[D9202ABN], Letter from Richard Nott Dyer to Alfred Ord Tate, July 18th, 1892
https://edisondigital.rutgers.edu/document/D9202ABN
Transcription
New York, July 18, 1892 Copy sent to Mr. Edison Date July 21, 1892 A.O. Tate Esq., Orange, N.J. Mr. Tate,- I have your letter of the 13th inst with reference to the terms of Mr. Edison’s laboratory contract. I have made a careful analysis of the contract for the purpose of intelligently answering your enquiry. There are only two provisions in the contract which contemplate a reversion to Mr. Edison of the rights to any particular invention in North and South America. In the third section (see top of page 5 of printed contract) it is provided that if the company should decline to pay the expenses of taking out the United States patent, then the invention becomes Mr. Edison’s property and he can take out the patent himself for his own benefit. In the ninth section of the contract (see page 19 of printed contract) it is provided that the company shall develop each of the inventions, and if Mr. Edison is dissatisfied because the company either fails altogether to use the invention or fails altogether to use the invention, or fails to make the profit he thinks they should from it, the matter shall be left to arbitration, and the arbitrators may go so far, in extreme cases to which no other remedy can reasonably be applied, as to direct the re-assignment of the invention to Mr. Edison. This re-assignment, however, is contemplated by the contract only as an extreme measure, and the company is not obliged to manufacture unless the device is superior to the things it already has in use, nor unless the device is capable of being made and sold with a certain profit. If one of Mr. Edison’s inventions fulfills all the conditions of the contract as to superiority, obtainable profit, etc., the company can avoid assuming the obligations to pay the application expenses; but when it has paid the application and has procured the patent, it cannot then avoid the other obligations of the contract, viz., to develop the invention and pay to Mr. Edison his share of the profits. Now if it were Mr. Edison’s wish to impose the obligations of the contract upon the company as to any particular invention, his course would evidently be to permit the company to take out the patent at its own expense as a matter of routine and without inviting discussion of its merits, and thereafter the company would be obligated to develop the invention would involve a re-assignment, as before pointed out. If, on the other hand, Mr. Edison desired to retain a particular invention, the course I would advise him to take is to tender the invention to the company with the request that the company decide whether it wanted to assume the obligations of the contract with respect to that particular invention. If the reply was that it did not want to assume such obligations, Mr. Edison would then be free to take out the patent himself for his own benefit. If that is what has been done with regard to the two inventions referred to in your letter of the 13th inst., a negative reply from the company will accomplish what you want, but a simple failure on the part of the company to use the inventions will not give Mr. Edison the right to manufacture and sell the same himself until that right has been awarded to him by arbitration under the contract of by equivalent action of the courts. Yours very truly Rich N. Dyer