delivered the opinion of the court.
The questions in this case come' before us on a certificate of division of opinion from the Circuit Court of the United States for the Northern District of-New York, involving the construction of various provisions of the act of Congress to promote the progress of useful arts, commonly called the patent act. Wé shall'examine the questions in the order in which they appear on the record-. The first is as follows : —
1. Whether the eighteenth section of the act of 1836 authorized the extension of-.a patent on the application of the executor or ad-, ministrator of a deceased, patentee.
The eighteenth section'provides, in substance, that whenever any patentee of an invention or discovery shall desire an extension of his pátent'beyond the term of its limitsftion,;he may make application therefor, in1 writing, to the Commissioner of the Patent-office, setting forth the grounds thereof. That the Secretary of State, the Commissioner of the Patent-office, and the Solicitor of the Treasury shall constitute d board to hear and decide upon the application; the patentee shall furnish to the board a "statement in writing, under oath, of the value and usefulness of the invention, and of his receipts and expenditures, sufficiently in detail to exhibit a true and faithful account of loss and profit'in any manner, accruing to him from and by reason of the invention ; and if, upon a hear.ing of the matter, it shall appear to the satisfaction of the board, having a due regard to the public interest, that it is just and proper the term of the patent should be extended, by reason of the patentee,. without neglect or fault on his part, having failed to obtain, from the use and sale of his invention, a reasonable remuneration for the time, ingenuity, and expense bestowed upon the same, and the introduction thereof into use, it shall be the duty of the commissioner to renew and extend the patent, by making a certificate thereon of such extension for 'the term of seven years from and after the <=vpiration of the first term, &c.
This is the substance of the section, so far as is material to the consideration of the question ; and-it will be seen, that, according to the words of the provision, the application is to be made by, and the new term to be granted to, the patentee himself, and hence the objection on account of its having been granted to the administrator.
The main argument relied on to support the objection is, that the patentee had no interest or right of property in the extended term at *674the time of his death.- That all he. had was a'mere possibility, too remote and contingent to be. regarded as property, or any right of property, in the sense of the law, and therefore not assets or rights in the hands of the administrator which would authorize an application within the meaning of the statute.
At common law, the better opinion, probably, is, that the right of property of the inventer to his invention or discovery passed from him as soon as it went into public use with his consent; it was then regarded as having been dedicated .to the public, as common property, and subject to. the common úse and enjoyment of all.
The act of Congress for the encouragement of inventers, and to promote the progress of the useful, arts, and for the purpose of remedying the .imperfect protection, , or rather want , of protection, of this species of property, has secured to him, for a limited term,, the full and exclusive enjoyment of his discovery.
The law has thus-impressed upon it all the qualities and characteristics of property, for the specified period ; and has enabled him to hold and deal with it the same as in case of any other description of property belonging to him, and on his death it passes, with the rest of his personal estate, to his egal representatives, and becomes part of the assets.
Congress have not only secured to the inventer this absolute and indefeasible interest and property in thé subject of the invention for the fourteen years, but have also agreed, that upon certain conditions ocpurring and to be shown, before the expiration of this period, to the satisfaction of a board of commissioners, an indifferent tribunal designated for the purpose, this right of property in the invention shall be continued for the further term of seven years. Subject to this condition, the right of property in the second term is as perfect, to' the extent of the intent, as the right of property in the £n;st.
The circumstances upon which the condition rests, and the occurrence of which gives effect and operation to the further grant of the government, are by no means uncommon, or difficult to be shown. They have often happened to inventers in the course of their dealings with this species of property. The act. of Congress contemplates their occurrence again, and has therefore provided further security and protection, by enlarging the interest and right of property in the subject of their invention.
The provision is founded upon the policy of the government to encourage genius, and promote the progress,of the useful arts, by holding out an additional inducement to the enjoyment of the right secured under the first term ; and as an act of justice to' the itiventers for the time, ingenuity, and expense bestowed in bringing out the discovery, frequently of incalculable value to the business interests of the country. And it is apparent, therefore, unless the executor or administrator is permitted to take the place of the *675patentee in case of his death, and make application for the grant of the second term, which continues the exclusive enjoyment of, the right of property in the invention, the object of the statute will be defeated, and a valuable right of property, intended to be secured, lost to his estate.
