licensee, at the suit of any co-tenant of any such licensor.' It seems to logically follow that no recovery of profits or damages can be had against one co-tenant, who, without the consent of the others, has made, used or sold specimens of the patented thing. That doctrine has however been denied by one federal judge;' and doubted by another;' though it has been enforced by a third,' and by the Supreme Court of Massachusetts; and by the Supreme Court of New York. Either one of several co-tenants in a patent right, may of course sell his right independently of the others;' but where joint trustees are appointed to hold the legal title to a patent, and to manage it according to their mutual judgment and discretion, a joint deed of all those trustees is necessary to convey that right to another." $ 295. Partition of a patent right, held by tenancy in common, may of course be made by the common consent and mutual action of all the owners of that right; but no such partition can be made against the will of either owner, except possibly in a court of equity. This rule follows from the fact that no partition of estates held by tenancy in common was compellable at common law; and from the fact that no United States statute has provided for any such partition; and from the fact that the State statutes relevant to partition of property which is held under the laws of the States, cannot apply to any property which is created by the laws of the nation. Whether a compulsory partition of a patent right, held by tenants in common, is within the power of courts of equity, is a question upon which there is no precedent in the reports, and the decision of which must 1 Dunham v. Railroad Co. 7 Bissell, 223, 1876. Pitts v. Hall, 3 Blatch. 207, 1854. 3 Dunham v. Railroad Co. 7 Bissell, 223, 1876. Whiting v. Graves, 3 Bann. & Ard. 225, 1878. 5 Vose v. Singer, 4 Allen (Mass.), 232, 1862. De Witt v. Mfg. Co. 5 Hun (N. Y.), 301, 1875. 1 May v. Chaffee, 2 Dillon, 388, 1871. Wiscott v. Agricultural Works, 11 Fed. Rep. 302, 1882. Blackstone, Book 2, Ch. 12. depend upon equitable considerations. That decision when made, will probably be in the negative; because the peculiar nature of property in patents, would probably cause such partitions to materially diminish the value of the property partitioned, and also would probably render an equitable partition impossible. CHAPTER XII. LICENSES. 296. Licenses defined and described. 297. Express licenses to make, with implied leave to use, or implied leave to sell the things made. 298. Express licenses to use, with implied leave to make for use. 299. Express licenses to sell, with implied leave to the vendees to use and to sell the things they purchase. 300. Licenses to make and use, with out implied leave to sell. 301. Licenses to make and sell, or to use and sell, with implied leave to the vendees to use and to sell the articles they buy. 302. Express licenses so restricted as not to convey implied rights. 303. Written and oral licenses. 306. Construction of licenses. 314. Implied license from actual re- 2 § 296. ANY conveyance of a right under a patent, which does not amount to an assignment or to a grant, is a license.' It is a license, if it does not convey the entire and unqualified monopoly, or an undivided interest therein, throughout the particular territory to which it refers. Consistently with this definition, the following have been held to constitute licenses only: an exclusive right to make and sell, but not to use an exclusive right to make and use, but not to sell: an exclusive right to use and sell, but not to make:' 2 an exclusive right to make, to use, and to sell to be used, for certain purposes, but for no other.' "The right to manufacture, the right to sell, and the right to use, are each substantive rights, and may be granted or conferred separately by the patentee." Any one or two of these rights may be expressly conveyed by a patentee, while the other is expressly retained by him. In the absence of express reservation, however, some licenses are extended by implication, so as to convey, not only what they expressly cover, but also some other right which is necessary to the full enjoyment of the right expressly conveyed. This doctrine is not in conflict with the rule which prohibits the enlargement of an instrument in writing by parol evidence; because that rule is directed only against the admission of oral evidence of the language, used by the parties in a contract which was reduced to writing.' This doctrine relates to the legal effect of the language actually written, and is based on that maxim of the common law which prescribes, that any one granting a thing, impliedly grants that, without which, the thing expressly granted would be useless to the grantee.' § 297. An express license to make specimens of a patented thing, is without value, unless it implies a right to use, or a right to sell, the specimens made thereunder. It is not to be presumed that a right so nugatory as a bare right to make, was the only subject of a license for which a valuable consideration was paid. Whether the implied right, which accompanies such a license, is a right to use or a right to sell, can best be determined by ascertaining the circumstances which surrounded the giving of the particular license in question. If the licensee was engaged in a business which made it convenient for him to use the thing involved, then the right to use will be implied in preference to the 1 Gamewell Telegraph Co. v. Brooklyn, 14 Fed. Rep. 255, 1882. 2 Adams v. Burke, 17 Wallace, 456, 1873. 3 Greenleaf on Evidence, Section 277. 4 Steam Stone Cutter Co. v. Shortsleeves, 16 Blatch, 382, 1879. right to sell, because it is the more natural implication in such a case. On the other hand, if the licensee had no occasion to use the thing in view, but was engaged in making and selling similar things, for the use of others, then a right to sell will be implied from a right to make.' Rights to both use and sell will not be implied from an express license to make, because only one of those rights is necessary to the beneficial enjoyment of such a license. An express license to make specimens of a particular thing does not imply a license to use a particular patented machine for that purpose, even where the patent on that machine was owned by the licensor, at the time of the license, and even where that machine was then the best-known means of making the thing licensed.' § 298. An express license to use a limited or unlimited number of specimens of a patented article, implies a right to make those specimens, and to employ others to make them, and will protect those others in making them for the use of the licensee.' If the license to use, covers a greater length of time than one specimen of the thing to be used will last; then there is an implied right in the licensee to repair or to rebuild that specimen, or to replace it by another specimen made or purchased for that purpose.* § 299. An express license to sell specimens of a patented thing, does not imply any right to make those specimens, because it is to be presumed that they may be obtained by purchase, and because no person requires any license to enable him to lawfully buy an article covered by any patent. But a license to sell does imply that a right to use and to sell again shall be conferred on the vendees of the licensec, for otherwise no persons would buy except for exportation, and sales for exportation are seldom sufficiently practicable 1 Steam Cutter Co. v. Sheldon, 10 Blatch. 8, 1872. Troy Nail Factory v. Corning, 14 Howard, 193, 1852. 3 Steam Stone Cutter Co. v. Shortsleeves, 16 Blatch. 381, 1879. 4 Wilson v. Stolley, 4 McLean, 275, 1847; Bicknell v. Todd, 5 McLean, 236, 1851; Woodworth v. Curtis, 2 Woodbury & Minot, 524, 1847; Steam Cutter Co. v. Sheldon, 10 Blatch. 8, 1872. |