The following digest will be found to contain much useful information for the patentee, it being a carefully selected list of decisions affecting assignments, territorial grants, licenses, State laws, etc.; including those rendered by the Supreme Court of the United States, the Circuit Court of Appeals, State Courts, and of various Commissioners of Patents, all of which decisions enunciate well-settled and controlling principles of Patent Law.

Assignments of patents are not required to be under seal. The statutes simply provide that "every patent, or any interest therein shall be assignable in law by an instrument in writing." (Gottfried vs. Miller, U. S. S. C. Decided Jan. 23, 1882.)

A contract assigning a patent and all future improvements thereon is enforceable against assignees of such improvements who take notice of the contract. (Westinghouse Air Brake Co. vs. Chicago Brake and Mfg. Co., 85 F. R., 786.)

Each co-owner of a patent may use his rightp. 80 without the concurrence of the others and license at will. (Washburn & Moen Co. vs. Chicago Wire Fence Co., 109 Ill., 71.)

Owners of a patent are tenants in common, and each, as an incident of his ownership, has the right to use the patent or manufacture under it. But neither can be compelled by his co-owner to join in such use or work, or be liable for the losses which may occur, or to account for the profits which may arise from such use. (De Witt vs. Elmira Nobles Mfg. Co., 12 N. Y. Spur., 301.)

Joint owners of a patent, right are not copartners, and in the absence of any express contract each is at liberty to use his moiety as he may think fit, without any liability to or accounting to the other for profits or losses. (Vose vs. Singer, 4 Allen (Mass.), 226; vide Pitt vs. Hall, 3 Blatch., 201.)

Although an assignment of patent is not recorded within three months, it is binding on the assignor, and he cannot sell the patent again. (Ex parte Waters, Com. Dec., 1899, p. 42.)

A verbal license or interest in an invention has no effect as against a subsequent assignee without notice of such verbal license or interest. (U. S. S. C., Gates Iron Works vs. Fraser et al., 1894, C. D., 304.)

An assignment to assign future patents, in consideration of the assignee's paying the expense ofp. 81 taking them out, is broken by his refusal to pay for and take out a particular patent when requested, and a subsequent assignment to another conveys a perfect title. (Buck vs. Timony, 78 Fed. Rep., 487.)

Any assignment which does not convey to the assignee the entire and unqualified monopoly which the patentee holds in the territory specified, or an undivided interest in the entire monopoly, is a mere license. (Sanford vs. Messer, 2 O. G., 470.)

When a party does license, grant, and convey any invention which he may hereafter make, this gives only an equitable right to have an assignment made, and this right may be defeated by assignment of the patent to a purchaser for value without notice of this equity. (Regan Vapor Engine Co. vs. Pacific Gas Engine Co. (Nineth Cir.), 7 U. S., App., 73.)

A territorial grantee cannot be restrained from advertising and selling within his territory, even though the purchasers may take the patented article outside the vendor's territory. (Hatch vs. Hall, 22 Fed. Rep., 483.)

One who buys patented articles of manufacture from an assignee for a specified territory becomes possessed of an absolute property in such articles, unrestricted in time or place. (U. S. S. C., Keller et al. vs. Standard Folding Bed Co., 71 O. G., 451.)p. 82

The sale of a patented machine by one authorized to sell, conveys the whole ownership to the purchaser, who may sell it again to another. (Morgan Envelope Co. vs. Albany Perforated Wrapping Paper Co., 152 U. S. 425.)

Every person who pays the patentee for a license to use his process becomes the owner of the product, and may sell it to whom he pleases, or apply it to any purpose, unless he binds himself by covenants to restrict his rights of making and vending certain articles that may interfere with the special business of some other licensee. (Met. Washing Machine Co. vs. Earl, 2 Fish., 203; 2 Wall., Jr., 230.)

A license is not forfeitable for non-payment of royalties in the absence of express provisions to that effect. (Wagner Typewriter Co. vs. Watkins, 84 Fed. Rep., 57; 1898.)

A shop right is a personal license and is not assignable. (Gibbs vs. Hoefner, 19 Fed. Rep., 323; 22 Blatch., 36.)

A license to a person to use an invention only "at his own establishment" does not authorize a use at an establishment owned by him and others. (Rubber Co. vs. Goodyear, 9 Wallace, 788.)