The statute is not founded upon the idea of conferring a mere personal reward and gratuity upon the individual,’as a mark of distinction for a great public service, which would terminate with his death ; but of awarding to him an enlarged interest and right of property in the invention itself, with a view to secure tojiim, with greater certainty, a fair and reasonable remuneration. And to the extent of this further right of property, thus secured, whatever that maybe, it is of the same description and character as that held and enjoyed under the patent for the first term. In its nature, therefore, it continues, and is to be dealt with, after the decease of the patentee, the same as an interest under the first, and passes, with other rights of property belonging to him, to the personal representatives, as part of the effects of the estate.
It would seem, therefore, from the nature of this interest in an extended term itself, as well as from a consideration of the object and purpose of the statute, plainly expressed upon its face, in providing for the prolonged enjoyment and protection of this species of properly, that the Board of Commissioners were well warranted in making the renewed grant to the administrator, upon -his complying with the conditions.
An argument has been urged against tins conclusion, grounded upon the tenth and thirteenth sections of the patent law. The former provides in express terms for the issuing of a patent to the executor or administrator, in case of the death of the inventer before it is taken out; and the latter, for. a surrender of a patent defective by reason of an insufficient description, and the reissuing of a new one. These are supposed to be analogous cases, and manifest the sense of Congress, that, without the express provisions of law, the patent in the one case, and the surrender in the other, could not be issued to, or be made by, the legal representative. The argument is no doubt a proper one, and entitled to consideration ;' but is not necessarily conclusive.
As it respects the provision for a surrender by the executor or administrator, which is most analogous to the question in hand, we think there could be no great doubt that the rght would exist in the absence of any such express authority, regar*, being had to the nature of the property, and the rights and duties of the legal representative, within the spirit and object of the patent law. It would be the surrender of a patent, the legal interest and property in which had become vested in him as part of the assets, which he was bound to take care of, and protect against waste ; a step noeessary to perfect the title and give value to the property *676would seem to be not only directly within the line of his duty, but in furtherance of the chief object of the law, namely, to secure remuneration to the meritorious inventer.
It has also been argued, that the executor or administrator could not comply with the term^ and conditions of the eighteenth section, upon which the right of property in the extended term is made to depend. In other words, that he would be unable to furnish to the Board of Commissioners a Statement under oath of the usefulness of the invention, and of the receipts and expenditures of. the patentee, exhibiting a true and faithful account of the loss and profit in any manner accruing from, añd by reason of, the invention. This argument assumes as a matter'of fact that which may well be denied. Suppose the dealings of the patentee in the subject of, his discovery have been carried on through the instrumentality of agents or clerks, or,, if not, that the patentee himself, as business men usually do, has kept an accurate account of his receipts and expenditures, all difficulty at once disappears. The account-books of a deceased party, in many of the States of the Union, identified and the handwriting proved, are received as- legal evidence of the demand in the courts of justice, and afford full authority, upon legal principles, for the admission of the books before the board, in. support of the application. We perceive no great difficulty in. a substantial compliance with the terms of .the section, on the part of the executor or administrator.
The second question is, Whether, by force and operation of the eighteenth section already referred to, the extension granted to W. W. Woodworth, as administrator, on'the 16th day of November, 1842, inured to the benefit of assignees under the original patent granted to William Woodworth, on the 27th day of December, 1828, or whether said extensipn inured to the benefit of the administrator only,.in his said capacity.
The most of- this section has already been recited in the consideration of the first question, and:it will be unnecessary to repeat it. It provides for the application of the patentee to the commission for an extension of the patent for seven years ; constitutes a board to hear and decide upon the application ; and if his receipts and expenditures, showing the. loss and profits accruing to him from and on account of his invention, shall establish, to the. satisfaction of the board, that the patent should be extended by reason of the patentee, without any-fault on his part, having failed to obtain from the use and sale of his invention & reasonable remuneration for his time, ingenuity, and expense bestowed upon the' same, and the introduction of it into use, jt'sháll be the duty of the commissioners to extend thé same by making a certificate thereon of such “extension for the term of seven years from, and after the first term ; “ and thereupón thé said parent shall have the same effect in law ds though it had been originally granted for the term of twenty-one *677years.” And then comes the clause in question : — “ And the benefit of such renewal shall extend to assignees and grantees of the right to use the thing patented, to the extent of their respective interests therein.”'
