CHAPTER XVI.

Assignment. Agreement to Assign.

THE eleventh section of the act of 1836 provides that "every patent shall be assignable in law, either as to the whole interest or any undivided part thereof, by any instrument in writing; which assignment, and also every grant and conveyance of the exclusive right under any patent, to make and use, and to grant to others to make and use, the thing patented within and throughout any specified part or portion of the United States, shall be recorded in the patent office within three months from the execution thereof."

This varies from the corresponding provision in the act of 1793, s. 4, which provided only for the recording of the assignment of a share, not for that of a license.

This

The inventor may assign his interest before taking out the patent,' for then he has a right which becomes property on the patent being taken out. right, or inchoate property, has been so far respected in England that the inventor may enforce an agreement made respecting it.2

1 Herbert v. Adams, 4 Mason, 15. 2 Smith v. Dickinson, supra.

An assignment of the right, before the patent is taken out, will, according to the report of Dr. Jones, who is familiarly acquainted with the practice at the patent office, enable the assignee to take out the patent originally. But this practice seems to be very questionable. The law requires the oath of the inventor himself, and contains no provision for issuing the patent to any other person except to his personal representatives in case of his decease. The effect, however, of taking out the patent in the name of the inventor and recording the assignment previously made, is the same as issuing the patent in the name of the assignee.*

As between the parties to the assignment, it has been held in Massachusetts to be valid without being recorded. But, at least, third parties are not liable to be affected by an unrecorded assignment, since to admit them to be so would render the provision for the recording nugatory. In order to enable the assignee to bring, or join in, a suit upon the patent right, it is necessary that the assignment should be recorded.

It has been intimated that possession and use are material circumstances in considering the validity of a transfer of a patent right as well as that of other

3 Digest of the Decisions on Patents, 1831, No. 20, p. 26.

4 Herbert v. Adams, 4 Mason R. 15.

⚫ Morrill v. Worthington, 14 Mass. R. 389.

personal property. A patentee, having mortgaged the patent right, continued in the notorious use of it until he became bankrupt. Lord Chancellor Eldon was inclined to the opinion that the patent right passed to his assignees, that is, that the title of the mortgagee was not good against the assignees, and ordered an action at law to try the question. It does not appear, however, that it came to a trial at law. In the United States the assignment, in such case, would probably be good if recorded.

On an agreement for the assignment of a patent, it has been held that a covenant to assign a patent right in as full a manner as the inventor had engaged to assign it, to the covenantor, does not necessarily imply that there shall be a covenant of warranty in the assignment."

The defendant covenanted to assign to the plaintiff a sixteenth part of a patent right to a machine for cutting files, of which one Hatch was the inventor and patentee; and on receiving an assignment thereof from Hatch, transferred it to the plaintiff, without having first caused Hatch's assignment to be registered in the office of the secretary of state; this was held not to be a breach of the covenant. The court said, that it was for the plaintiff to cause the assignment of Hatch to be registered, as in cases of convey

Ex parte Granger, Evans's Statutes, v. 4, p. 67, n. ' Morrill v. Worthington, 14 Mass. R. 389.

ance of real estate which the purchaser always procures to be recorded; and that the defendant might legally assign the right which he acquired from Hatch, before such registry was made.

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A question on the construction of an assignment, whether it granted the right of one machine only, or that of making, using and vending any number, has been brought before the Supreme Court in Maine. The defendants conveyed to the plaintiffs "four clapboard machines and two shingle machines, in Dwight and Stone's building, in Livermore, on Androscoggin river; and likewise the patent right for Livermore and Jay, all that is east of the Androscoggin river, and the town of Dixfield; we sell all the above machinery, and right for the above towns, to make, use and vend to others to use, during the term of the patent, which is fourteen years from September 3, 1813." It was contended that, only one patent right was intended to be conveyed; to be applied, so far as it was applicable, to both the kinds of machine sold. But it was held, that this was a conveyance not only of the clapboard and shingle machines in Stone's building, and the right to use them, but also of the patent right to construct and use machines of both descriptions within the territory described in the conveyance."

Where the patentee took a lease of a shop in which was erected a machine patented by himself, with an agreement in the lease to deliver up the premises, including the machine, at the end of the term, in good condition. to the lessor, Mr. Justice Washington ruled that this was the consent of the patentee in writing that the lessor should use the machine, himself, or by his servants, or let it to others to be used.10

The act of Congress contains no provision similar to that inserted in the English patents, forbidding the assignment to a greater number than five persons. This limitation in English letters-patent is inserted to prevent the formation of companies, in contravention of the bubble act.

The assignment of rights in a patent that turns out to be void, presents the question whether the assignor can, in such case, compel payment of the price; and, in the second place, whether the assignee, on discovery of the patent being void, shall recover back the price, or any part of it, previously paid by him.

Where the sale is attended with fraud on the part of the assignor, the case is plain; if he sell a right in a patent which he knew to be void, he cannot recover the price, if not paid, and if paid, he is liable to refund it.

10

Reutgen v. Kanowrs and Grant, 1 Wash. C. C. R. 168.