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inventor, and if the inventions are completed it gives the other party a contract right which equity can protect and make effectual when the interests of third parties without notice are not thereby prejudiced.*

§ 772. Assignment Before Patent Favored in Law.

An assignment of a patented invention before the grant of letters-patent is not regarded as the transfer of a lawsuit or a controverted right, and is consequently favored by the law.1 Even where a patent has been once applied for and refused, a subsequent assignment of the inventor's interests is valid, and upon a new application a patent may be issued vesting the title in the assignee.2 But when the application for a patent has been finally rejected and abandoned, the rights conferred by the inventor upon his assignees become extinguished, and if thereafter the heirs of the inventor obtain letters-patent by a special act of Congress, the interest in the invention and monopoly reside in them to the exclusion of the assignees.3

4 That the assignment of an imperfect invention, with all its future improvements, is an assignment of the perfected result, and the assignee is the equitable owner of the patent when is sued, see Littlefield v. Perry (1874), 21 Wall. 205; 7 O. G. 964.

That an assignment of a patent with future improvements is valid and vests an equitable interest in the improvements when made, which the court may follow with decree for legal title, see Aspinwall Mfg. Co. v. Gill (1887), 40 O. G. 1133; 32 Fed. Rep. 697.

That on an agreement to assign a future patent, the right to an assignment becomes absolute when the patent issues, see Satterthwait v. Marshall (1872), 4 Del. Ch. 337.

That a contract to assign will be specifically enforced, see Hapgood v. Rosenstock (1885), 23 Blatch. 95; 23 Fed. Rep. 86; Ex parte Edison (1875), 7 O. G. 423; and § 411 and notes, ante, and § 1228 and notes, post.

§ 772. 1 That an assignment pending an application is not an assignment of a lawsuit, see Gay v. Cornell (1849), 1 Blatch. 506.

2 That an assignment of an invention before patent is valid, although a patent had been refused to the applicant before the assignment was made, see Gay v. Cornell (1849), 1 Blatch. 506.

That where an assignment had been made of an improvement pending an application for a patent, and the application being rejected a new application is filed and granted, the patent enures to the benefit of the assignee, see Littlefield v. Perry (1874), 21 Wall. 205; 7 O. G. 964.

3 That when the inventor makes an assignment of his invention before a patent is granted, and the patent being refused on his application the application is abandoned, and his rights and all those derived from him are lapsed, and after his death his heirs obtain a patent by special act of Congress, their patent

§ 773. Effect of Assignment, how Determined: Its Construction. The extent of the interest created in the assignee by an assignment depends in part upon the interest owned by the assignor, and in part upon the terms of the conveyance. An assignor cannot transfer what he does not himself possess. A sole patentee can assign the entire interest in the patented invention, but the owner of an undivided interest can convey only that undivided interest, and the owner of an interest which has been limited by previous grants or by irrevocable licenses, can give no title except to the residuary or reversionary rights that still remain in him.1 Hence, however broad may be the words of the conveyance, they operate upon the patented invention only within the scope of the rights vested in the assignor at the date of the assignment. The assignee must take his interest subject to all previous lawful conveyances and to the restrictions originally imposed upon his assignor. Within these limits the interest transferred by the assignment is measured by the terms of the conveyance.2 These are to be so construed as to effect the intention of the parties, but cannot be varied by parol evidence, except in cases of mutual mistake. If more than one instrument enters into the transaction, as where the equitable title created by an

is not subject to the old assignment, see Fire Extinguisher Co. v. Graham (1883), 16 Fed. Rep. 543; 24 O. G. 793.

§ 773. 1 That an assignee's rights cannot be greater than those of his assignor, see Gottfried v. Miller (1881), 10 Fed. Rep. 471.

That it will never be presumed that a grantor intends to grant what he has no right to grant, or that the grantee expects to receive what is already his, see Day v. Cary (1859), 1 Fisher, 424.