The answer to the second question certified depends upon the true construction of the above clause respecting the rights of assignees and grantees.
Various and conflicting interpretations have been given to it by the learned counsel, on the argument, leading to different and opposite results, which it will be necessary to examine.
On one side, it has been strongly argued, that the legal operation and effect of the clause save and protect all the. rights and interests of assignees and grantees in the patent , existing at the time of the extension; and thus secure and continue the exclusive use and enjoyment of these rights and interests for the seven years, to the same extent, and in as ample a manner, as held add enjoyed under the first term. That if A. holds an assignment of a moiety of the patent, he will hold the same for the new- term of seven years ; if of the whole patent, then the whole interest for that period. And that as soon as the new grant is made to the patentee,'the interest therein passes, by operation of this clause, to the assignees of the old term, in proportion to their respective shares.
On the other side, it has been argued, with equal earnestness, that, 'according to the true construction and legal effect of the clause, protection is given, and intended to be given, only to the rights and interests of assignees and grantees acquired and held by assignments and grants from the patentee in and under the second or new term ; and that it does not refer to, or embrace, or in any way affect the fights and interests of assignees or grantees holding under the old. „ In connection with this view, it is said that the fights thus protected in the new term may be acquired by means of the legal operation of the clause, either from a direct assignment or grant after the extension of the patent, or by an appropriate provision for that purpose, looking to an extension, contained in the assignment or grant un the old.
It is not to be denied, but that, upon any view that has been taken or that may be taken of the clause, its true meaning and legal effect cannot be asserted with entire confidence ; and, after all, must depend upon such construction as the court can best give, to doubtful phraseology and obscure legislation, having a due regard to the great object and intent of Congress, as collected from the context and general provisions and policy of the patent law.
The rule is familiar and well settled, that, in "case of obscure and doubtful words or phraseology, the intention of the law-makers is to be resorted to, if discoverable fiom the context, in order to. fix and control their meaning só as to reconcile it, if possible, with the general policy of the law.
*678Now, die serious difficulty in the way, and which renders the first interpretation inadmissible, except upon the most explicit and positive words, is, that it subverts. at once the whole object and purpose of the enactment, as is plainly written in every line of the previous part of the section. It gives to the assignees and grantees of the patent, as far as assigned under the old term, the exclusive right and enjoyment of th¿: invéntiOn — the monopoly — in. the extended term for the sevén years ; when, by the same provision, it clearly appears that it was intended tó be secured to die patentee as an additionál remuneration for his time, ingenuity, and expense in bringing out the discovery, and in introducing it into public use. It gives this remuneration to parties that have no peculiar claims upon the government or. the public, and takes it from those who confessedly have.
The whole structure of the eighteenth section turns upon the idea of affording this additional protection end compensation to the patentee,'and to the. patentee alone, and hence the reason for instituting the inquiry before the grant of the extension, to ascertain whether or not he has failed to realize a reasonable remuneration from the sale and use of the discovery, —■ the production of ah accotttit of profit and loss to enable the board to determine the question ; and as it comes to the one or the other conclusion, to grant the extended term or not.
It' is obvious, therefore, that Congress, hád not at all in view protection to assignees. That their condition on account of dealing in the subject of the invention, whether successful or otherwise, was not in ihe mind of that body, nof can any good reason be given why it should have been.
They had purchased portions of the interest in the invention, and dealt with the patent rights as a matter of business and speculation ; and stood in no different relation to the government or the public, than other citizens engaged in the common affairs of life. .
Nothing short of the most fixed and positive ternis of a statute could justify an interpretation so repugnant to the whole scope and policy of it, and to wise and judicious legislation.
We think this construction not necessarily required by the language of the clause, and is altogether'inadmissible.
Then ,as to the second interpretation, namely, that the clause refers to, and includes, assignees and grantees of interests acquired in the new term, either by an assignment or grant from the patentee after the extension, or by virtue of a proper clause for that purpose,in the assignment under the old term.
The difficulty attending this construction lies in the uselessness of the clause upon the hypothesise, — the failure to discover any subject-matter upon which to give reasonable operation and effect to it, — and hence, to adopt the construction is to make the clause *679virtually a dead letter, the grounds for which conclusion we will proceed to state.
