is the owner of the invention at the issue of the patent, and must remain in him until legally conveyed by him to others.1 But the monopoly being indivisible in subjectmatter cannot be transferred in connection with any one of the subordinate rights in the invention and still vest in the patentee in reference to the other rights which he retains. If he conveys the right to make the invention, or the right to use it or to sell it, or any two of these without the third, the monopoly is not affected, since it cannot follow these rights into the alienee, and therefore must remain entirely in the patentee. Nor where these subordinate rights in the invention are themselves divided and conveyed can the monopoly be divided and transferred with them. The conveyance of a right to make and use and sell the invention, leaving in the patentee an independent right to make and use and sell, is proper as a transfer of the invention, but has no operation upon the monopoly; for the monopoly, being indivisible, must either follow the rights conferred upon the transferee and reside in its entirety in him, or continue undivided in the patentee; and the retention by the latter of his rights in the invention is inconsistent with an intention to confer the whole monopoly upon another. But the alienation of the entire interest in the invention or of an undivided portion of the entire interest, either for the whole or any sectional part of the United States, operates also as the transfer of a similar interest in the monopoly. When the patentee conveys the exclusive right to make, use, and sell the invention he has no longer any occasion for the exercise of the prohibitory powers created by the patent, while they become essential to his alienees for the assertion and vindication of their exclusive rights. If he transfers an undivided portion of the entire interest in the invention, he thereby confers upon his transferees rights equal to his own, in all respects, in the invention, and receives them into co-ownership with himself in the monopoly which is now as essential to their protection as it was to his. And the monopoly being divisible as to locality, § 758. 1 That there are no owners son (1870), 2 Abbott, 398; 4 Fisher, of a patent except the patentee and his 232; 7 Phila. 533. assignees or grantees, see Jordan v. Dob

2 That an assignment of an undivided

when he bestows on any person the exclusive rights in the invention or an undivided portion of the exclusive rights within a given area, the monopoly to the same territorial extent passes entirely, in the first case, to the alienee, and in the second, resides undivided in the joint-ownership of both. From these principles it is evident that no conveyance can belong to the first class, and directly operate upon the monopoly, unless it transfers the entire interest in the invention or an undivided portion of such entire interest either for the whole or some defined part of the United States, and that every conveyance which leaves in the owner of the patented invention any distinct and independent right therein is of the second class, and can have no effect on the monopoly, except as it estops the owner of the patent from asserting his prohibitory powers in opposition to the rights conferred by him upon his alienee.

§ 759. First Class Divisible into Two Sub-Classes according to the Territorial Limits of the Monopoly Granted.

The first class of conveyances may evidently be subdivided into two inferior classes on the line fixed by the divisibility of the monopoly, one subdivision embracing those conveyances which transfer the entire interest in the invention, or an undidivided portion of the entire interest, for the whole United States; the other subdivision including those by which the entire interest, or an undivided part thereof, within some specified area is alienated. The difference between these subdivisions

part of a patent makes the assignee and the patentee joint-owners, see Potter v. Holland (1858), 4 Blatch. 206; 1 Fisher, 327.

• That the sale of the exclusive right to make, use, and vend in a particular place confers a portion of the patent privilege, see Goodyear v. Beverly Rubber Co. (1859), 1 Clifford, 348.

§759. In Gayler v. Wilder (1850), 10 How. 477, Taney, C. J.: (494) "By the eleventh section of the act of 1836, the patentee may assign his whole interest, or an undivided part of it. But if

he assigns a part under this section, it must be an undivided portion of his entire interest under the patent, placing the assignee upon an equal footing with himself for the part assigned. Upon such an assignment, the patentee and his assignees become joint-owners of the whole interest secured by the patent, according to the respective proportions which the assignment creates. By the fourteenth section, the patentee may assign his exclusive right within and throughout a specified part of the United States, and upon such an assignment the

relates, not to the nature, but to the territorial limits of the rights and powers which they confer. A conveyance of the former species vests in the transferee, either alone or jointly with his transferor or others, the right to practise the invention, and to exercise prohibitory authority, anywhere within the United States. A conveyance of the latter species has the same effect within the boundaries which it describes.

§ 760. Forms of Transfer Corresponding to the Foregoing Classes : First Class, Assignment and Grant: Second Class, Li

cense.

