illegal, without an immediate and urgent necessity therefor, o unless to release his person or property from detention, or to prevent an immediate seizure of his person or property, such payment must be deemed voluntary and cannot be recovered back. And the fact that the party at the time of making the payment files a written protest does not make the payment involuntary."

This, as we understand it, is a correct statement of the rule of the common law. There are, no doubt, cases to be found in which the language of the court, if separated from the facts of the particular case under consideration, would seem to imply that a protest alone was sufficient to show that the payment was not voluntary; but on examination it will be found that the protest was used to give effect to the other attending circumstances. Thus, in Elliott v. Swartwout (10 Pet. 137) and Bond v. Hoyt (13 id. 266), which were customs cases, the payments were made to release goods held for duties on imports; and the protest became necessary, in order to show that the legality of the demand was not admitted when the payment was made. The recovery rested upon the fact that the payment was made to release property from detention, and the protest saved the rights which grew out of that fact. In Philadelphia v. Collector (5 Wall. 730) and Collector v. Hubbard (12 id. 13), which were internal-revenue tax cases, the actions were sustained "upon the ground that the several provisions in the internal-revenue acts referred to warranted the conclusion

as a necessary implication that Congress intended to give the tax-payer such remedy." It is so expressly stated in the last case. p. 14. As the case of Erskine v. Van Arsdale (15 id. 75) followed these, and was of the same general character, it is to be presumed that it was put upon the same ground. In such cases the protest plays the same part it does in customs cases, and gives notice that the payment is not to be considered as admitting the right to make the demand.

The real question in this case is whether there was such an immediate and urgent necessity for the payment of the taxes in controversy as to imply that it was made upon compulsion. The treasurer had a warrant in his hands which would have authorized him to seize the goods of the company to enforce

the collection. This warrant was in the nature of an execution running against the property of the parties charged with taxes upon the lists it accompanied, and no opportunity had been afforded the parties of obtaining a judicial decision of the question of their liability. As to this class of cases Chief Justice Shaw states the rule in Preston v. Boston (12 Pick. (Mass.) 14), as follows: "When, therefore, a party not liable to taxation is called upon peremptorily to pay upon such a warrant, and he can save himself and his property in no other way than by paying the illegal demand, he may give notice that he so pays it by duress and not voluntarily, and by showing that he is not liable, recover it back as money had and received." This, we think, is the true rule, but it falls far short of what is required in this case. No attempt had been made by the treasurer to serve his warrant. He had not even personally demanded the taxes from the company, and certainly nothing had been done from which his intent could be inferred to use the legal process he held to enforce the collection, if the alleged illegality of the claim was made known to him. All that appears is, that the company was charged upon the tax-lists with taxes upon its real and personal property in the county. After all the taxes had become delinquent under the law, but before any active steps whatever had been taken to enforce their collection, the company presented itself at the treasurer's office, and in the usual course of business paid in full every thing that was charged against it, accompanying the payment, however, with a general protest against the legality of the charges and a notice that suit would be commenced to recover back the full amount that was paid. No specification of alleged illegality was made, and no particular property designated as wrongfully included in the assessment of the taxes. The protest was in the most general terms, and evidently intended to cover every defect that might thereafter be discovered either in the power to tax or the manner of executing the power. Three years afterwards, and after the decision in Railway Company v. McShane (22 Wall. 444), which was supposed to hold that the particular lands now in question were not subject to taxation, this suit was brought. Under such circumstances, we cannot hold that the payment was compulsory in such a sense

as to give a right to the present action. As the answer to this question disposes of the case, it is unnecessary to consider the other questions certified.

Judgment affirmed

HENDRIE V. SAYLES.

Where, before the issue of letters-patent therefor, a party assigns his invention, and letters are lawfully issued to the assignee in his own name, the latter is entitled, where the instrument of assignment does not show a different intention, to obtain a renewal of them at the expiration of the original term.

APPEAL from the Circuit Court of the United States for the Eastern District of Michigan.

Lafayette F. Thompson and Asahel G. Bachelder, claiming to be inventors of a railroad brake, executed, before letterspatent were issued to them therefor, the following assignment, which was duly recorded in the Patent Office:

"Whereas we, Lafayette F. Thompson, of Charlestown, and Asahel G. Bachelder, now or late of Lowell, in the State of Massachusetts, have invented an improved mode of operating the brakes of railway cars, and have applied, or intend to apply, for letterspatent of the United States of America therefor.