That where an assignor has any right at all to convey, his grant of all his rights will not be intended as attempting to include rights previously transferred by him, see Turnbull v. Weir Plow Co. (1874), 6 Bissell, 225; 7 O. G. 173; 1 Bann. & A. 544.

2 That the rights of the assignee are

governed by the assignment, see Hendrie v. Sayles (1878), 98 U. S. 546.

That a grant should be construed to cover whatever is necessary to render it effective, see Hamilton v. Kingsbury (1878), 15 Blatch. 64; 14 O. G. 448.

That an assignment of an interest in an invention is a contract, and is to be construed so as to effect the intention of the parties, see Nicholson Pavement Co. v. Jenkins (1872), 14 Wall. 452; 5 Fisher, 491; 1 O. G. 465.

That parol evidence cannot vary an assignment unless there has been a mutual mistake, see Knowlton Platform & Car Coupling Co. v. Cook (1879), 70 Me. 143; Hammond v. Pratt (1879), 16 O. G. 1235; Ruggles v. Eddy (1872), 5 Fisher, 581; 10 Blatch. 52.

assignment before patent is protected by the subsequent conveyance of the legal title, both are to be interpreted together in ascertaining the extent of the interest assigned.*

§ 774. Assignment, its Implied Warranty of Title.

The terms of the conveyance are important, not only as a measure of the interest assigned but as an indication of the liability of the assignor upon his implied warranty of title. As will be seen hereafter, the assignment imports a covenant that the assignor has a good right to convey the interest therein described; and whenever this interest exceeds the interest which he could actually convey the assignee has an appropriate remedy for the breach of warranty. Hence the significance of the interpretation put by the courts upon the language of the instrument in two classes of cases; one where it purports to convey the entire interest in the patented invention; the other where it is construed to cover only such interest as the assignor may himself possess.

§ 775. Assignment of "All Rights" in the Patented Invention

Warrants a Perfect Title.

An assignment of all rights to the patented invention, in whatever language such rights may be described, transfers or attempts to transfer the entire interest covered by the patent. By it the assignor asserts himself to be the sole owner of the patented invention, free from all incumbrances created by any prior transfer. From it, if this assertion of the assignor be true, the assignee derives an exclusive title to the invention and to the monopoly; if not true, such ownership as the assignor possessed is vested in him together with a right of action on the implied warranty, or at his option the transfer may be treated as inoperative and void. Thus an assignment

4 That where an assignment has been duly recorded, and a supplementary assignment is not recorded, both are to be construed together, see Littlefield v. Perry (1874), 21 Wall. 205; 70. G. 964. That titles to patents are not to be overthrown on soluble doubts, see Blandy v. Griffith (1869), 3 Fisher, 609.

That in case of doubt the practical construction given to the contract by the acts of the parties may control, see Topliff v. Topliff (1887), 122 U. S. 121; 40 O. G. 115.

§ 774. 1 See §§ 783, 1232, and notes, post.

of "all the right" to the patented invention, or of the "exclusive right to make and sell" throughout the United States for the whole term of the patent, or with any equivalent words of description, purports to convey the entire interest in the patented invention,' and is justified only when the assignor has the unqualified ownership of all the rights created or protected by the patent.

§776. Assignment of "All My Rights" in the Patented Invention Implies no Warranty of Title.

An assignment of all the rights of the assignor in the patented invention, on the other hand, contains no implied averment as to the nature or scope of the interest conveyed.1 Such an. assignment will operate upon any ownership which may be vested in the assignor, and will transfer it to the assignee subject to any previous conveyances or contracts which the assignor or his predecessors may have made, whether these have created legal or equitable rights, and whether or not they are recorded.2 An assignee under this form of con

§ 775. In Turnbull v. Weir Plow Co. (1880), 9 Bissell, 334, Drummond, J.: (336) "Where a man assigns all the right which was conveyed to him by letters patent, the meaning is that the assignment takes with it everything that the letters-patent conveyed. It is certainly different from an assignment which declares merely that he assigns all the interest which he, at the time he makes the assignment, has in the letters-patent, provided, as in this case, he had previously assigned a part of the interest which he had to another person." 23 O. G. 91 (91); 14 Fed. Rep. 108 (110); 5 Bann. & A. 288 (290).

