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or of an application for a patent, or for the reissue of a patent, the pendency of any particular case before the office, or the subject matter of any particular application; except in the case of interference proceedings, where the parties are given such information respecting each other's applications as is necessary for them to properly present their cases (41).
After a patent has issued, the model, specification, drawings, and all documents relating to the case are subject to general inspection, and copies, except of the model, will be furnished at the rates specified by the Patent Office.
(41) U. S. R. S., Sec. 4902.
TITLE, CONVEYANCES, AND CONTRACTS RELATING TO
8 41. Statute. The Patent Act provides that: “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 his patent to the whole or any specified part of the United States. An assignment, grant, or conveyance shall be void as against any subsequent purchaser or mortgagee for a valuable consideration, without notice, unless it is recorded in the Patent Office within three months from the date thereof”; and also that acknowledgment shall be prima facie evidence of the execution of any such instrument (1).
As patents are wholly the creatures of statute, the legal title to them can not be acquired except in the manner provided by the statute; but equitable interests may be acquired otherwise (2). In carrying out the provisions of this Act, the Patent Office has adopted the following definitions:
(1) U. S. R. S., Sec. 4898.
(2) Walker on Patents, Sec. 274. It has been seen above that rights in unpatented inventions and pending applications are assignable. See 23.
§ 42. Assignment, grant, license, and recording. An assignment is a transfer of the whole interest of the original patent or of an undivided part of such whole interest, extending to every part of the United States (3). It must be in writing (4).
A grant confers the exclusive right, under the patent, to make, use, and vend, and to grant to others the right to make, use and vend the thing patented within and throughout some specific part of the United States, excluding the patentee therefrom (3). A grant must likewise be in writing.
A license confers an interest less than or different from an assignment or a grant. A license may be oral or written (3).
No instrument will be recorded which is not in the English language, and which does not, in the judgment of the Commissioner, amount to an assignment, grant, mortgage, lien, incumbrance, or license, or which does not affect the title of the patent to which it relates. Every such instrument should also identify the patent by date and number (5).
§ 43. Conditional assignments. Assignments which are made conditional on the performance of certain stipulations, as the payment of money, if recorded in the Patent Office, are regarded as absolute assignments until cancelled with the written consent of both parties, or by the decree of a competent court; the reason for this rule
(3) Rule 196.
being that the office has no means of determining whether or not the conditions have been fulfilled (6).
§ 44. Operation and effect of license. Any conveyance of a right under a patent, which does not amount to an assignment or a grant, is a license. As the patentee is granted, under his patent, the exclusive right to make use and sell his device, he may by license, transfer to another any one or more of his rights under the patent, without transferring them all-for example, he may give another the exclusive right to make, or to use, or to sell, or to make and use, or to make and sell, or to use and sell; or the exclusive right to make, use, and sell for certain purposes, but for no others (7).
§ 44a. No implied warranty of validity. An assignment grant, or license carries with it no implied warranty of the validity of the patent, and a licensee sued by the licensor for royalties, cannot defend by showing merely that the patent is invalid; the reason for this rule being, as stated in a leading case on the subject (8), that the licensee may nevertheless have had all the benefit of a valid patent, because his exclusive title may never have been disputed. As long as he continues to exercise the rights which the license purports to give him, it will be presumed that he is acting under the license, and there will be a corresponding obligation on his part to pay the royalties reserved; the rule, as there stated, being “that something corresponding to an eviction must be proved if a licensee would defend against an action for royal
ties.” And in other cases it has been held, reasoning on the similarity of a licensee's interest to a leasehold estate in realty, that a license can show facts amounting to an eviction where such have occurred. It would amount to an eviction if the patent is repealed in an action brought by the United States for such purpose; or if it is declared void in an interference proceeding brought under Section 4918 of the Revised Statutes (9), or in an action for infringement (10), as in all these cases the licensee is disturbed in his exclusive possession.
A carefully drawn contract of assignment, grant, or license, should of course provide for all the contingencies above noted, by express provisions, so as to leave no room for doubt on the question of the rights of the parties in case the patent is afterwards found invalid.
§ 45. Suggestions in regard to contracts relating to patents. Difficulties have often arisen in the construction of contracts wherein the patentee sells and conveys the full legal title to his patent, and in return accepts a promise to pay royalties, or some portion of the profits to be realized. In such a case, if the purchaser refuses to operate under the patent, so that there are no profits; or is unsuccessful in his undertaking; or if there is a voluntary or involuntary sale of his business to a
(9) This section provides that “whenever there are interfering patents, any person interested in any one of them, or in the working of the invention claimed under either of them, may have relief against the interfering patentee, and all parties interested under him, by suit in equity against the owners of the interfering patent; and the court
may adjudge either of the patents void in whole or in part."
(10) Walker on Patents, Sec. 307, and cases cited.