The eleventh section of the. patent act provides, that, every patent shall be assignable, in law, either as to the whole interest, or any undivided part thereof, by an instrument in writing •; which assignment, and also every grant and conveyance of the exclusive right under any patent, &c., shall be recorded in the patent-office. Arid the fourteenth section authorizes suits to be brought in the name of the assignee or grantee, for an bfringement of his rights, b a court of law.
One object of these provisions found in the general patent system is to separate the interest of the assignee and grantee from that which may be held by the patentee, and to make each fractional' interest held under the patent. distbct and separate; in other words, to change a mere, equitable into a legal title and interest, so that ifc may be^dealt with iri a court- of law.
Now, in view of these provisions, it is difficult to perceive the .materiality of the clause in question, as it respects the rights of assignees and grantees held by an assignment or grant in and under the new term, any more than in respect to like rights and interests in and under the old.
The eleventh and fourteenth sections embrace every assignment or grant óf a part or the whole of the interest in the invention, and enable these parties to deal with it, iri all respects, the same as the patentee.. They stand upon the same footing, under the new term, as in the case of former ássignments under the old. Nothing can be clearer.. It is-impossible to satisfy the clause by referring it to these assignments and grants ; or to see how. Congress could, for á moment, have imagined that there would be any necessity for the clause, in this aspect of it. It would have been as clear a work of supererogation as can be stated- .
The only color for the argument in faVor of the necessity of tbs . clause, m the aspect in which we are viewing it, is as respects the contingent interest in the new term, derived from a provision in an assignment under the old one, looking to the extension. As the right necessarily rested on contract, at least till the contingency occurred, there may be some doubt whether, even after its occurrence, the eleventh and fourteenth sections had the effect to change it into a vested legal interest, so that it could be dealt with at law ;. and that a new-assignment or grant from the patentee would be required, v/hich could be enforced only in a court of equity. To this extent there may be some color for the argument, — some supposed matter to give operation and effect to the clause.
But what is the amount of it ? Not that the clause creates or secures this contingent interest in the riew term, for that depends upon the contract between the parties, and the contract alone, and which, even if the general provisions of the law respecting *680the rights of assignees and grantees could not have the effect to change into a legal right, might be enforced in a court of ..equity.
The only effect, therefore, of the provision in respect to assignees and grantees of this description would be, to change the nature of the contingent interest after the’ event happened, from a right resting in contract to a vested legal interest; or, to speak with more precision, to remove a doubt about the nature of the interest in the new term, after the happening of a certain contingency, which event in itself was quite remote. This seems to be the whole amount of the effect that even ingenious and able counsel have succeeded in' finding, to satisfy the clause. It presupposes that Congress looked to this scintilla of interest in the new term, which might or might not occur, and cast about to provide for it, for fear of doubts as to its true nature and legal character,- and the effect of the general system upon it.
We cannot but'think a court should hesitate before giving a construction to the clause so deeply harsh and unjust in its consequences, both as it respects the public and individual rights and interests, upon so narrow a foundation.
But there are other difficulties in the way of this construction. -
The eleventh section, regulating the rights of assignees and grant.ees, provides, “ that every patent shall be assignable at law,” &c., “ which assignment, and also every grant and conveyance of the exclusive right under any patent to make and use, and to grant to others to make and use, the thing patented within and throughout any spéclfíed part or portion of the United States,” &c., “ shall be recorded.”
Now it will be apparent, we think, from a very slight examination of the clause in question, that it' does not embrace assignees or grantees, in the sense of the eleventh section, at all; nor in the sense in which they are referred to when speaking of these interests generally under the patent law, without interpolating words or giving a very forced construction to those composing it.
The clause is as follows: — “ And the benefit of such renewal shall extend to assignees and grantees of -the right to use the thing patented, fo the extent of their respective interests therein.” , .
