secured," or of "the invention to the full end of the term for which a patent may be granted," or of "all patents and renewals" or of "the invention as now secured by letterspatent," and "to the full end of the term for which letterspatent are or may be granted," or a conveyance by the owner of the right to an extension of "all my rights" in the invention, transferred the patentee's rights to the monopoly under the extension, and imposed on him the obligation to obtain the extension, if possible, and by a proper instrument convey it to his assignee. These illustrations show how comprehensive the language of an assignment may be, and yet not operate upon the extension; and also that no special form of words is necessary in order to convey it. In all cases the question is one of intention; and the interpretation put upon the instrument in this respect must be governed by its entire provisions, and by the circumstances of the contracting parties and the object they endeavored to effect. The assignee is presumed to know what rights to an extension may eventually vest in the assignor, and how such an extension would affect his own use and enjoyment of the invention; and he must either protect himself by the insertion of such provisions into the assignment as will secure to him the monopoly under the extension, as well as under the original patent, or abide by the presumption of the law that the right to the extension remains in the inventor.9 8 That the assignment of an "invention" without any restrictions carries all future patents for it, see Emmons v. Sladdin (1875), 2 Bann. & A. 199; 9 O. G. 352. That a conveyance of an "invention" and "of all rights that may from time to time be secured " carries an extension, see Railroad Co. v. Trimble (1870), 10 Wall. 367. That an assignment of the "invention" " "to the full end of the term for which a patent may be granted" covers an extension, see Nicholson Pavement Co. v. Jenkins (1872), 14 Wall. 452; 1 O. G. 465; 5 Fisher, 491. That an assignment of patents and renewals carries extensions, see Union Mfg. Co. v. Lounsbury (1864), 42 Barb. 125; Goodyear v. Cary (1859), 4 Blatch. 271; Wilson v. Turner (1845), Taney, 278. That an assignment of "the invention as secured by letters-patent" and "to the full end of the term for which letters-patent are or may be granted" carries the extension also, see Ruggles v. Eddy (1872), 5 Fisher, 581; 10 Blatch. 52. That where an assignor owns a right to the extension, his conveyance of "all his right," etc., will carry the extension, see Ex parte Mason (1872), 1 O. G. 357. 9 In Brooks v. Bicknell (1845), 4 $780. Single Assignment may Transfer Several Patented Inventions. An assignment by the owner of several patents may include one or more or all of them, as the parties may desire; though, to avoid confusion on the records, a separate conveyance for each patent is desirable. When such an instrument describes each patent by its date and number, the subject-matter of the assignment is evident. A general assignment of all such patents as the assignor "has in his own right" is, however, valid, and will transfer all patents of which he is the apparent owner, or part-owner, though not those which he holds in trust for others.1 McLean, 64, per Curiam: (67) "The assignment transferred only the interest expressed on its face. No right, beyond the term named in the original patent, was conveyed by the assignment, unless so specified. But it is said that the assignee had ground to expect, when the patent expired, that he, in common with others, would have a right to use it; and that to deny him this right would be unjust. When he purchased the patent, in whole or part, he knew, or at least must be presumed to have known, that the patent could be renewed by Congress, and as a prudent man, he should have provided for such a contingency, in his contract of assignment, and what, under a renewal, would be a just provision in behalf of the assignee. For the time of the patent, he has not only had the right to use the machine, but to sell the invention to others. Now, no hardship results to the assignee from the renewal, unless he has a machine in operation which is necessarily suspended by the extension of the patent. The assignee could not claim, on any supposed ground of hardship, anything beyond the use of the machine or machines he may have in operation at the time of the renewal of the patent. But, under the VOL. II. 35 construction claimed for the assignee, he not only takes the use of the machine, if the assignment was a general one, but the entire beneficial interest in the renewed patent. Such a construction is in direct opposition to the declared intention of the act." That where a patentee agrees to sell a right under an extension, and the buyer pays part of the purchase-money, but refuses to pay the rest, this does not, ipso facto, cancel the contract, since it is part executed, though a court of equity would decree cancellation of it in terms, see Gibson v. Barnard (1848), 1 Blatch. 