Lapas attēli
PDF
ePub

ever, more easily confounded. They are alike in that each may apply to the entire United States, and each may operate upon all the rights embraced in the invention. They are unlike in that an assignment transfers also some interest in the monopoly, while a license leaves the monopoly unaffected in the hands of the licensor, except that it cannot be enforced against the rights conferred by him upon the licensee.2 Now if the monopoly were separable from the invention, and were customarily transferred by a distinct conveyance, no question as to the character of any given instrument of transfer should arise. But inasmuch as certain.

transfers of the invention ipso facto convey the monopoly, and as every instrument transferring the monopoly must also pass some interest in the invention, and as a license as well as an assignment may operate upon all the rights included in the invention, it often becomes doubtful to which of these two classes a given instrument should be referred. The test is

tion, which authorizes the bringing of suits by patentee, assignee, or grantee of the exclusive right within and throughout some specified part of the United States.' 8 O. G. 437 (438).

In Potter v. Holland (1858), 4 Blatch. 206, Ingersoll, J.: (211) "There are three classes of persons in whom the patentee can vest an interest of some kind in the patent. They are an assignee, a grantee of an exclusive sectional right, and a licensee. An assignee is one who has had transferred to him in writing the whole interest of the original patent, or any undivided part of such whole interest, in every portion of the United States; and no one, unless he has had such an interest transferred to him, is an assignee. A grantee is one who has had transferred to him, in writing, the exclusive right under the patent, to make and use, and to grant to others to make and use, the thing patented, with in and throughout some specified part or portion of the United States. Such right must be an exclusive sectional right, excluding the patentee therefrom. A licensee is one who has had transferred to

him, in writing or orally, a less or different interest than either the interest in the whole patent, or an undivided part of such whole interest, or an exclusive sectional interest." 1 Fisher, 327 (333).

That the distinctions between patentees, assignees, grantees, and licensees are the same under the act of 1870 as under the act of 1836, see Nelson v. McMann (1879), 16 O. G. 761; 16 Blatch. 139.

66

2 In Howe v. Wooldredge (1866), 12 Allen 18, Gray, J.: (22) An assignment (and possibly a license to make, use, and sell) is a transfer of a part of the franchise granted by the government to the patentee; a mere license to use a single machine, or a sale of a single machine, transfers no part of the franchise, but simply discharges that machine from the operation of the franchise, and puts it upon the common ground of other property."

That an assignment and a license are entirely different, see Theberath v. Celluloid Mfg. Co. (1880), 5 Bann. & A. 577; 3 Fed. Rep. 143.

this: If the conveyance vests in the alienee the entire interest in the invention, or if it makes him a joint-owner with the alienor in such entire interest, it transfers the monopoly to the same extent as the invention, and is an assignment. But if it leaves in the alienor any exclusive right whatever in the invention, or if the rights conferred upon the alienee are not exclusive rights vesting in him alone or in him jointly with his alienor, the monopoly is not transferred and the conveyance is a license.3 Thus the conveyance of an exclusive right

* In Gamewell Fire-Alarm Telegraph Co. v. Brooklyn (1882), 14 Fed. Rep. 255, Wallace, J.: (256) "The statutory power of assignment, as is said in Littlefield v. Perry, 21 Wall. 205, 219, 'has been so construed by the courts as to confine it to the transfer of an entire patent, an undivided part thereof, or the entire interest of the patentee or an undivided part thereof throughout a certain specified portion of the United States.' In that case there was in one instrument a conveyance of the entire patent, and there was also an instrument, executed concurrently, called a supplementary agreement, which contained a reservation of the right of the patentee to apply the invention himself to certain specified purposes. The two instruments were construed as a conveyance of the title to the patent, with a license back from the assignees to the patentee; and upon this construction the assignees were held as vested with the legal title. From the reasoning of the opinion it is evident, if there had never been a transfer of the patentee's right to the limited use of the invention, the interest transferred would not have been considered as vesting the statutory title in the assignees. In the present case the transfer was only of a right to use and vend the invention for limited purposes in specified places; the right to use and vend it for general purposes remaining intact until it was conveyed to the Western Union Telegraph Company.

The right transferred was not an undivided part of an entire patent, or an undivided part of the entire interest of the patentee in specified territory, but was a segregated right for a particular employment of the invention. The complainant was, therefore, merely a licensee, within the rule established in Gayler v. Wilder, 10 How. 477; the right transferred to him being less than that of the entire and unqualified monopoly. The case of Ingalls v. Tice, 13 Reporter, 676, is directly in point. There the transfer to the complainant was of the sole and exclusive right to sell the patented article in certain specified territory; and as the right of the patentee to make and use the invention did not pass by the instru ment, it was held that complainant did not acquire the legal estate, and, the patentee not having been made a party to the suit, a demurrer for that reason was sustained." 22 O. G. 1978 (1978). In this opinion the court, in speaking of the "entire patent," employs the usual language in reference to the subject of an assignment. As every Claim in a patent is, in effect, a separate patent, and may be the subject of a distinct assignment, the phrase. ology here and elsewhere found must be understood with that limitation. See Pope Mfg. Co. v. Gormully & Jeffrey Mfg. Co. (1888), 34 Fed. Rep. 893.

See further, on the difference be tween assignment and license, § 808 and notes, post.

to make, or use, or sell, for any special purpose, is a mere license, since the exclusive rights remaining in the alienor are his distinct and separate property, and require for their protection an ownership by him of the prohibitory powers which, being indivisible, cannot abide in him and at the same time pass to his alienee. For the same reason the transfer of a simple non-exclusive right to make and use and sell the invention is not an assignment. The alienor retains the same rights in himself, holding them as his own, and not in common with his alienee; his rights are still exclusive against all other persons except the alienee; and hence in order to preserve them the indivisible monopoly must still reside in him. On the other hand, the transfer of an exclusive right to make and use and sell, or, what is of the same effect as to all classes of inventions except arts or processes, of the exclusive right to make and sell the invention, or of an undivided interest in such exclusive right, vests the entire invention and consequently the monopoly also in the alienee, either alone or jointly with the alienor, and hence is an assignment.*

§ 764. Character of Assignment Determined by its SubjectMatter, not by its Terms or Conditions.

