It frequently occurs to the patentee that a knowledge of the legal requirements of the transfer of patent rights would save him much time and trouble. Patentees should carefully scrutinize all papers offered by the parties in whose favor they are drawn, and, if possible, he should have his attorney to examine them.

There are three classes of persons in whom the patentee can vest an interest of some kind. They are an assignee, a grantee of an exclusive sectional right, and a licensee.

"An assignee is one who has transferred to him in writing the whole interest in the original patent, or any undivided part of such whole interest in every portion of the United States. And no one, unless he has such an interest transferred to him, is an assignee.

"A grantee is one who has transferred in writing the exclusive right under the patent, to make and use, and to grant to others to make and use, the thing patented, within and throughout somep. 93 specified part or portion of the United States. Such right must be an exclusive sectional right, excluding the patentee therefrom.

"A licensee is one who has transferred to him in writing, or orally, a less or different interest than either the interest in the whole patent, or an undivided part of such whole interest, or an exclusive sectional interest." (Potter vs. Holland, 1 Fish, 327.)

If a man were to give another an orange he would simply say, "I give you this orange"; but if the transaction be intrusted to a lawyer to draw up according to the requirements of law, says the Observer, he would most probably put it in the following language: "I hereby give, grant, and convey to you all my interest, right, title, and advantage of and in said orange, together with its rind, skin, juice, pulp, and pits, and all right and advantage therein with full power to bite, suck, cut, or otherwise eat the same or to give the same away, as fully and effectually as I, the said A. B., am now entitled to cut, bite, or otherwise eat the same, or give away the same with or without the rind, skin, juice, pulp, or pits; anything hereinbefore or hereafter or in any other deed or deeds, instruments of nature or kind whatsoever to the contrary in anywise notwithstanding."

It is always better and more satisfactory top. 94 have assignments, royalty contracts, agreements, etc., drawn up specially to accord with the facts, details, and covenants of each particular case; and there is no one probably better able to do this than the attorney who secured the patent. However, if in the case the parties to the transaction cannot well delay proceedings to have the papers prepared by an attorney, by adhering to the following forms in any such transactions, both the purchaser and seller may rest assured that their rights are protected.

ASSIGNMENT OF ENTIRE INTEREST IN
LETTERS PATENT

Whereas, I, Richard Doe, of Columbus, County of Franklin, State of Ohio, did obtain Letters Patent of the United States for an improvement in Typewriting Machines, which Letters Patent are numbered 000,000, and bear date January 1, 1901; and whereas I am now sole owner of said patent, and of all rights under the same; and whereas the Ohio Typewriter Company, a corporation, of Cincinnati, County of Hamilton, and State of Ohio, is desirous of acquiring an interest in the same:

Now, therefore, to all whom it may concern, be it known, that for and in consideration of the sum of five thousand dollars to me in hand paid by the aforesaid corporation, the receipt of whichp. 95 is hereby acknowledged, I, the said Richard Doe have sold, assigned, and transferred, and by these presents do sell, assign, and transfer unto the said Ohio Typewriter Company, its successors and assigns, the entire right, title and interest in and to said Letters Patent and the invention therein patented; the same to be held and enjoyed by the said corporation for its own use and behoof, and for the use and behoof of its successors and assigns, to the full end of the term for which said Letters Patent are or may be granted, as fully and entirely as the same would have been held and enjoyed by me had this assignment and sale not been made.

In testimony whereof, I have hereto set my hand and affixed my seal, at Columbus, County and State aforesaid, this tenth day of January, A.D. 1901.

Richard Doe. (Seal.)

In the presence of

John Smith,

Thos. Jones.

Subscribed and acknowledged before me this tenth day of January, a.d. 1901.

John Rice,
Notary Public.

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If it is the intention of the assignor to convey to the assignee the right to recover for past infringement of the patent, a clause like the following should be added:

And for the same consideration, I do hereby sell, assign and transfer unto the aforesaid corporation, all claims and demands, both at law and in equity, which may have accrued to me by reason of the infringement of the aforesaid Letters Patent with the right to sue and recover therefor in its own name and for its own use and behoof.