388. See further as to the assignment of an extension, §§ 412, 770, and notes, ante, and § 844 and notes, post. § 780. That the grant of such patents only as the grantor “has in his own right" does not include such as he holds for the benefit of others, but does include those in which he has only a part interest, see Wetherell v. Passaic Zinc Co. (1872), 2 O. G. 471; 6 Fisher, 50; 9 Phila. 385. That a trade-mark used to designate patented articles is assignable with the patent, see Julian v. Hoosier Drill Co. (1881), 78 Ind. 408. § 781. Assignment of Patented Invention Does not Transfer Rights of Action for Past Infringements. An assignment carries no right to sue for past infringements, unless so expressed. These are injuries against the former owners of the patent, for which they have their remedy. Like other choses in action, the right to pursue this remedy can be transferred to the assignees of the invention, as well as to any other parties; but it is not embraced in the ownership either of the invention or the monopoly, and hence requires distinct words of conveyance. The assignment of an expired patent, however, being of no effect as an alienation of a patented invention for want of any existing subject-matter, may take effect upon those rights of action which alone remain, and be valid as a power of attorney to enforce them.2 A conveyance pendente lite does not affect the litigation; but the judgment binds the parties to the assignment, according to the nature of the interests involved.3 § 782. Effect of Assignment upon Existing Licenses and Powers of Attorney. An assignment of the entire interest of the assignor in a patented invention revokes all his revocable licenses and terminates all his previous powers of attorney, unless the as § 781. 1 That an assignment of a patent does not cover claims for past infringements, unless so expressed, see Kaolatype Engraving Co. v. Hoke (1887), 30 Fed. Rep. 444; 39 O. G. 589; May v. Juneau Co. (1887), 30 Fed. Rep. 241; 41 O. G. 578; New York Grape Sugar Co. v. Buffalo Grape Sugar Co. (1883), 21 Blatch. 519; 25 O. G. 1076; 18 Fed. Rep. 638; Merriam v. Smith (1882), 11 Fed. Rep. 588. That an assignment of a patent by an administrator under order of court does not carry the right of action for past infringements, see May v. Juneau Co. (1887), 41 O. G. 578; 30 Fed. Rep. 241. That the assignment of all "right, title, interest, claims, and demands whatsoever which the estate has in, to, by, under, and through" letters-patent, carries rights of action for past infringements, see May v. County of Logan (1887), 30 Fed. Rep. 250; 41 O. G. 1387. See further as to assignment of rights of action, §§ 790, 943, and notes, post. 2 That the assignment of an expired patent may be good as a power of attor ney to collect damages for past infringements, but not otherwise, see Bell v. McCullough (1858), 1 Bond, 194; 1 Fisher, 380. 8 That a conveyance pendente lite does not affect the litigation, see Campbell v. James (1880), 18 O. G. 1111; 18 Blatch. 92; 2 Fed. Rep. 338. signee by continuing to recognize them as still in force estops himself from denying their validity. The assignment of an undivided part of the entire interest creates a joint ownership in the invention and the monopoly, the proportion of each coowner being determined by the provisions of the assignment. The relation sustained by these co-owners toward each other, and the rights of each as to the enjoyment of the patented invention, will be considered in a separate section.2 §783. Assignment for Valuable Consideration Implies a Warranty of Title, and a Right to Assign: Express Warranties. From the assignment of a patented invention for a valuable consideration a warranty of title to it, and of a right to assign it according to the terms of the assignment, is implied by law. This warranty grows out of the sale itself, not out § 782. 1 That the conveyance of a patent revokes all revocable licenses, see Shaw v. Colwell Lead Co. (1882), 20 Blatch. 