It will be seen that the word “ exclusive,’’-"used to qualify the right of a grantee in the eleventh section, and, indeed, always when referred to in the patent law (§ 14), and also the words “ to make,” “ and to grant to others to make and use,” are dropped, so that there is not only no exclusive right in the grantee, in terms, granted or secured by the clause, but no right at all, — no right whatever, — to make or to grant to others to make and use the thing patented ; in other words, no exclusive right -to make or vend. "And it is,' we think, quite obvious, from the connection and phraseology, that assignees and grantees are placed, and were intended to be placed, in (his respect,-upon the same footing. We should scarcely be *681justified in giving ,to this term a more enlarged meaning as to the right to. make and sell, as it respects the one class, than is given to the others, as they are always used as correlative in .the patent la.ws, to the extent of the interests held by them. The clause, therefore,- in terms, seems to limit studiously the benefit, or reservation, or whatever it may be called, under or from the new grant to the naked right to use the thing patented ; not an exclusive right even for that, which might denote monopoly, nor any right at all, much less exclusive, to make and vend. That seems to ,'have been guardedly omitted. We do not forget the remaining part of the sentence, “to the extent of their respective interests therein,” which is relied on to help out the difficulty. But we see nothing in the phrase,, giving full effect to it, necessarily inconsistent with the plain meaning of the previous words. The exact idea.-intended to be expressed may be open to observation; but we think it . far from justifying the court in holding, that the grant or reservation of a right to use a thing patented, well known and in general use at the time, means an exclusive right to make and use it; and not only'this, but an exclusive right to grant to others the right to: make and use it,- meaning an exclusive right to vend it. *
The court is asked to build up a complete monopoly in the hands of assignees and grantees in the thing patented, by judicial construction, founded upon the grant of a simple right to use it to the extent of the interest possessed ; for the argument comes to this complexion. A simple right to use is given, and we are asked-to read it an exclusive right, and not only-to read it an exclusive right to use, but an exclusive right to make and vend, the patented article.
Recurring to the patent law? it will be seen that Congress, in granting monopolies of this description, have deemed it. necessary to use very different language. The grant in the patent must be in express terms, for “ the .full and exclusive right and liberty of making, using, and vendirtg,” in order to confer exclusive privileges. . The same language is also used in the act when' speaking of portions of the monopoly in the hands of assignees and grantees. (§§ 11, 14).
We cannot but think, therefore, if Congress had intended to confer á monopoly in the patented article upon, the assignees and grantees by the clause in question, the usual fprmula in all such grants would have been observed, and that we should be defeating . their understanding and intent, as well as-doing violence 'to the language, to sanction or uphold rights and privileges of such magnitude by the mere force of judicial construction.
We conclude, therefore, that the clause has no reference to the rights or interest of assignees and grantees under the new and extended term, upon the ground, —
' 1. 'Because, in that view, giving to the words the widest con*682struction, there is nothing to satisfy the clause, or upon which any substantial effect and operation can be given to it; it becomes virttíally a dead letter, and work of legislative superfluity; and
2. Because the clause in question, upon a true and reasonable interpretation, does not operate to vest the assignees and grantees named therein with any exclusive privileges whatever, in the extended term, and therefore cannot be construed as relating to or embracing such interests in the sense of the law.
The extension of the patent under the eighteenth section is a new grant of the exclusive right or monopoly in the subject of the invention for the seven years. All the rights of assignees or grantees, whether in a share of the patent, or to a specified portion of the'territory held under it, terminate at the end of the fourteen years, and become reinvested in the. patentee hy the new grant.
From that date he is again possessed of “ the full and exclusive right and liberty of making, using, and vending to others the invention,” whatever it may be. Not only portions of the monopoly held by assignees and grantees as subjects of trade and commerce, but the patented' articles or machines throughout the country, purchased for practical use in the business affairs of life, are embraced within the operation of the extension. This latter class of assignees and grantees are reached by the new grant of the exclusive right to use the thing patented. Purchasers of the machines, and who were in the use of them at the • time, are disabled from further use" immediately, as that right became vested exclusively in the patentee. Making and vending the invention are prohibited by the corresponding terms of his grant.