A license is not transferable unless its terms so state. (Olmer vs. Rumford Chemical Co., 109 U. S., 75.)

A license merely to make and not to sell doesp. 83 not impair the patent owner's right to sue for infringement outside of the license; and the purchaser of the licensee's tools and materials would not carry the right to sell the product made thereon. (American Graphophone Co. vs. Walcut, 87 Fed. Rep., 556; 1898.)

A license to use a machine carries with it the right to repair the machine, and replace worn parts until the essential original parts of the machine have disappeared. (Robinson on Patents, Sec. 827.)

A lawful sale of a patented article by a patentee or grantee, within his own territory, carries with it the right to use such article throughout the whole United States. (Adams vs. Burke, 5 O.G., 118; Hobbie vs. Smith. 27 Fed. Rep., 636.)

When an applicant in certain instruments assigned his right, title, and interest in an invention, retaining for himself the exclusive right to employ the invention in the manufacture of a certain class of machines, Held, that such instruments do not convey the entire interest in the invention or any undivided part thereof, and they are construed to be nothing more than licenses. (Ex parte Rosback, 89 O. G., 705. Decided Oct. 5, 1899.)

An implied license to use a patented improvement without payment of any royalties during the continuance of employment of the inventor, andp. 84 thereafter, on the same terms and royalties fixed for other parties, is shown where the inventor applies the patent to his employer's work without any agreement for compensation for its use further than a notice that he would require pay after his employment terminated. (Keys vs. Eureka Consol. Min. Co., U. S. S. C., 158 U. S., 150.)

A breach of a covenant in a license does not work a forfeiture of the license unless it is so expressly agreed. (Consol. Middlings Purifier Co. vs. Wolf, 37 O. G., 567.)

A patent right, like any other personal property, is understood by Congress to vest in the executors and administrators of the patentee, if he dies without having assigned it. (Shaw Relief Valve Co. vs. City of New Bedford, 19th Fed. Rep., 758.)

A patent to a dead man at the time of its grant is not void for the want of a grantee, but vests in his heirs or assigns. (U. S. S. C, De La Vergne Ref. Machine Co. vs. Featherstone, 1893, C. D., 181.)

A court of equity may direct a sale of an inventor's interest in his patent to satisfy a judgment against him, and will require the patentee to assign as provided in Rev. Stat., Sec. 4898, and if he refuses, will appoint a trustee to make the assignment. (Murray vs. Ager, 20 O. G., 1311.)

A patent right cannot be seized and sold on execution. (Carver vs. Peck, 131 Mass., 291.)p. 85

A receiver cannot, under his general powers, convey the legal title to a patent (Adams vs. Howard, 23 Blatch., 27), but a court may compel an insolvent to assign his patent to a trustee or receiver. (Pacific Bank vs. Robinson, 20 O. G., 1314; Murray vs. Ager, 20 O. G., 1311.)

A patentee who assigns his patent cannot, when sued for infringement, contest the validity thereof. (Griffith vs. Shaw, 89 Fed. Rep., 313.)

RULES OF PRACTICE

The following from the "Rules of Practice in the United States Patent Office" may be perused with interest to the patentee; a copy of which, together with a copy of the "Patent Laws," will be mailed free to any person upon addressing the Hon. Commissioner of Patents, Washington, D. C., requesting the same; these being the only books or pamphlets published by the Office for gratuitous distribution.

Every patent or any interest therein shall be assignable in law by an instrument in writing; and the patentee or his assigns or legal representatives may, in like manner, grant and convey an exclusive right under the patent to the whole or any specified part of the United States. Interests in patents may be vested in assignees, in grantees of exclusive sectional rights, in mortgagees, and in licensees.p. 86

An assignee is a transferee of the whole interest of the original patent or of an undivided part of such whole interest, extending to every portion of the United States. The assignment must be written or printed and duly signed.

A grantee acquires by the grant the exclusive right under the patent to make and use and to grant to others the right to make and use, the thing patented within and throughout some specified part of the United States, excluding the patentee therefrom. The grant must be written or printed and be duly signed.

A mortgage must be written or printed and duly signed.

A licensee takes an interest less than or different from either of the others. A license may be oral, written, or printed, and if written or printed, must be duly signed.