"Now, therefore, this indenture witnesseth, that for and in consideration of $100, in hand paid, the receipt whereof is hereby acknowledged, I have assigned and set over, and do hereby assign, sell, and set over, to Henry Tanner, of Buffalo, in the State of New York, all the right, title, and interest whatever which we now have, or by letters-patent would be entitled to have and possess, in the aforesaid invention, the said invention being described in the specification as prepared and executed by us, or to be prepared and executed by us, for the obtaining of said letters-patent; the whole to be enjoyed and held by the said Henry Tanner and his legal representatives, to the full extent and manner in which the same would have been or could be held and enjoyed by us had this assignment never been made.

"And we do, by these presents, authorize the Commissioner of Patents to issue the said letters-patent to the said Henry Tanner

and his legal representatives, as the assignee of our whole right and title to the same and to the new invention aforesaid.

"In witness whereof, we have hereto set our signatures and seals, this first day of April, A.D. 1852.

"Witness, R. H. EDDY."

"LAFAYETTE F. THOMPSON. [SEAL.] "ASAHEL G. BACHELDER.

[SEAL.]

Letters-patent were issued on the sixth day of the following July to Tanner, who, July 13, 1854, assigned to Thomas Sayles all his remaining right and title in them for the unexpired term thereof, and "any extension thereof that may hereafter be granted," excepting, however, certain reserved territory and specified railroad corporations. Said letters were renewed and extended for seven years from July 6, 1866.

After that date, and until some time in 1873, Hendrie infringed the patents within the territory not so reserved, and Sayles filed his bill for an account, &c., to which Hendrie demurred, upon the ground that Sayles had no legal title to the extended term. The demurrer was overruled, and a decree for want of an answer passed for the complainant. Hendrie thereupon appealed here.

Mr. D. Bethune Duffield for the appellant.

Unless the complainant has the sole legal title to the extended term, he cannot maintain this suit. 1 Barb. Ch. Pr. 39; 1 Dan. Ch. Pr. 241. The whole case depends upon the assignment of April 1, 1852, to Tanner. If it gave him such an interest in that term that the legal title thereto would vest in him the moment the extension should be granted, the demurrer is bad.

The assignment is to be construed like any other contract to carry out the intention of the parties, and to further that intention their situation and the surrounding circumstances may be considered. 2 Pars. Contr. 499; Shore v. Wilson, 9 Cl. & Fin. 555-569; Mumford v. Getling, 7 C. B. N. s. 309; Carr v. Montefiore, 5 B. & S. 427. It was made before the issue of the patent. The inventors then had an inchoate right to the exclusive use of their invention, it being complete ; and they could assign it, so that the legal right which would result from the issue of the patent would vest in Tanner. Gayler v. Wilder, 10 How. 477. And they perhaps had an

inchoate right to an extension, assignable with the same effect as their right to a patent. Railroad Company v. Trimble, 10 Wall. 367.

The granting clause of the instrument, when taken as a whole, plainly indicates the invention and the letters-patent intended to be conveyed, as described in and to be obtained by the specifi cation, and the latter was not prepared to obtain the extension.

And again, the inventors authorize the issue of "said letterspatent" to Tanner, as the assignee of their "whole right and title to the same," not to any letters-patent, but to "said letters-patent." There is no grant of, and no reference to, an extension. This clearly shows that the original term was alone intended to be conveyed.

This court has never passed directly upon the question whether an assignment of the "invention " necessarily includes both terms of a patent, or clearly shows an intention so to do. The authorities on the circuit rule otherwise. Clum v. Brewer, 2 Curt. C. C. 520; Waterman v. Wallace, 13 Blatch. 132.

Mr. Albert H. Walker, contra.

MR. JUSTICE CLIFFORD delivered the opinion of the court. Patents or any interest therein may be assigned by an instrument in writing, and the patentee, his assigns or legal representatives, may in like manner grant and convey an exclusive right under the patent; and where the conveyance precedes the granting of the patent, it may be issued to the assignee, the assignment thereof being first entered of record in the Patent Office. 16 Stat. 202, 203; Rev. Stat., sects. 4895, 4896.

Sufficient appears to show that the complainant claims to be the lawful owner of the patented improvement, which consists of a new mode of operating railroad brakes, and that he became such, as he alleges, by virtue of an instrument of assignment, bearing date July 13, 1854, from the assignee of the original inventors.

Prior to the granting of the patent, to wit, on the first day of April, 1852, the inventors conveyed and set over to the assignor of the complainant all the right, title, and interest whatever which they had, or by letters-patent would be entitled to have and possess, in the described invention; and the record shows