Abbildungen der Seite
PDF
EPUB

CHAPTER XIII.

ASSIGNMENTS OF LETTERS PATENT AND LICENCES.

POWER both to assign and to license is by implication given to the patentee by the letters patent. To be a valid instrument, an assignment ought to be a deed under hand and seal. Previous to the Patent Law Amendment Act, 1852, letters patent contained a clause avoiding them, in case they became vested in more than twelve persons at the same time. But the 36th section of that Act declares that, notwithstanding any proviso that may exist in former letters patent, it shall be lawful for a larger number than twelve persons, hereafter, to have a legal and beneficial interest in such letters patent. In case of the death of the patentee before the expiration of the letters patent, they pass to his executors or administrators, and not to his heir.

It is usual to introduce into assignments covenants on the part of the patentee, that he is the first and true inventor, and that the patent is a valid one; and it may be well to make the patentee covenant to do what is necessary, in the event of an application to the Privy Council for a confirmation of the patent.

In an assignment of a patent granted in this country subsequently to the grant of a foreign patent for the same invention, it is important (in consequence of the operation of the 25th section of the Patent Law Amendment Act, 1852) that the foreign patent should be kept on foot, and the vendor should enter into a covenant for that purpose. A purchaser sometimes requires the whole of the annuities in the previous

foreign patent to be paid up. The same course may become necessary in the case of a licence, and is certainly desirable where the licensee may incur expense and change his position in consequence of the licence, and relying upon its continuance.

It is no answer to an action to enforce a contract for the purchase of a patent for a stipulated sum (Hall v. Conder, 2 C. B. N. s. 22), nor to an action to enforce payment of a royalty under a licence (Smith v. Scott, 5 Jur. N. s. 1356), to plead that the patent is wholly worthless and of no utility, and that the subject-matter of the patent was not the novel invention of the plaintiff, there being no proof of fraud, and no express warranty. Such a contract was held merely to have the effect of placing the purchaser in the same situation as the seller was with reference to the patent, and the purchaser is bound to take it with all its faults. This being so, it is desirable to consider whether or not an express warranty of the patent should not be introduced into contracts of this nature. See also Smith v. Neale (2 C. B. N. s. 67).

The purchaser, in addition, ought invariably to have a search made by a competent person at the Patent Office as to the novelty of the invention, prior to his entering into a contract for the purchase.

A licensee during the continuance of the licence cannot set up as a defence to an action for the royalty that the invention was not new or not useful, or that the patentee was not the first inventor, or that the specification is insufficient. (Noton v. Brooks, 7 H. & N. 499; Trotman v. Wood, 16 C. B. N. s. 479; Adie v. Clark, L. R. 2 App. Ca. 423.) But when in such a case the claim in the specification is susceptible of two constructions, one of which would make the specification bad and the other and more natural one would make it good, the licensee may insist that the latter is

the true construction (Trotman v. Wood, 16 C. B. N. s. 479). Even where no formal licence has been executed, a person who has paid money in the nature of a royalty will not be allowed to dispute the validity of the patent (Crossley v. Dixon, 10 H. L. C. 293). Neither will a patentee after assigning all his interest in a patent for a valuable consideration be allowed, in an action against himself for an infringement, to raise the question whether the patent is void for want of novelty (Walton v. Lavater, 8 C. B. N. s. 162, 187); and see also Chambers v. Crichley (33 Bea. 374). Furthermore, a licensee will not be permitted to use the invention without payment of the royalties he has covenanted to pay, even after the patent has been found invalid in proceedings between other parties (The Grover and Baker Sewing Machine Company v. Millard, 8 Jur. N. s. 713). But where judgment was given by consent before declaration filed in an action by a patentee against the members of a partnership firm for an alleged infringement, and the defendants immediately took a licence to use the invention, and the patentee subsequently instituted a suit to restrain infringement against the defendants at law and two fresh partners, it was held that the defendants in equity were not estopped from disputing the validity of the patent (Goucher v. Clayton, 11 Jur. N. s. 107).

A licensee has, however, a right to have it ascertained what is the field covered by the specification as properly construed, and is entitled to say that he has not gone inside that field. He may seek to have the boundary of the patentee's invention defined with the view of showing that he had not rendered himself iable to make the payments stipulated in the licence (Adie v. Clark, L. R. 4 App. Ca. 423). And after a licence has been determined, a licensee is at liberty to dispute the validity of a patent in a suit for an injunc

tion to restrain an infringement. (Dangerfield v. Jones, 13 L. T. N. s. 142; and see Neilson v. Fothergill, 1 W. P. C. 290.)

A patentee will not be allowed to publish advertisements and circulars calculated to deter the public from dealing with his licensee (Clark v. Adie, 21 W. R. 764).

Bearing in mind the decision in Wallington v. Dale (ante, p. 186) it may be well to insert in an assignment a covenant binding the assignor not to enter a disclaimer or file a memorandum of alteration without the written anthority of the assignee.

Licences have various intents. In their most general form, they are tantamount to an assignment of the patentee's whole rights. But usually they are for a term shorter than that mentioned in the patent, and sometimes they do not extend to the whole of the invention. A licence may be restricted, likewise, to a particular district. What is called an exclusive licence is one by which the patentee binds himself not to empower any other person to exercise the patent privilege, either at all or within a given district.

A licence to A. to manufacture a patent article is an authority to his vendees to vend it without the consent of the patentee (Thomas v. Hunt, 17 C. B. N. s. 183).

The consideration for the grant of a licence is usually an immediate money payment, or a periodical payment, which may be either of a certain amount, or dependent upon the extent to which the licensee uses. the invention. In the last case, care should be taken not to create a partnership when no partnership is contemplated. See Ridgway v. Philip (1 Cr. M. & R. 415); Elgie v. Webster (5 M. & W. 518).

In preparing licences, the following points should be attended to :-The patentee ought to enter into the usual qualified covenants that the patent is valid, and

The licensee

that he has a right to grant the licence. should covenant to pay any sums, the payment of which is postponed to a future time. Where the payments are to vary with the extent to which the licensee shall use the invention, there ought to be covenants, on the part of the licensee, to render properly verified accounts, and to allow periodical inspections of books, machinery, stock, &c. If it be intended that the licensee should not be permitted to question the validity of the patent, or the sufficiency of the specification, recitals should be introduced affirming these points, or express covenants debarring the licensee from raising the question. But recitals can only affirm the facts as they stood at the time of the execution of the deed; covenants may be made to apply to all future time. Recitals, however, will have the effect of stopping the parties from disputing the facts recited. (Bowman v. Taylor, 2 Ad. & El. 278; Hills v. Laming, 9 Exch. 256.) In the absence of such recitals or covenants, a licensee, when sued for money reserved by the licence, may set up, as a defence, that the patent is void, where the contract is executory, or where there is the taint of fraud (Hayne v. Maltby, 3 T. R. 438); and see Pidding v. Franks (1 Mac. and Gord. 56). On the other hand, refer to the case of Lawes v. Purser (6 Ell. and Bl. 930). This was an action brought by a patentee upon an agreement whereby the defendant contracted to pay a certain sum per ton of an article manufactured and sold by him, by permission of the plaintiff to him given at his request, the sole manufacture and sale of such article being the subject of the plaintiff's letters patent. The invention having been used by the defendant, he refused to pay the stipulated sum, pleading that the letters patent were void, and that he had a right to make and sell the article without licence. It was held

« ZurückWeiter »