Now, if we read the clause in question with reference to this state of things, we think that much of flie difficulty attending it will disappear. By the previous part of the section, the patentee would become reinvested with the exclusive right to make, use, and vend the thing patented ; and the clause in question follows, and was so intended as a qualification. To what textent, is the question. The language is, “ And the benefit of such renewal shall extend to assignees and grantees of the right to use the thing patented, to the extent of their respective interests .therein” ; naturally, we think, pointing to those who were in the use of the patented article at the time of the renewal, and intended to restore or save to them that right which; without the clause, would have been vested .again exclusively in the patentee. -The previous part of the section operating in terms to vest him with the exclusive right to use, as well as to make and vend, there is nothing'wery remarkable in the words, the legislature intending thereby to qualify the right in respect to a certain "class only, leaving the right-as to all others in the patentee, in speaking of the benefit of the renewal extending to this class. The renewal vested him with the whole right to. use, and therefore there is no great impropriety of language, if intended to pro*683tect this class, by giving them in terms the benefit of the renewal. Against this view it may be said that “ the thing patented ” means the invention or discovery, as held in McClurg v. Kingsland, 1 How. 202, and that the right to use the “ thing patented ” is what, in terms, is provided for in the clause. That is admitted, but the words, as used in the connection here found, with the right simply to use the thing patented, not the exclusive right, which would be a monopoly; necessarily refer to the patented machine and not to the invention .; and, indeed, it is in that sense that the expression is to be understood generally throughout the patent law, when taken in connection with the right to use, in contradistinction to the right to make and sell.
The “ thing patented ” is the invention ; so the machine is the thing patented, and to use the machine is to use the invention, because it is the thing invented and in respect to which the exclusive right is secured, as is also held in McClurg v. Kingsland. The patented machine is'frequently used as equivalent for the “thing patented,” as well as for the invention! or discovery, and no doubt; when found in connection with the exclusive right to make and vend, always means the right of .property in the- invention, the monopoly. But when in connection with the simple right .to use, the exclusive right to make and vend being in another, the right to use. the thing .patented necessarily results in a right to use the machine, and nothing more. Then, as to the phrase “ to the extent of their respective interests therein,” that obviously enough refers to their interests in the thing .patented, and in connection with the right . simply to use, means .their interests in the patented machines, be' that interest in. one or more at the time of the extension.
This -view of the clause, which brings it down in practical effect and operation to the persons in the use of the patented machine or . machines at the time of the new grant, is strengthened by the clause immediately following,-which is, “that no extension-of the patent shall be granted' after the expiration of the term for which it was originally issued.” YjThat is the object of this provision ? Obviously, to guard against the injustice which might otherwise occur to. a person who -had gone-to the expense of procuring the patented article, or changed his business upon the faith of using or dealing with it, after the monopoly had expired, which would be arrested ■by the. operation of the new grant. To avoid this consequence, it is provided that the extension must take place before the expiration of the patent, if at all. Now, it would be somewhat remarkable if Congress should'have been thus careful of a class of persons who had merely gone .to the expense of providing themselves with the patented article for use or as a matter of trade,- after the monopoly had ceased, and would b.e disappointed and exposed to loss • if it was again renewed, and at the same time .had .overlooked the class who in addition to this expense and change of. business *684had bought the right from the patentee, and were in the use and enjoyment of the machine, or whatever it might be, at the time of the renewal. These provisions are in juxtaposition, and we think are but parts of the samé policy, looking to the protection of individual citizens from any special wrong and injustice on account of the operation of the new grant.
The consequences of any different construction than the one' proposed tp be given are always to be regarded by courts, when dealing with a statute of doubtful meaning. For between two different interpretations, resting upon judicial expositions of ambiguous and involved phraseology, that which will result in what may be regarded ¿s coming nearest to the intention of the legislature should .be preferred. ■ '
We must remember, too, that we are not dealing with the decision of the particular case before us, though that is involved in the inquirybut with, a general system of great practical interest tó the country ; and it is the effect of our decision upon the operation of the system that £ives to it its' chief importance,
The eighteenth section authorizes the renewal .of patents in all cases where the Board of Commissioners is satisfied of the usefulness of the invention, and of the inadequacy of remuneration to the patented. Inventions of merit only are the subject of the new grant; such as have had the public confidence, and which it may be presumed have entered largely,- in one way and another, into the business affairs of life.
