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of a defect in his existing title or in respect to any title he may subsequently acquire."

§ 784. Assignment to be Recorded: Record Constructive Notice. For the protection of all persons subsequently becoming interested in the patented invention, the law requires that an assignment shall be recorded in the Patent Office within three months after the date of its execution. During these three months the subsequent alienee must protect himself by such investigation as he is able to make, and runs his own risk of a defective title through the timely recording of a prior assignment. But after three months without record the prior conveyance becomes invalid as against his later transfer, except in cases where he has actual notice of its existence. The record of the title to a patented invention, as it appears in the Patent Office, is thus conclusive in favor of all bona fide purchasers of any interest in the invention who have no other knowledge of the state of the title than that which the record furnishes, and against all unrecorded assignees whose title dates more than three months before the subsequent title is acquired. But such a record is not necessary to 5 See § 776 and notes, ante.

§ 784.1 Sec. 4898, Rev. Stat. "An assignment, grant, or conveyance shall be void as against any subsequent purchaser or mortgagee for a valuable consideration, without notice, unless it is recorded in the Patent Office within three months from the date thereof."

See also Turnbull v. Weir Plow Co. (1874), 6 Bissell, 225; 1 Bann. & A. 544; 7 O. G. 173; Gibson v. Cook (1850), 2 Blatch. 144.

2 In Gibson v. Cook (1850), 2 Blatch. 144, Nelson, J. (148) "In order to guard against an outstanding title of over three months' duration, the purchaser need only look to the records of the Patent Office. Within that period he must protect himself in the best way he can, as an unrecorded prior assignment would prevail; but it must be an assignment in writing, that may be recorded within the time limited."

That an assignment is not valid against innocent parties, unless recorded, see Boyd v. McAlpin (1844), 3 McLean, 427; 2 Robb, 277; Higgins v. Strong (1836), 4 Blackf. (Ind.) 182.

That the law requiring a record of assignments, etc., is for the protection of bona fide purchasers without actual notice, see Turnbull v. Weir Plow Co. (1874), 6 Bissell, 225; 7 O. G. 173; 1 Bann. & A. 544.

That an assignment duly recorded protects the assignee in all his rights as against a subsequent assignee, see Aspinwall Mfg. Co. v. Gill (1887), 32 Fed. Rep. 697.

That actual notice to a subsequent purchaser is equivalent to record, see Peck v. Bacon (1847), 18 Conn. 377; and cases cited in note 5, post.

4 That the record of the patent and itsassignments in the Patent Office is notice to all the world, and every one

render an assignment valid as between the assignor and those claiming under him, or between the assignee and any person having actual notice.

is chargeable with such knowledge as the search of the records would convey, see National Car Brake Shoe Co. v. Terre Haute Car & Mfg. Co. (1884), 28 O. G. 1007; 19 Fed. Rep. 514; Newell v. West (1875), 13 Blatch. 114; 80. G. 598; 9 O. G. 1110; 2 Bann. & A. 113.

That the assignee of a patent may rely on the record title, see Campbell v. James (1880), 18 Blatch. 92; 18 O. G. 1111; 2 Fed. Rep. 338; Secombe v. Campbell (1880), 2 Fed. Rep. 357; 18 Blatch. 108.

That the title of an assignee of record, derived from an assignor of more than six months ownership, cannot be attacked on the ground of fraud in the assignor, see Racine Seeder Co. v. Joliet Wire Check Rower Co. (1886), 27 Fed. Rep. 367; 37 O. G. 452.

That an assignment must be recorded before the assignee can sue on the patent, see Wyeth v. Stone (1840), 1 Story, 273; 2 Robb, 23.

That the Commissioner must be governed by the record title to the patent and cannot regard mere equitable claims, see Ex parte Edison (1875), 7 O. G. 423.

:

5 In Perry v. Corning (1870), 7 Blatch. 195, Woodruff, J. (201) "It is sufficient to say that as against a purchaser in good faith, for value, without notice of any prior assignment, an assignment not recorded within the time limited in the act is not valid, and will not affect his rights acquired from the patentee before such record is made; and that, on the other hand, the instrument, though not recorded, is a perfectly valid instrument, and effectual according to its purport, as against the assignor and all others except third persons who, in good faith,

for value, without notice, become pur

The record, though made after

chasers or acquire rights or interests in or under the patent."

In Pitts v. Whitman (1843), 2 Story, 609, Story, J. : (615) "Now, it is observable that there are no words in this enactment which declare that the assignment, if not recorded, shall be utterly void; and the question, therefore, is whether it is to be construed as indispensable to the validity of an assignment that it should be recorded within the three months, as a sine qua non, or whether the statute is merely directory for the protection of purchasers. Upon the best reflection which I have been able to bestow upon the subject, my opinion is that the latter is the true interpretation and object of the provision." 2 Robb, 189 (196).