The acts of Congress in providing for the transfer of interests in letters-patent, and the Federal courts in adjudicating upon the rights of parties to such transfer, have conformed to the essential nature of a patented invention, as thus described, and to the principles upon which its alienation must inevitably be based. The statutes recognize only two modes by which the monopoly may be transferred, one by a conveyance of the entire interest in the invention, or of an undivided part thereof, for the whole country; the other by a conveyance of a similar interest, or part interest, within some portion of the United States. To the former conveyance the courts have given the technical name of an Assignment; the latter they have called a Grant.2 The conveyance of the subordinate rights in the invention, either separately or united, without affecting the monopoly otherwise than by estoppel, is also permitted; and the interests thus created are fully vindicated and sustained. To this conveyance custom and judicial sanction have attached the name of License.3

assignee may sue in his own name for an infringement of his rights. But in order to enable him to sue, the assignment must undoubtedly convey to him the entire and unqualified monopoly which the patentee held in the territory specified, excluding the patentee himself, as well as others. And any assignment short of this is a mere license." See also Littlefield v. Perry (1874), 21 Wall. 205; 7 O. G. 964.

§ 760.

ment except of either an entire interest or an undivided interest in the whole United States, or of an entire interest, or an undivided interest, in a certain territory, see Littlefield v. Perry (1874), 21 Wall. 205 ; 7 O. G. 964.

2 That the terms "assignee" and grantee' are not synonymous, see Potter v. Holland (1858), 1 Fisher, 327; 4 Blatch. 206.

That there are three forms of conThat there can be no assign- veyance: Assignment, Grant, and Li

§ 761. Transfer of Patented Inventions Unrestricted except by

their own Nature.

Subject to the restrictions established by the nature of a monopoly, a patented invention is as freely alienable as any other personal property.1 Every interest therein may reside in one owner or in several joint-owners, and may be enjoyed in any way which is compatible with the character of the interest itself.2 The rights and obligations created between the parties by the transfer of these interests are governed by the ordinary rules which are applied to all contracts. The prohibitory powers, which vest in the owners of the monopoly by virtue of the patent, are controlled and exercised according to the special provisions of the Patent Law. These will now be examined in detail, in reference to each of the forms of conveyance - Assignment, Grant, and License in their order.

SECTION I.

OF THE TRANSFER OF LETTERS-PATENT: ASSIGNMENT: GRANT.

§ 762. Assignment Defined: Its Effect.

An assignment is a transfer of the entire interest in a patented invention, or of an undivided portion of such entire interest, as to every section of the United States.1 It operates cense, see Potter v. Holland (1858), 1 any time, see Ladd v. Mills (1884), 22 Fisher, 327; 4 Blatch. 206. Blatch. 242; 20 Fed. Rep. 792.

§ 761. 1 That all interests in patents are assignable, see Campbell v. James (1880), 2 Fed. Rep. 338; 18 Blatch. 92; 18 O. G. 1111.

That any contract may be made concerning patents provided it does not enlarge the right, see Star Salt Caster Co. v. Crossman (1878), 3 Bann. & A. 281; 4 Clifford, 568.

That under the laws of New York an assignment which suspends the power of alienation longer than the lives of the assignors does not create a perpetuity, since all may join in a transfer at

2 That a patent may be assigned either in whole or in part, see Parker v. Haworth (1848), 4 McLean, 370; 2 Robb, 725; Boyd v. McAlpin (1844), 3 McLean, 427; 2 Robb, 277.

8 That an assignment and all rights under it rest on the statute, see Gayler v. Wilder (1850), 10 How. 477; Suydam v. Day (1846), 2 Blatch. 20; and § 61 and notes, ante.

§ 762. 1 In Potter v. Holland (1858), 4 Blatch. 206, Ingersoll, J.: (211) “An assignee is one who has had transferred to him in writing the whole interest of the

both upon the invention and upon the monopoly, and conveys them, either wholly or in part, to the assignee. When the entire interest is assigned, it substitutes the assignee for the original patentee, conferring upon him, to their full extent, the rights embraced in the invention and the prohibitory powers bestowed by the patent.2 Where an undivided interest is transferred, it places the assignee upon an equality, in all respects, with his assignor and the original patentee, vesting in him complete but not exclusive rights and powers as to the monopoly and the invention.

§ 763. Assignments Distinguished from Grants: from Licenses. To determine whether a given conveyance is an assignment or a grant involves little practical difficulty, - the essential difference between them consisting in the territorial area to which they relate.1 An assignment and a license are, how