By the report of the Commissioner of Patents it appears, that five hundred and two patents were issued in the year 1844, — for the last fourteen years, the average issue yearly exceeded this number, —and embrace articles, to be found in common use in every department of labor or art, on the farm, in the workshop, and factory. These articles have been purchased from the patentee, and have gone into common use. But, if ■ the construction against which we have been contending should prevail, the moment the patent of either article is renewed, the common use is arrested, by the exclusive grant to the patentee. It is true the owner may repurchase the right to úse, and doubtless would be compelled from necessity ; but he is left to the discretion or caprice of the patentee. A construction leading to such consequences, and fraught with such unmixed evil, we must be sátisfied, was never contemplated by Congress, and should not be adopted unless compelled by the most express and positive language of the statute.
The third question' certified is, whether the extension of the patent granted to W. W. Woodworth, as administrator, on the 16th of November, 1842, inured to the benefit óf the administrator exclusively, or whether, as to certain territory specified-in the contract' of assignment made by W. Woodworth and James Strong to Too-good, Halstead, and Tyack, on the 28th of November, 1829* and *685by legal operation of the covenants contained in said contract, the said extension-inured to the benefit of said Toogood, Halstead, and Tyack, or their assigns ■?
William Woodworth tyas the original patentee, and took out letters patent' on the 27th of. December, 1828 ; and .soon after conveyed a moiety of the same to James Strong. One-U.ri Emmons also obtained a patent for a similar machine on the 25th of April, .1829, and soon after conveyed all his interest in the same to Too-good, Halstead, and Tyack. . With a view to avoid litigation, both parties mutually assigned to each other their interests in the respective-patents to different ánd separate-portions of the United States ; and in the assignment from Woodworth and Strong to Toogood, Halstead, and Tyack,'the following covenant was entered into by the parties.' “ And the two parties further agree, that any improvement in the machinery, or. alteration, or renewal of either, patent, such improvement, alteration, or renewal shall inure to the benefit of the .respective parties interested, and may be applied and used within their respective districts, as herein before designated.”
' At the time this covenant was entered into, there was no.provision in the patent laws authorizing an extension or- renewal of the same beyond the original term of fourteen years. The first act providing for it was passed in July, 1832. Before this time,-the only mode of prolonging the term beyond the original" grant was by means of private acts of Congress upon individual applications. - ■
A: construction Jhad been given by the Circuit Court of the United States, in New York, as early as 1824, by "which the patentee, on surrendering his patent on account of a defective specification, would. be entitled to take out a new patent correcting the defect, which construction was. afterwards upheld by this court in Grant v. Raymond, 6 Peters, 218, and the principle since ingrafted into the patent law by the act of 1832.
The court is of the’.opinion, that the covenant in question should be construed as háving been entered into by the, parties, with a reference to the known and existing rights and privileges secured to patentees under the general system of the government established for that purpose ; that the parties would naturally look to the established..system "of law on the subject. in arranging their several-rights and obligations, in.dealing with property of this description, rather than to any possible -change that might he effected by private acts of Congress upon individual application. Contracts are usually made with reference to the established law of the land, and ’should'be so understood and construed, unless otherwise clearly indicated.by the terms of the agreement. If the parties in this.case contemplated any alteration or modification of their rights, more advantageous, -by the further legislation oí" Congress, w-e think-some more specific provision having reference to it should have been *686inserted in their covenant. The term renewal may be satisfied by a reference to the law as it then stood. The. patentee might surrender his patent, and take out a new one, within,the fourteen years; and the term was used, probably, to guard against any question that might be raised as to the right under the assignment in the new patent, if a surrender and new issue should become necessary. ", The specification accompanying the patent was a complicated one, and has been the subject of much controversy, and the necessity of a surrender for correction and amendment might very well have been anticipated.
We think th& view satisfies the use of the term,..and,that no right is acquired in the new grant, by virtue of the assignment or cove-nant.
The' fourth and fifth questions certified are-answered by the. opinion of the court upon the first and second questions.
The'sixth question certified is as follows :— Whether the plaintiff, if he be an assignee of an exclusive right to use two of the patented machines within the town of Watervliet, has such an. exclusive right as will enable him to maintain an action for an infrihgément of -the patent within the said ¿own ; or whether, to maintain such action, thp plaintiff must be possessed, as to that, territory, of all the fights of the original patentee.
The plaintiff is. the grantee of the exclusive right to construct and use,'and to vend to others to be used, two of the patented machines-within the town of Watervliet, in the county of Albany.