ASSIGNMENT OF AN UNDIVIDED INTEREST

Whereas, I, Richard Doe, of Philadelphia, County of Philadelphia, State of Pennsylvania, did obtain Letters Patent of the United States for improvements in Locomotive Headlights, which Letters Patent are numbered 000,000, and bear the date of June 26, 1900; and whereas, John Roe, of Philadelphia, County of Philadelphia and State of Pennsylvania, is desirous of acquiring an interest in the same: Now, therefore, this indenture witnesseth, that for and in consideration of the sum of one thousand dollars to me in hand paid by said John Roe, the receipt of which is hereby acknowledged, I do hereby sell, assign, and transfer unto the said John Roe, his heirs and assigns, one undivided one-half interest in and top. 97 the aforesaid Letters Patent and the invention therein patented; the same to be held and enjoyed by the said John Roe, his heirs and assigns to the full end of the term for which said Letters Patent are or may be granted as fully and entirely as the same would have been held and enjoyed by me if this assignment and sale had not been made.

And I do hereby declare that I have not conveyed to any other party the rights and interest herein transferred to the said John Roe.

Witness my hand and seal this tenth day of January, a.d. 1901,

Richard Doe.

In the presence of

John Smith,

Thos. Jones.

Subscribed and sworn before me this tenth day of January, a.d. 1901.

John Rice,
Notary Public.

GRANT OF A TERRITORIAL INTEREST

Whereas, I, Richard Doe, of Dayton, County of Montgomery, State of Ohio, did obtain Letters Patent of the United States for improvep. 98ments in Corn-Cultivators, which Letters Patent are numbered 000,000, and bear date the first day of January, 1901, and whereas, I am now the sole owner of said patent, and of all rights under the same in the below-recited territory; and whereas, John Roe, of Indianapolis, County of Marion, State of Indiana, is desirous of acquiring an interest in the same;

Now, therefore, to all whom it may concern, be it known, that for and in consideration of the sum of one thousand dollars to me in hand paid, by the said John Roe, the receipt of which is hereby acknowledge, I, the said Richard Doe, have sold, assigned, and transferred, and by these presents do sell, assign and transfer unto the said John Roe, his heirs and assigns, the entire right, title and interest in and to said Letters Patent, and in and to the invention therein patented for the States of Indiana and Illinois, and in no other place or places; the same to be held and enjoyed by the said John Roe, his heirs and assigns, within and throughout the above specified territory, but not elsewhere, to the full end of the term for which said Letters Patent are or may be granted, as fully and entirely as the same would have been held and enjoyed by me had this assignment and sale not been made.

In testimony whereof, I have hereunto set my hand and affixed my seal this tenth day of Janup. 99ary, a.d. 1901, in the presence of the subscribing witnesses.

Richard Doe.

In the presence of

John Smith,

Thos. Jones.

On this tenth day of January, a.d. 1901, personally appeared before me Richard Doe, to me known and known to me to be the individual who executed the foregoing instrument, and who acknowledged to me that he executed the same for the purpose therein expressed.

John Rice,
Notary Public.

LICENSE:—SHOP-RIGHT

In consideration of the sum of two hundred dollars to me paid by The John Roe Company, a corporation of Pennsylvania, located in the city of Pittsburg, I do hereby license and empower said company to make and use at its foundry and machine shop in said Pittsburg, and in no other place or places, in connection with its own business only, or that of its successors and assigns, the improvements in Lathes, for which Letters Patent of the United States No. 000,000, were granted to me January 1, 1901, to the full end of thep. 100 term for which said Letters Patent are granted.

Signed and delivered at Pittsburg, in the County of Allegheny, State of Pennsylvania, this tenth day of January, A. D. 1901.

Richard Doe.

To John Roe Company,

Pittsburg, Pa.

LICENSE:—NON-EXCLUSIVE—WITH ROYALTY

This agreement, made this tenth day of January, 1901, between Richard Doe, of Wilmington, County of New Castle, State of Delaware, party of the first part, and the Metallic Railway Tie Company, of Chicago, in the County of Cook, and State of Illinois, party of the second part,

Witnesseth, that whereas Letters Patent of the United States, No. 000,000, for an improvement in Metallic Railroad-Ties, were granted to the party of the first part January 1, 1901; and whereas the party of the second part is desirous of manufacturing Metallic Railroad-Ties containing the said patented improvements:

Now, therefore, the parties hereto have agreed as follows:

I. The party of the first part hereby licenses and empowers the party of the second part to manufacture, subject to the conditions herein named, at their plant in Chicago, and in no other place or places, to the end of the term for whichp. 101 said Letters Patent were granted, Metallic Railroad-Ties containing the patented improvements, and to sell the same within the United States.

