CHAPTER XVI. Property in Patents.-Assignments.-Licenses. 1. THE right to a patent is assignable and devisable; it is personalty, and goes to the executor. If obtained by an uncertificated bankrupt, the patent vests in his assignees. The schemes which a man may have in his own head before he obtains his certificate, (a) do not pass; nor can the assignees require him to assign them, provided he does not carry his schemes into effect till after he has obtained his certificate. But if he has availed himself of his knowledge and skill, and thereby acquired a beneficial interest which may be the subject of assignment, that interest will pass to the assignees. (b) It seems doubtful whether an invention provisionally protected would pass. 2. Patents granted before the passing of the recent statute, contain a condition for making void the patent if it becomes vested in more than twelve persons. Originally the condition taken from the Bubble Act, which before its repeal in 1826 used to be recited, limited the liberty of holding a patent to five persons. In May, 1832, Sir Thomas Denman, then Attorney-General, with the consent of the Board of Trade, substituted the provision, that no more than twelve persons should be interested. (c) 3. Stat. 15 & 16 Vict. cap. 83, s. 37, enacts, that notwithstanding any proviso in former letters patent, it shall be (a) As to a secret, see in re Feaver, Court of Bankruptcy, Times, Feb. 20, 1843. (b) Hesse v. Stevenson, 3 Bos. & Pull. 565. See Bloxam v. Elsee, 6 B. & C. 169. (c) Holroyd on Patents, 137. L lawful for a larger number than twelve persons hereafter to have a legal or beneficial interest in such letters patent. With regard to assignments made before the passing of this Act, it may be noticed that assignments to trustees for the benefit of creditors, though more than twelve, do not avoid a patent. (d) And that it is wholly immaterial in how many persons licenses to use a patent, whether exclusive or not, may have become vested.(e) 4. By stat. 15 & 16 Vict. cap. 83, s. 35, the grantee or grantees of letters patent to be hereafter granted may assign the letters patent for England, Scotland, or Ireland respectively, as effectually as if the letters patent had been originally granted for England, or Scotland, or Ireland only; and the assignee or assignees shall have the same rights of action and remedies, and shall be subject to the like actions and suits, as he or they should and would have been subject to upon the assignment of letters patent granted to England, Ireland, or Scotland before the passing of this Act. 5. The assignment may be by deed or will. A monopoly privilege cannot be assigned at all, unless a power to do so is given by the Crown. As licenses must be under the hand and seal of the patentee, so also must assignments.(ƒ) Under a grant of letters patent reserving the legal interest to the patentee until the determination of a pending suit, on the happening of that event, the legal interest passes to the grantee.(g) 6. The assignor may covenant that the patentee is the true inventor; that the specification is sufficient; that the patent is valid; that he has a right to assign, for quiet enjoyment, for further assurance; that the patentee will do all things necessary to enable the assignee to obtain patents in foreign countries, either in his own name or in the name of the original inventor; and that he will aid in procuring confirmation or extension. A power of attorney to receive and (d) MacAlpine v. Mangnall, 3 C. B. 496; Bloxam v. Elsee, 1 C. & P. 558, 6 B. & C. 169. (e) Protheroe v. May, 5 M. & W. 675. (f) See Sheppard's Touchstone, 231; Duvergier v. Fellows, 10 B. & C. 829. See Power v. Walker, 3 M. & S. 7; Davidson v. Bohn, 5 C. B. 460; Leader v. Purday, 7 C. B. 12. (g) Cartwright v. Amatt, 2 Bos. & Pull. 43. sue for royalties under existing licenses, in the name of the patentee, may, in some cases, be convenient. If the assignment is of a partial interest, it should contain covenants by the patentee to allow his name to be used in actions and suits for infringements, and to produce the patent in evidence. 7. The assignment must be perfected by an entry in the register of proprietors. Letters patent have hitherto been the most unmarketable of all titles. It has been said, "An objection to the title acquired by a patentee arises out of the nondescript nature of the grant, and the almost total impossibility of ascertaining whether it is encumbered, so that, on the sale of a patent, the purchaser must take his chance of the sufficiency of the title, and rely almost entirely on the covenants of the vendor. As it is quite unsettled whether the letters patent pass any legal estate, (h) and what is the effect of the bodily possession of the letters patent, it follows, that if a patentee mortgages or grants licenses without delivering up the letters patent, and there is no notice of the charge indorsed, and the patentee then sells, and the purchaser takes possession of the letters patent, it is uncertain whether he takes subject to the mortgage or license, or not."(i)-14 Jurist, 462. 8. These difficulties will be remedied for the future by the enactment that, until an entry shall have been made in the register of proprietors, the grantee or grantees shall be deemed and taken to be the sole and exclusive proprietor or proprietors of such letters patent, and of all the licenses or privileges thereby given and granted.