The fourteenth section of the patent law authorizes any person, who is a grantee of the exclusive-Tight in a-pátent within and throughout a specified portion of the United States, to maintain an action in his own name for an infringement of the right.
The plaintiff comes within the very terms of the section. ■ AI- ■ though limited to the use of two machines within the town, the right to use them is exclusive. No- other party, not even the patentee, can use á right utider the patent within the territory without infringing the grant. ¿y
The seventh question certified is as follows : — Whether the letters patent of renewal issued to W. W. Woodworth, as administrator, on the 8th of July, 1845, upon the amended specification and explanatory drawings then filed, be good and valid in law, or whether the same be‘ void for uncertainty, ambiguity, or multiplicity of claim, or any othér cause.
The court is satisfied, upon an examination of the specification and drawings referred to in the question certified, that it is sufficiently full and explicit, and is not subiect to any of the objections taken to it.
The remaining questions will be sufficiently answered by the certificate sént to the court below.
*687• Order.
This cause came on to be heard on the transcript of the record’from the Circuit Court-of. the United States for the Northern District of New York, and on the points and questions on which the judges of the said Circuit Court were opposed in opinión, and which were certified tp this court for its opinion,-agreeably to the act of Congress in .such case made and provided, and was argued by counsel; On consideration whereof, it is the opinion of this court, —
1. That the eighteenth section of the patent act of 1836 did authorize the extension of a patent on the application of the executor or administrator of a deceased patentee. ' '
2. That, by force and operation of the eighteenth section .of the .act of July. 4th, 1836,'entitled “ An apt to promote the progress,of the useful arts,” .&'c,, the extension granted-to William W, Woodworth, as administrator, on the 16th day of November, 1842, did not inure to the benefit..of assignees under the original patent granted .to William Woodworth on the 27th day of December, 1828, but that the said extension inured to the benefit of the administrator only, in his said capacity.
3. That the extension specified in the foregoing second point did inure to . the benefit of the' administrator, to whom the same was granted, and to him in that capacity exclusively ; and that, as to the territory specified in the contract of assignment made by William Woodworth and James Strong to Toogood, Halstead, and Tyack, on the 28th. day of November, 1829 (and set, forth in the second plea of the defendants to the first, count of the declaration) , and by legal operation of the covenants contained, in said-contract, the said extension did not inure to the benefit of the said •Toogood, Halstead, and Tyack, or their assigns.
4. That the plaintiff, claiming title under the. extension from the administrator, can maintain an action for an infringement of the patent right within the territory specified in the contract of assignment to Toogood, Halstead, and Tyack, against any person not claiming under said assignment.' And that the said assignment is not, of itself, a perfect bar to the plaintiff’s suit.
5. That the extension specified in the second point could be applied for and obtained by William W. Woodworth, as administrator of William Woodworth, deceased, although the said William Woodworth, the. original patentee, had in his lifetime disposed of all his interest in the then existing patent, having at the time of his' death no right or title to or interest in the said original patent ; and that such sale did not carry any thing beyond the term of said original patent.; and that no contingent rights remained in the patentee or his representatives.
6. That the plaintiff,.if he be an. assignee of an exclusive right *688to use two of the patented machines within the town of Watervliet, has such an exclusive right as will enable him to maintain an action for an infringement of the patent within said town.
7. That the letters patent of renewal issued to William W. Woodworth, as administrator as aforesaid, on the'8th day of July, 1845, upon the amended specification and explanatory drawings then filed, are goo.d and. valid in law ; and are not void for uncertainty, ambiguity, or multiplicity of claim, or any other cause..
8. That' the question involved in the eighth point propounded does not present any question of law which this court can answer:
9. That the decision of the Board of Commissioners, who are to determine upon the application for the extension of a patent under the eighteenth section of the act of 1836, is not conclusive upon the' question of their jurisdiction to act in a given case.
10. That the Commissioner of Patents can lawfully receive a surrender of letters patent for a defective specification, and issue new letters patent upon an amended specification, after the expiration of the term for which the original patent was granted, and pending the existence of an extended term of seven years ; and that such surrender and renewal may be made at any time during such extended term.
It is thereupon now here ordered and adjudged by this court, that it be so certified to the said- Circuit Court.