The character of a conveyance, as thus determined by its subject-matter, cannot be varied by the terms and conditions upon which the transfer has been made. These belong to the contract in pursuance of which the transfer was effected, not to the nature of the transfer itself. The parties may annex such qualifications to the conveyance, and impose such obligations upon themselves in reference to their respective rights, as they may deem expedient, if the instrument transfers any interest in the invention which carries the monopoly, it is an assignment or a grant, but otherwise is a license. Thus, though they should provide that the consideration for the transfer shall be paid by the alienee to the alienor in the form of periodic royalties, or that the title of the alienee shall become forfeited by breach of certain specified conditions, -pro

4 That the assignment of the right to make and sell carries the right to use, and if exclusive, passes the entire

monopoly, see Nellis v. Pennock Mfg. Co. (1882), 15 Phila. 493; 13 Fed. Rep. 451; 22 O. G. 1131.

visions which are generally annexed only to licenses, — the conveyance will be none the less an assignment or a grant, if in its subject-matter it embraces any interest in the monopoly.1

§ 765. Assignment, by whom Made.

An assignment of a patented invention can be made only by one in whom the ownership of both the invention and the monopoly resides. At the outset this double ownership vests in the patentee, his right to the invention arising from his own inventive act; his right to the monopoly being conferred upon him by the patent. Unless transferred by an assignment, or territorially divided by a grant, this ownership remains in him while living, and at his death passes to his executor or administrator as trustees for his heirs or devisees. Hence until the patentee has made either an assignment or a grant, the entire ownership resides in him, and he only can transfer it to another. If his first transfer is an assignment of the entire ownership, his own interest in the patented invention ceases, and no further transfer can be made except by his assignee. The same effect follows each succeeding assignment of the entire ownership, vesting the exclusive title to the invention in the successive assignees.2 If any holder of the entire ownership assigns an undivided interest therein, the title and the power of assignment vest equally in all the owners of the patented invention, and each may now assign his interest, without restriction by the others. But when the

§ 764. 1 That the fact that an assignee must account and pay a royalty does not make him a mere licensee, see Littlefield v. Perry (1874), 21 Wall. 205; 7 O. G. 964.

That a clause of forfeiture for nonperformance does not show that the assignee is a mere licensee, see Littlefield v. Perry (1874), 21 Wall. 205; 7 O. G. 964.

§ 765. That the legal title to a patent vests in the patentee on its issue, see Consolidated Electric Light Co. v. Edison Electric Light Co. (1885), 25

Fed. Rep. 719; 33 O. G. 1597; 23
Blatch. 412.

2 That the power to assign, grant, and license vests in the assignees of the patent, of whatever degree, see Selden v. Stockwell Self-Lighting Gas Burner Co. (1881), 19 Blatch. 544; 20 O. G. 1377; 9 Fed. Rep. 390.

8 That the owner of a distinct interest in a patent may assign his own share, see May v. Chaffee (1871), 2 Dillon, 385; 5 Fisher, 160.

See also §§ 796, 798, and notes, post.

patentee or any subsequent assignee of the entire ownership divides it territorially by a grant, no further assignment of the patented invention is possible unless, perhaps, by a conveyance in which all the owners join. The ownership of the grantor, like that of the grantee, is then a mere sectional ownership, subject to further grants either within the same or narrower territorial limits, but not to an assignment which must relate to the entire ownership within the United States. The transfer of a right to practise the invention, as distinguished from a right in the monopoly, does not, however, affect the title to the patented invention. A patentee or assignee or grantee may license others to make use or sell without thereby diminishing his power to alienate his interest, or change the nature of the rights of which that interest consists.5 Upon the death of any owner of a patented invention, his ownership and power of alienation are transferred to his administrators or executors by the express provisions of the statutes, to be preserved and exercised by them in the same manner as by himself when living, though for the benefit of his heirs and devisees.6 The power of infants and married women to assign their interests in patented inventions is governed by the local law."

§766. Assignment, by whom Made when the Owner is Insolvent. The rule that an assignment can be made only by the actual owner of the patented invention admits of no exception in the • That co-owners may unite in one one of two administrators is good and assignment though they own different will pass the entire interest in the territory, see Ladd v. Mills (1884), 22 patent, see Wintermute v. Redington Blatch. 242; 20 Fed. Rep. 792. (1856), 1 Fisher, 239.

5 See § 782 and notes, post. That an administrator may assign a patent when renewed in his own name, see Brooks v. Jenkins (1844), 3 McLean, 432.

That an assignment by one administrator gives a perfect title unless others can show a better, see Donoughe v. Hubbard (1886), 27 Fed. Rep. 742; 35 O. G. 1561; Bradley v. Dull (1884), 27 O. G. 625; 19 Fed. Rep. 913.

See also § 406 and notes, ante, and §§ 800, 801, and notes, post.

7 That an infant must assign by guardian, but the guardian is governed by the local law, see Fetter v. Newhall (1883), 21 Blatch. 445; 25 O. G. 502; 17 Fed. Rep. 841.

That the power of a married woman to assign a patent depends on the provisions of the local law, see Fetter v. Newhall (1883), 21 Blatch. 445; 25 O.

That the assignment of a patent by G. 502; 17 Fed. Rep. 841.

« iepriekšējāTurpināt »