Further, that an unrecorded assign. ment is valid between the parties, see Horne v. Chatham (1885), 64 Tex. 36; Maurice v. Devol (1883), 23 W. Va. 247; Turnbull v. Weir Plow Co. (1874), 7 0. G. 173; 6 Bissell, 225; 1 Bann. & A. 544; Moore v. Bare (1860), 11 Iowa, 198; Sone v. Palmer (1859), 28 Mo. 539; Black v. Stone (1858), 33 Ala. 327; Hildreth v. Turner (1855) 17 Ill. 184; McKernan v. Hite (1855), 6 Ind. 428; Louden v. Burt (1853), 4 Ind. 566; Case v. Redfield (1849), 4 McLean, 526; 2 Robb, 741; Peck v. Bacon (1847), 18 Conn. 377.

That an assignment though not recorded is good, except against creditors and subsequent bona fide purchasers, see Holden v. Curtis (1819), 2 N. H. 61.

That one who knows of a prior unre. corded assignment cannot be a bona fide purchaser, see Ashcroft v. Walworth (1872), 2 O. G. 546; Holmes, 152; 5 Fisher, 528.

That an assignment though unre

three months have elapsed, affords constructive notice to all persons acquiring interests in the invention subsequently to the date of record.

§ 785. Record of Unrecordable Instrument not Constructive

Notice.

The law provides for the recording of three instruments only an assignment before patent when the patent is to issue to the assignee, either alone or jointly with the inventor; an assignment after patent; and a grant. The record of no other instrument than these affords constructive notice, although if thus brought to the knowledge of any person it may become as to him individually an actual notice of whatever rights the instrument purports to convey.2 Thus an

corded is good against all who have actual notice, see Maurice v. Devol (1883), 23 W. Va. 247; Ashcroft v. Walworth (1872), 5 Fisher, 528; Holmes, 152; 2 O. G. 546; Continental Windmill Co. v. Empire Windmill Co. (1871), 4 Fisher, 428; 8 Blatch. 295.

That it has been doubted whether actual notice of an unrecorded grant would bind subsequent assignees, see Perry v. Corning (1870), 7 Blatch. 195, and cases there cited.

That a prior unrecorded assignment is good against subsequent assignees without value, see Saxton v. Aultman (1864), 15 Ohio St. 471.

That the rule requiring an assignment to be recorded within three months is directory only, the record being good between the parties whenever it is made, see Brooks v. Byam (1843), 2 Story, 525; 2 Robb, 161.

That the record of an assignment is notice to subsequent purchasers, see Case v. Redfield (1849), 4 McLean, 526; 2 Robb, 741.

§ 785. 1 That under the act of 1836 only an assignment of the whole or a part of the entire interest in an existing patent, or a grant of a territorial inter

est, could be recorded, see Sec. 11, 1836, and Brooks v. Byam (1843), 2 Story, 525; 2 Robb, 161.

That under the act of 1870 and the Revised Statutes an assignment before patent may also be recorded, see Sec. 33, 1870, and Sec. 4895, Rev. Stat.

That Sec. 4895, Rev. Stat., does not provide for recording assignments of unpatented inventions, unless the patent is to issue to the assignee, and if recorded, such record is not notice to any one, see Wright v. Randel (1881), 21 O. G. 493; 19 Blatch. 495; 8 Fed. Rep. 591.

That the conveyance of a right to use within a limited territory need not be recorded, see Stevens v. Head (1837), 9 Vt. 174.

That under Sec. 5046, Rev. Stat. an assignment by the bankrupt court to the assignee need not be recorded in the Patent Office, see Prime v. Brandon Mfg. Co. (1879), 16 Blatch. 453; 4 Bann. & A. 379.

2 That the record of an instrument which the law does not require to be recorded is not constructive notice of anything to any person, see Wright v. Randel (1881), 19 Blatch. 495; 8 Fed. Rep. 591; 21 O. G. 493; Hamilton v.

assignment before patent, unaccompanied by a request that the patent issue to the assignee, although recorded in due season, cannot prevail over a subsequent assignment with such request to a bona fide assignee for value, but the latter will receive the patent and can enforce it against the former.3 The record of an assignment of a right of action under a patent, for the same reason, is not constructive notice to the party against whom such action lies.4

§ 786. Relation of Legal and Equitable Titles Arising from Assignments.