That the grant of "an exclusive right to make and sell" the invention "in the United States for the whole term of the patent" carries the entire interest in the invention, see Pickhardt v. Packard (1884), 23 Blatch. 23; 30 O. G. 179; 22 Fed. Rep. 530; Nellis v. Pennock Mfg. Co. (1882), 13 Fed. Rep. 451; 22 O. G. 1131; 15 Phila. 493.

That whether the form of a convey. ance is that of an assignment or a license, if it transfers all rights under the patent it is an assignment, and the transferee may sue in his own name, see Siebert Cylinder Oil Cup Co. v. Beggs (1887), 32 Fed. Rep. 790.

776. That a conveyance of all my right, title, and interest does not import a warranty, see Turnbull v. Weir Plow Co. (1874), 7 O. G. 173; 6 Bissell, 225; 1 Bann. & A. 544.

That an assignment of "all my right" purports to cover only the right he then has, see Turnbull v. Weir Plow Co. (1880), 23 O. G. 91; 9 Bissell, 334; 5 Bann. & A. 288; 14 Fed. Rep. 108.

That a conveyance of the right, title, and interest in a patent "as fully as the same would have been enjoyed by me but for this assignment," is a mere quitclaim without warranty, see Gilmore v. Aiken (1875), 118 Mass. 94.

2 That a conveyance of "all my right, title, and interest in and to" a

veyance is put upon his guard and is chargeable with notice of all facts which he might have ascertained by inquiring of the prior owners of the patented invention, or of any person claiming a right under the patent.3 Where an assignment of this character has once been made, every one who derives his title through it is presumed to have received his ownership with the same knowledge of existing interests in others which is imputed to the original assignee, and one transferring such rights to another is not bound by any suppression of the truth by future owners or by their failure to disclose the actual condition of the title.

§ 777. Assignment Transfers only the Invention Specifically Assigned.

The assignment of a patented invention operates only upon the invention covered by the patent. Other inventions owned by the same assignor, though related to the one assigned as modifications or improvements, and though essential to the practical employment of the one assigned, are not transferred by the conveyance. Even when the assignment confers in

patent, though properly recorded, does not affect a territorial right previously conveyed, even if the prior conveyance is not recorded, see Turnbull v. Weir Plow Co. (1880), 23 O. G. 91; 9 Bissell, 334; 5 Bann. & A. 288; 14 Fed. Rep. 108; Turnbull v. Weir Plow Co. (1874), 6 Bissell, 225; 7 O. G. 173; 1 Bann. & A. 544.

8 That the expression "right, title, and interest," in an assignment from a person holding under the patentee, is enough to put the assignee on inquiry and to charge him with notice of what he could have found out from the first grantor, see Hamilton v. Kingsbury (1880), 17 O. G. 847; 4 Fed. Rep. 428; 17 Blatch. 460.

That where an assignment refers to an invention as in use, such reference is an express notice to the assignee of such and of the claim of the licensee of

use,

the right to use, see Prime v. Brandon

Mfg. Co. (1879), 16 Blatch. 453; 4
Bann. & A. 379.

That an assignor of his " right, title, and interest" only is not bound by any suppression of truth on the part of his assignees, nor by their failure to disclose the true state of the title, see Hamilton v. Kingsbury (1880), 4 Fed. Rep. 428; 17 O. G. 847; 17 Blatch. 460.

See further as to implied warranty, §§ 783, 794, 1232, and notes, post.

§ 777. 1 That an assignment of one invention does not carry an interest in a different one, see Puetz v. Bransford (1887), 39 O. G. 1427; 31 Fed. Rep. 458.

That the assignment of all right, title, and interest in and to an improvement, conveys no interest in the original invention, see Leach v. Dresser (1879), 69 Me. 129.

That a conveyance under a specific

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