The Thomas A. Edison Papers Digital Edition

Transcription

Letterhead: Eaton & Lewis 
August. 30, 1892 
Thomas A. Edison Esq., 
Orange, New Jersey. 
Marginalia: < Tate will talk to you about this> 
Dear Sir:  
We have been for some time past engaged in straightening out the chain of technical title to the various patents owned by the Edison Electric Light Company and the Edison General Electric Company, and find that there are a number of patents which still stand In your name, but which belong to and should be transferred to one or the other of those two companies, as stated below. 
As fast as these patents are found during our examination, we will prepare assignments for the same to the Companies in whom the title would rest. 
Herewith I beg to hand you two of said assignments, one being for a batch of twenty patents to be assigned to the Light Company, and the other covering patents which are assignable to the Edison General Company. Will you kindly execute these assignments in the presence of a witness, then return the same to me so that I may have them recorded and handed to the paper officials of the Companies. 
You make ask whether you are obliged to [assign?] these patents. In answering this question, I assume as a fact that the expenses of taking out these patents and your experimental and Laboratory expenses, have all been paid by the Light Co. and E.G. E. Co. respectively. I also assume that my long written opinion of January 7, 1889, addressed and sent to you, correctly states your legal obligation in the premises, so far as the Light Co. is concerned. The purport of that opinion was that as regards inventions made after January 12, 1886, you are entitled to “compensation to “be mutually agreed upon, or, in default thereof, to be fixed by “arbitration”. This applies, in my opinion, to all inventions made after January 12, 1886, and prior to the time when the Laboratory Agreement of October 1, 1890, took effect. That agreements covered Inter alia, all inventions which you were then “engaged in making “or perfecting”. Now, as I understand it, all of the inventions covered by the assignment to the Light Co. sent to you herewith were made after January 12, 1886, and before the Laboratory Agreement took effect. Hence you are not obliged to assign said patents to the Light Co., unless it be with the understanding that the Light Co. shall compensate you as above mentioned.  
As regards the enclosed assignment to the E.G.E.Co., the inventions covered by the patents included in this assignment are governed by the Laboratory Agreement. My understanding is that all of these inventions come under the language of that agreement which I have quoted above. Consequently you are obliged to execute this assignment to the E.G.E.Co.  
While on the matter of your relations with the Light Co., let me take occasion to repeat what you, Mr. Insull and I have often talked about, viz: that the Light Co. ought to give you a release from your existing obligation to turn inventions over to it. In my opinion given you under date of January 7, 1889, mentioned above, I stated that you were obliged to turn over to the Light Co., for a consideration, all your inventions made between January 12, 1886, and November 15, 1895. But how can you do this now that you have made the Laboratory Agreement of October 1, 1890, with the E.G.E.Co. Your promise to the company conflict with your older promises to the Light Co. Hence the Light Co. ought to give you a release, at least so far as these conflicting promises are concerned. Possible Mr. Insull has already obtained such a release from the Light Co. I shall write to him and ask whether he has. 	 
Referring again to the enclosed proposal assignment to the Light Co., you might make the occasion of this document being presented to you, a reason for raising this whole question, viz: as to what compensation you are fairly entitled to from the Light Co. for inventions and patents between January 12, 1886, and the time when the Laboratory Agreement of October 1, 1890, took effect. When that question is raised, your release ought to be executed by the Light Company, if it has not already been done.  
Whether you want to raise the above question now, or wait until the subject of your disposing of your foreign patents to the new General Electric Company is considered, is for you to decide. So also you must decide whether in view of what I have stated in this letter, you will now execute the enclosed assignment to the Light Co. I think there is no doubt but what you ought to execute the enclosed assignment to the E.G.E.Co. at any rate. I shall send a copy of this letter to Mr. Insull, as he has charge of negotiating a final settlement between you and the new General Electric Company.  
Please execute this long letter, but the subject does not admit of shorter treatment.  
Very truly yours,  
[Signed Eaton, Sherburne Blake]