having the right of electing whether he would return the deed and thereby put an end to the inchoate agreement, or retain it, and thereby become the absolute purchaser of the interest in the patent. If we look at the agreement on which the action is brought, it wiV appear that though a deed had been given, it was intended to operate only as an authority to the defendant to act as the agent of both parties for eighteen months, in disposing of the right in Schoharie county. The words of the agreement are: “Rec’dof Gideon Hotchkiss, a deed of his vertical re-acting waterwheel, for the county of Schoharie, in the state of New-York, as a power by which 1 can sell said county.” The defendant, then, first became really the purchaser of the interest in the plaintiff’s patent, at the expiration of the eighteen months by his election, not to return the deed. Before that period arrived, the plaintiff had become entitled to the benefit of the remedia. *320provision of the act referred to ; .and this cause should be determined on the -same principles as if the agreement had -been .definitively made at the end of the eighteen-months. Nor does the detriment which the defendant may, suffer - on - account of the failure of part of the thing.patented, present any objection to the foregoing-conclusions. That circumstance-may affect.the amount to be-recovered, but.not the-right of recovery.
So far then - as we have thus reviewed this branch of the charge, the judge was- correct. But-in his-final instruction that the passage of the law-of 1837 afforded a sufficient consideration -for the agreement, “if the patent included .any-useful and new invention or.discovery which -was truly and -bona-fide the patentee’s,” he fell into the mistake of omitting a material qualification-of the position. -The provision .which- saves- to the patentee, such, parts of the invention as are-his. own, is-subject-to the -.express - condition that the part thus saved “be a material and substantial - part of the thing patented, and be definitively distinguishable from-the other,parts claimed without right.” This proviso -may have been rendered entirely nugatory-by the charge- If the jury followed the instruction they may have found for the plaintiff, though his discovery was, not either “ material.or substantial,” but only useful;. and so too, though, instead of being “ definitely distinguishable from those parts mot his own,” it.was so mixed with them ms to confound all,practical distinction. For this error the-verdict. must be-set" aside.
New. trial grant ed.