An assignment, grant, or conveyance of a patent will be void as against any subsequent purchaser or mortgagee for a valuable consideration without notice unless recorded in the Patent Office within three months from the date thereof. If any such assignment, grant, or conveyance of any patent shall be acknowledged before any notary public of the several States or territories, or the District of Columbia,p. 87 or any commissioner of the United States Circuit Court, or before any secretary of legation, or consular officer authorized to administer oaths or perform notarial acts under Section 1750 of the Revised Statutes, the certificate of such acknowledgment, under the hand and official seal of such notary or other officer, shall be prima facie evidence of the execution of such assignment, grant, or conveyance.

No instrument will be recorded which does not, in the judgment of the Commissioner, amount to an assignment, grant, mortgage, lien, encumbrance, or license, or which does not affect the title of the patent or invention to which it relates. Such instruments should identify the patent by date and number; or, if the invention is unpatented, the name of the inventor, the serial number, and date of the application should be stated.

Assignments which are made conditional on the performance of certain stipulations, as the conditional payment of money, if recorded in the office are regarded as absolute assignments until cancelled with the written consent of both parties, or by the decree of a competent court. The office has no means for determining whether such conditions have been filled. (Rev. Stat., Sec. 4898.)p. 88

STATE LAWS ON SELLING PATENTS

In some States, laws have been passed by which attempts have been made to regulate or prevent the sale of patent rights within their borders, by imposing upon patentees or their agents certain State restrictions, such as requiring the filing of copies of patents, making and filing proofs, taking out licenses, procuring certificates, complying with forms, or prescribing the terms of a note to be given for a patent.

While it has never been squarely brought before the United States Supreme Court, with the result that much conflicting legislation has been enacted by the different States, it may be said, as a general proposition, that a State or municipality, through the medium of its Legislature or officials, has no constitutional right to make or enforce laws which in any way affect or control the transfer, sale, or other disposition of United States Letters Patent; or to interfere in any manner with the patentee going into the open market anywhere to sell his rights conferred by the patent.

It is a well-established principle of law that Congress has exclusive right and power to legislate on the subjects specially assigned to it by the Constitution, while power is delegated to the several States to legislate on those subjects notp. 89 thus expressly placed within the control of Congress. It would seem clear that there can be no State interference with the rights which are incident to the grant of Letters Patent and expressly conferred thereby.

Ohio was the first State attempting to place restrictions upon the handling of patent rights, which, in 1868, passed an act requiring any person, before offering for sale a patent right in any county, to submit the patent to the Probate Judge of the county, and make affidavit before said judge that the patent was in force, and that the applicant had the right to sell, and also requiring that any written obligation taken on the sale of such right should bear on its face the words, "Given for a Patent Right."

The portion of the Ohio statute relating to the making and filing proofs was subsequently made the law in Illinois, Minnesota, Indiana, Nebraska, and Kansas, while the requirement that written obligations given for a patent right should bear such statement written upon its face was made the law in Vermont, Michigan, Pennsylvania, Wisconsin, New York, Connecticut, and Arkansas.

In view of the decisions rendered by the Supreme Court of the United States in the cases of ex parte Robinson, 2 Bissel, 309, and Webber vs. Virginia, 103 U. S., 347; 20 O. G., 136, some of the States repealed their statutes relating to thep. 90 filing of proofs, while others did not—notably Indiana and Kansas, where the statute still remains in force.

While the Supreme Court in the above cases did not decide the constitutionality of the State statutes, it was clearly indicated that property in inventions existed by virtue of the laws of Congress, and that no State had any right to interfere with its enjoyment, or to annex conditions to the grant, and that the patentee had a right to go into the open market anywhere in the United States and sell his property. It also established the proposition that a State may require the taking out of a license for the sale of the manufactured article covered by the patent; and the patentee should keep in mind the distinction between selling patents, or patent privileges, and the selling of goods or manufactured articles, as all who sell goods, whether patented or not, must conform with the local and State laws relating to same.

The statute requiring the insertion in written obligations of the words, "Given for a Patent Right," has been declared unconstitutional by the higher State Courts in Illinois, Michigan, Minnesota, and Nebraska, and by the Circuit Courts in the southern district of Ohio, and in the district of Indiana; while its validity has been sustained by the courts of last resort in New York, Pennsylvania, Ohio, Indiana, and Kansas. Therefore, thep. 91 validity of the State statutes on the point referred to may be regarded as finally established in the last-named States until brought before the Supreme Court of the United States.

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