417; 11 Fed. Rep. 711. That where a patent and all future improvements are assigned to one person, and subsequently an agreement is made by the assignor with another not to interfere with his manufacture, and after this an improvement is made and patented and assigned to the first "assignee, the latter may enforce this new patent against the promisee under the agreement, see Troy Iron & Nail Factory v. Corning (1852), 14 How. 193. That where the patentee sells to a corporation, and having obtained a reassignment for the purpose of procuring an extension secures his extension and secretly licenses to others before he assigns back to the corporation, it is a fraud upon the corporation and the licensee acquires no rights, see Consolidated Fruit Jar Co. v. Mason (1877), 7 Daly, 64. That an assignee of an interest in a patent, after a license is granted and while it is running, cannot compel the licensee to account to him separately for his share of the royalties, see Bergmann v. Macmillan (1881), L. R. 17 Ch. D. 423. That the sale of a patent terminates all previous powers of attorney, see Labaree v. Peoria, Pekin, & Jacksonville R. R. Co. (1877), 3 Bann. & A. 180. That assignees of a patent who allow a power of attorney to remain and permit others to act on it may be bound by it, see Labaree v. Peoria, Pekin, & Jacksonville R. R. Co. (1877), 3 Bann. & A. 180. That where an entire invention is assigned before the application and the attorney has received his power from the inventor alone, the power must be ratified by the assignee, or a new attorney must be appointed, see Ex parte Ackerman (1880), 17 O. G. 1036. 2 See §§ 795-799, and notes, post. § 783. 1 That in the sale of a patent there is always an implied warranty of title, see Faulks v. Kamp (1880), 3 Fed. Rep. 898; 17 O. G. 851; 17 Blatch. 432; 5 Bann. & A. 73; Sher of the instrument by which the conveyance is effected. It draws after it any subsequently acquired title of the assignor which may be necessary to make his former transfer valid, and confers upon the assignee a right to damages wherever the interest actually vested in him by the assignment is less than that which it purports to convey.3 Express covenants of warranty may also be inserted in the assignment. These bind the assignor according to their terms, and may wholly or in part supersede the implied warranty. From a conveyance of all the assignor's right, title, and interest in the invention no warranty of title is implied. Such a conveyance passes the rights then vested in the alienor, whatever they may be, but imposes no obligation upon him, either on account man v. Champlain Transportation Co. there is no fraud, see Johnson v. Wil(1858), 31 Vt. 162. limantic Linen Co. (1866), 33 Conn. That the sale of a patent right not only implies a warranty of title to it but a right to sell it, see Faulks v. Kamp (1880), 17 O. G. 851; 3 Fed. Rep. 898; 17 Blatch. 432; 5 Bann. & A. 73. 2 That the warranty of title grows out of the sale itself, not out of the form of the conveyance, see Faulks v. Kamp (1880), 3 Fed. Rep. 898; 17 O. G. 851; 17 Blatch. 432; 5 Bann. & A. 73. 8 That the warranty implied in the sale of a patent right draws after it any after acquired title of the vendor which may be necessary to make the sale effective, see Faulks v. Kamp (1880), 3 Fed. Rep. 898; 17 O. G. 851; 17 Blatch. 432; 5 Bann. & A. 73. That the assignee may recover damages for the breach of warranty, see §§ 1229-1232, and notes, post. That there is no implied warranty in the sale of a patent that the patent is valid, see Hiatt v. Twomey (1836), 1 Dev. & Bat. Eq. (N. C.) 315. That in the sale of a patent it is doubtful whether there is any implied warranty of validity where all is done in good faith, and both parties are as signees and are equally ignorant and 436. That the conveyance of such inventions "" as I have a patent right for" does not warrant that the vendor has a valid patent right, see Bull v. Pratt (1815), 1 Conn. 342. That a subscriber for a share in a patent right, paying nothing and signing only as an inducement to lead others to subscribe, does not warrant to them the validity of the patent or the value of the invention, but they run their own risks, see Lane v. Smith (1878), 68 Me. 178. That an agreement to protect the sales of the vendee from suits for infringements on other patents is a warranty that the article does not infringe other patents, see Croninger v. Paige (1880), 48 Wis. 229. That a covenant of warranty is valueless when the property warranted does not exist, see Bliss v. Negus (1811), 8 Mass. 46. That if the instrument couveying the patent contains no warranty, the vendee cannot set up a parol warranty, see Joliffe v. Collins (1855), 21 Mo. 338. |