
    Julius Strelitzer, Respondent, v. Milton Schnaier, Appellant.
    First Department,
    December 17, 1909.
    Malicious prosecution — patents —prosecution of interference in Patent Office.
    Tile fact that one who constructed a model of an invention for the inventor filed an application for letters patent in the Patent Office, whereby the inventor was put to added expense in prosecuting his own application, does not entitle the patentee to maintain an action for malicious prosecution, where there was no trust or confidential relation between the parties.
    An application for letters patent is not a prosecution against other persons '■ applying for a patent on the same invention, só as to support an action for malicious prosecution. '
    Nor can such action be based upon the fact that the applicant knew that he was. not entitled to a patent. ’
    Clarke and Houghton, JJ., dissented.
    Appeal by the defendant, Milton Schnaier, from a judgment of the Supreme' Court in favor of the plaintiff, entered in the office of the clerk of the county of Hew York on the 9 th day of February, 1909, upon the verdict of a jury, and also from an order entered in said clerk’s office on the same day denying the defendant’s motion for a new trial made Upon the minutes.
    
      Milton Mayer, for the appellant.
    
      Samuel WeoJisler, for the respondent.
   Ingraham, J.:

The complaint alleges that the plaintiff in April, 1901, conceived an idea for the improvement of dish-wasliing machines, and hired the defendant to- alter for him a' model built by the plaintiff of said machine; that the defendant did alter a model of said machine for the plaintiff; that on the 18th day of June, 1901, the plaintiff filed an application for a patent in the United States Patent Office; that on June 6,1901, the defendant also filed an.application for a patent for the same improvement; that there was subsequently an investigation by the patent authorities as to who invented the machine, which was subsequently in May, 1903, decided in favor of the plaintiff. The complaint then alleges .that by reason of the tortious act of the defendant in claiming to be the inventor of said improvement in dish-washing machines, the plaintiff was put to large expense in defending his title to said machine to his damage in the sum of $5,000. The defendant denied each of the allegations of the complaint, and set up a counterclaim for work, labor and services rendered to the plaintiff, to which counterclaim the plaintiff replied. Upon the opening of the trial the defendant moved to dismiss the complaint on the ground that the coinplaint did not state facts sufficient to constitute a cause of action,, which was denied, and the defendant excepted. It was thus the act of the defendant in claiming to be the inventor of this improvement and filing a claim for a patent before the United States authorities upon which the cause of action is based, and unless these acts give a cause of action, none is alleged. ■ The fact that the defendant made an unfounded claim to an invention by filing an application for a patent with the Commissioner of Patents, certainly of itself would give no cause of action, and if there is a cause of action, it must depend upon the further fact alleged that the defendant acquired his knowledge of the invention by reason of his employment by the plaintiff to construct a model of the machine. ■ But there was no.position of trust or confidence between the parties. The defendant was merely employed to do a certain work, and in consequence of that employment acquired knowledge of an invention upon which he subsequently sought to obtain an advantage, in which attempt he was defeated. The complaint cannot be sustained as an action for malicious prosecution for several reasons, one of which is that the defendant instituted no proceedings against the plaintiff. The United States officials commenced a proceeding to determine whether the plaintiff or the. defendant was the real inventor of this improvement, but all that the defendant had to do with that was his making a claim for the invention by an application for a .patent.

Ho authority is cited to sustain such an action except Bernard v. Huebel (33 Misc. Rep. 611), which was a Special Term decision overruling a demurrer to a complaint, and from the opinion that seems to have been based upon a fraud of the defendant in making the application for a patent.

In submitting this case to the jury the court seemed to base the right to-a recovery upon the jury finding that the defendant applied for letters patent knowing at the time that he was not entitled to .them, or, in other words, that the jury must find that the defendant acted in bad faith and that by reason of his misconduct the plaintiff was put to this expense. This, so far as I know, .is the first time that it has ever been held that a person applying for a patent ■is responsible to another person for the damages the other person sustained because the defendant knew lie. was not entitled to a patent when he made the application. The only damage the plaintiff attempted to prove was the expense lie was put to in sustaining his application before the Commissioner of Patents. For such expenses he has obtained a verdict, but I know of no principle upon which it can be sustained.

I think, therefore, the judgment should be reversed and a new trial ordered, with costs to the appellant to abide the event.

Patterson, P. J., and Laughlin^ J., concurred; Clarke and Houghton, JJ., dissented.

Judgment and order reversed, new trial ordered, costs to appellant to abide event.  