(j) The certificate of the entry of an assignment or license is subject to a stamp-duty of five shillings, and the certificate of the assignment or license, five shillings. From a perusal of the rest of the section, it would appear that, in enacting this clause, the Legislature had rather in view the facilitating proceedings by scire facias, than the rendering the titles to letters patent secure and marketable.(k) "Letters (h) Another writer in the Jurist, vol. vii. pt. 2, p. 242, says, patent do not profess to vest in the grantee any estate; they merely grant him a power." See 7 Jarm. by Sweet, 536. (i) See Jones v. Jones, 8 Sim. 633; Wilmot v. Pike, 5 Hare, 14. Stat. 15 & 16 Vict. cap. 83, s. 35. (k) See Report on the Patent Law Amendment Bills, 1851, p. 376. But it is to be hoped that convenience, as well as the analogy of the construction put upon stat. 5 & 6 Wm. 4, cap. 83, s. 4, will induce the courts to construe the word grantee as meaning the person appearing on the register to be the grantee either of the Crown or the original patentee. (1) 9. Erroneous or improper entries in the register of proprietors may be expunged by an order of the Master of the Rolls, or of any of the courts of common law in term time, or any judge thereof in vacation. It is enacted, that if any person shall deem himself aggrieved by any entry made in the register of proprietors, it shall be lawful for such person to apply by motion to the Master of the Rolls, or to any of the courts of common law at Westminster in term time, or by summons to a judge of any of the said courts in vacation, for an order that such entry may be expunged, vacated, or varied; and upon any such application the Master of the Rolls, or such court or judge respectively, may make such order for expunging, vacating, or varying such entry, and as to the costs of such application to the said Master of the Rolls, as to such court or judge may seem fit; and the officer having the care and custody of such register, on the production to him of any such order for expunging, vacating, or varying any such entry, shall expunge, vacate, or vary the same according to the requisitions of such order. (m) 10. A mere licensee cannot maintain any action against any one else for the piracy of the invention.(n) But perhaps the proprietor of any partial interest, or a person having an exclusive license from the patentee, might do so in respect of any injury to his separate interest. (o) Or he might join with all the other persons interested in the patent in any action or suit relating to any matter affecting their common interests.(p) But the better opinion would seem to be, that a licensee, or a person who has only a grant from the patentee, of the sole right in a particular locality, or to exercise some only of the inventions in respect of which a sole right is conferred by the (1) See Russell v. Ledsam, 14 M. & W. 574; Ledsam v. Russell, 16 M. & W. 633. (m) Stat. 15 & 16 Vict. cap. 83, s. 38. Derosne v. Fairie, per Lord Abinger, N. P. Webst. P. C. 154. (p) Coryton v. Lithebye, 2 Saund. 115, 116; Weller v. Baker, Wils. 423. patent, (q) has no such interest as will enable him to maintain a separate action in his own name. (r) Until a recent alteration of the law enabling him, it was held in the United States that the grantee for a particular district was not an assignee of the patent, and could not sue. (s) 11. A license appears to be a personal privilege which cannot be granted over to another by the licensee. At any rate, it cannot be divided and assigned in part.(t) 12. A license should be under the hand and seal of the patentee; but it will not be void though it is by parol only. To grant a license not under seal may be a contempt of the Crown, but the man to whom it is granted, and who has derived a benefit from it, must pay the price of it. If a person to whom a license to use a patent is granted by an instrument not under seal, keeps it, and acts upon it, he will be taken to have waived all objection on the score of the want of a seal.(u) 13. A license to use a patented invention, though under seal, need not be by deed. If it does not appear to have been delivered as a deed, it does not require a stamp, as a deed not otherwise charged within the meaning of 55 Geo. 3, cap. 189, sched. part 1, tit. Deed. (x) 14. It will be convenient that licenses should contain provisoes against alienation. A stipulation may be introduced, that the inventor, on being indemnified, shall commence and prosecute actions or suits, or allow his name to be used by the licensee in proceedings against persons pirating the invention. The right to damages to be awarded in such actions, may be reserved to the patentee. 15. By granting or accepting an interest or license as (g) See American cases, Blanchard v. Eldridge, J. W. Wallace Rep. 337, cited Putnam's Digest for 1850, tit. Patent, 3; Gayler v. Wilder, 10 Howard's Supreme Court Reports, 477, 494. (r) See Co. Litt. 164, 165; Lord Mountjoy's case, Godbolt, 17; Boosey v. Davidson, 13 Q. B. 259; Protheroe v. May, 5 M. & W. 675. See (8) Tyler v. Tuel, 6 Cranch. R. 324, cited Curtis on Patents, 310. (t) Brooks v. Byam, 2 Story Rep. 544; Com. Dig. Grant, 9. Protheroe v. May, 5 M. & W. 675, 684; Pidding v. Franks, 1 MacNaght. & Gord. 593. (u) Chanter v. Dewhurst, 12 M. & W. 823. See in this case the form of a count in assumpsit, for money due for the grant of a license. (x) Chanter v. Johnson, 14 M. & W. 408. |