II. The party of the second part agrees to make full and true returns to the party of the first part, under oath, upon the first days of January and July in each year, of all Metallic Railroad-Ties containing said patented improvements manufactured by them.

III. The party of the second part agrees to pay the party of the first part five dollars as a license fee upon each and every thousand Metallic Railroad-Ties manufactured by the party of the second part containing the patented improvements: provided, that if the said fee be paid upon the days provided herein for semi-annual returns, or within ten days thereafter, a discount of fifty per cent, shall be made from said fee for prompt payment.

IV. The party of the second part agrees to put forth their best efforts and use due diligence in the manufacture and sale of the Metallic Railroad-Ties containing the said patented improvements, and if the royalties do not amount to five hundred dollars semi-annually, the party of the first part may terminate this license by serving a written notice upon the party of the second part.

V. Upon the failure of the party of the secondp. 102 part to make returns or to make payment of license fees, as herein provided, for thirty days after the days herein named, the party of the first part may terminate this license by serving a written notice upon the party of the second part; but the party of the second part shall not thereby be discharged from any liability to the party of the first part for any license fees due at the time of the service of such notice.

In witness whereof, the parties above named have hereto set their hands the day and year first above written, at Chicago, County of Cook, and State of Illinois.

Richard Doe,

Metallic Railroad Tie Company,

Per John Roe, President.

LICENSE:—EXCLUSIVE—WITH ROYALTY

This agreement, made this tenth day of January, 1901, between Richard Doe, of Boston, State of Massachusetts, party of the first part, and the Roe Vending Machine Company, a corporate body under the laws of the State of New Jersey, located and doing business at the city of New York, in the State of New York, party of the second part,

Witnesseth, that whereas, Letters Patent of the United States, No. 000,000, were, on the first day of January, 1901, granted to the said partyp. 103 of the first part, for improvements in Coin-Controlled Machines, and whereas said party of the second part is desirous of manufacturing and selling said patented article: Now, therefore, the parties hereto have agreed as follows:

I. The party of the first part gives to the party of the second part the exclusive right to manufacture and sell the said patented improvements, to the end of the term of said patent, subject to the conditions hereinafter named.

II. The party of the second part agrees to make full and true returns, on the first days of January and July in each year, of all machines manufactured and sold by them containing the said patented improvements in the six calendar months next preceding the date of any such notice; and if the party of the first part shall not be satisfied in any respect with any such return, then shall the party of the first part have the right, either by himself or by his attorney, to examine any and all books of account of said party of the second part concerning any items, charges, memoranda, or information relating to the manufacture or sale of said patented Coin-Controlled Machines; and upon request made, said party of the second part shall produce all such books for said examination.

III. The party of the second part agrees to pay the party of the first part five dollars as ap. 104 license fee upon every one of the said patented Coin-Controlled Machines manufactured by them, the whole of said license fee for each term of six months to be due and payable on the days hereinabove provided for semi-annual returns; provided, that if said fee be paid upon the days herein provided, or within fifteen days thereafter, a discount of fifty per cent, shall be made from said fee for prompt payment.

IV. The party of the second part agrees to pay the party of the first part at least two thousand dollars, less discount, as said license fee upon each of the semi-annual terms, even though they should not make enough of said patented machines to amount to that sum at the regular royalty of five dollars each.

V. The party of the second part shall cast, or otherwise permanently place, upon every such machine made under this license the word "Doe," and in close relation thereto the word "Patented," and the number and date of said patent.

VI. The party of the second part shall not, during the life of this license, make or sell any article which can compete in the market with said Coin-Controlled Machines.

VII. Upon the failure of the party of the second part to keep each and all of the conditions of this license and agreement, the party of the first part may, at his option, terminate thisp. 105 license, and such termination shall not release said party of the second part from any liability due at such time to the party of the first part.

In witness whereof, the above-named parties (the said Roe Vending Machine Company, by its president) have hereto set their hands the day and year first above written,

Richard Doe,

Roe Vending Machine Company,

By John Roe, President.

No general legal forms should be relied upon too implicitly as suiting particular cases, and an inventor, in order to fully protect his interests, should consult a reliable patent attorney, and have the forms properly prepared to suit his individual case.

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