Through the operation of these rules concerning the record of assignments, as well as by the other methods before noticed, the legal and equitable titles to a patentable invention may become separated from each other and vest in different owners, or an equitable title as against certain individuals may be created in one party while both the legal and equitable titles, as against all the world, may reside in another. Where, for example, an inventor assigns his invention before the granting of a patent, and then procures the issue of a patent in his own name, the assignment not containing a request for it to issue to the assignee, the legal title Kingsbury (1879), 17 Blatch. 264; 17 upon those recorded, in ignorance of the O. G. 147.

That an agreement to assign a patent is not a recordable instrument, and if recorded does not amount to notice, see N. Y. Paper Bag Mach. Co. v. Union Paper Bag Mach. Co. (1887), 32 Fed. Rep. 783.

The record of a recordable instrument is constructive notice to all persons, whether cognizant of the record or not. But a person, having actual knowledge that any instrument is on record is put on inquiry as to all facts which the instrument suggests and which a reasonable search might ascertain, whether or not the instrument is in itself properly recordable. Thus that where some papers which the law does not require to be recorded are recorded while others are not, a party who acts

latter, is still bound by them as if also
known, being put on inquiry by those
recorded, see Hamilton v. Kingsbury
(1879), 17 Blatch. 264; 17 O. G. 147.
8 That an unrecorded assignment,
or an assignment before patent not re-
questing the issue of the patent to the
assignee though put on record, cannot
avail against a subsequent bona fide
legal title to the patent, and such sub-
sequent assignee may have the patent
issued to him and hold it against the
former, see Wright v. Randel (1881),
19 Blatch. 495; 8 Fed. Rep. 591; 21
O. G. 493.

4 That an assignment of a right of action need not be recorded, see Gear v. Fitch (1878), 16 O. G. 1231; 3 Bann. & A. 573.

vests in the inventor and the equitable title in the assignee.1 Or where a party, having knowledge of the existence of a prior unrecorded assignment, after the time limited for recording it takes an assignment to himself and places it on record, he holds the legal title to the patented invention though the equitable title belongs to the former alienee.2 In these cases, and in all others where the legal and equitable titles are severed from each other, chancery will regard the holder of the legal title as a trustee for the equitable owner, and compel him to execute such conveyances and perform such other acts as equity may require. But where a legal and equitable title meet in the same person, these will prevail over all other merely equitable titles unless their equity is

§ 786. That an assignment of the patent privilege, before the patent issues, is a contract to assign the patent when issued, and creates an equitable title to the patent in the assignee although the patent issues to the inventor, see Aspinwall Mfg. Co. v. Gill (1887), 40 O. G. 1133; United States Stamping Co. v. Jewett (1880), 7 Fed. Rep. 869; 18 Blatch. 469; 18 O. G. 1529; Hammond v. Pratt (1880), 16 O. G. 1235; Littlefield v. Perry (1875), 21 Wall. 205; 7 O. G. 964; Newell v. West (1875), 13 Blatch. 114; 8 O. G. 598; 9 O. G. 1110; 2 Bann. & A. 113; Troy Iron & Nail Co. v. Corning (1852), 14 How. 193; Gayler v. Wilder (1850), 10 How. 477.

That where a patent issues to an inventor after its assignment to another with a request that it issue to the assignee, the legal title vests in the assignee, upon his recording of the assignment, see United States Stamping Co. v. Jewett (1880), 7 Fed. Rep. 869; 18 Blatch. 469; 18 O. G. 1529; and other cases cited in § 769, notes 4 and 5, ante.

2 That an assignee of record, taking his assignment with notice of prior unrecorded conveyances, acquires at most the legal title only, while the equitable title resides in the former assignees, see

Maurice v. Devol (1883), 23 W. Va. 247; Ashcroft v. Walworth (1872), 5 Fisher, 528; 2 O. G. 546; Holmes, 152; Perry v. Corning (1870), 7 Blatch. 195; and other cases cited in § 784, notes 3 and 5, ante.

8 That chancery will compel the holder of the legal title to do whatever may be required to protect the interests of the owner of the equitable title, see Hapgood v. Rosenstock (1885), 23 Blatch. 95; 23 Fed. Rep. 86; and cases cited in § 769, note 6, ante, and § 1228 and notes, post.

That where the absolute owner of a patent conveys it to joint trustees, with full discretionary powers, they cannot act otherwise than jointly, and their sole contracts are void, see Wescott v. Wayne Agricultural Works (1882), 11 Fed. Rep. 298.

That a contract right may be protected in equity by enjoining the patentee from violating it, even though a specific performance cannot be decreed, see Goddard v. Wilde (1883), 17 Fed. Rep. 845.

That the sale of the invention, and the patent or extension to be thereafter obtained for it, with covenants of quiet enjoyment, gives an equitable interest in the patents so obtained, and the

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