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superior to his. Thus when an assignment before patent, unaccompanied by a request that the patent issue to the assignee, is followed by another assignment to a bona fide assignee for value containing such request, which being duly recorded secures the patent to the later assignee, the legal title vests in him by the issue of the patent, and the equities being equal he can hold the patented invention against the equitable title of the former assignee. Or where, during the time limited for placing an assignment upon record, another bona fide purchaser obtains a title which he could enforce in chancery against his assignor, the due recording of the previous assignment enables the assignee in whom the legal and the equitable titles both inhere to vindicate them against any claim that may be set up by the later alienee. The legal title is shown by the patent itself, as granted and assigned by proper instruments duly recorded.

patentee will be a trustee for the vendee, see Emmons v. Sladdin (1875), 9 O. G. 352; 2 Bann. & A. 199.

That the legal title to a patent will prevail over the equitable, unless the legal owner had notice of the equities, see Davis Wagon Wheel Co. v. Davis Wagon Co. (1884), 20 Fed. Rep. 699; 22 Blatch. 221; and cases cited in § 769, note 5, ante.

That notice to individual stockholders of an outstanding equitable title is not notice to the corporation, see Davis Wagon Wheel Co. v. Davis Wagon Co. (1884), 22 Blatch. 221; 20 Fed. Rep. 699.

That an assignment before patent with request that the patent issue to the assignee, if recorded, gives superior title to that of prior assignees of a prior patent, with contract to assign all future inventions of which this is one, provided the second assignment is bona fide and without notice, see Wright v. Randel (1881), 8 Fed. Rep. 591; 19 Blatch. 495, 21 O. G. 493.

That a subsequent bona fide purchase for value prevails over any mere

Equitable titles may

contract to sell a future term, see Gib. son v. Cooke (1850), 2 Blatch. 144; and cases cited in § 769, note 5, ante.

That where an inventor assigns a patent with the interest in a new invention made by him, and afterward assigns the new invention to others and requests the patent to issue to them, which latter assignment is recorded and the patent so issued, these latter assignees may hold the new invention against the former assignee, see Wright v. Randel (1881), 21 O. G. 493, 19 Blatch. 495; 8 Fed. Rep. 591.

That an assignee, recording his assignment within the period prescribed by law, prevails over all intervening assignees, whether with or without notice of his assignment, see Gibson v. Cook (1850), 2 Blatch. 144.

7 That the legal title to a patent is shown by the patent as granted and assigned, whatever equitable rights any mere contracts may create, see Graham v. McCormick (1880), 5 Bann. & A. 244; 10 Bissell, 39; 21 O. G. 1533; 11 Fed. Rep. 859.

That title by grant of letters-patent

rest upon contracts to convey, which are unrecordable, or upon recordable conveyances where record has been unlawfully delayed. The parties having power in all cases to secure their rights by making proper conveyances and recording them in compliance with the law, the hardship which results from the extinguishment of merely equitable ownerships by those in which the legal and the equitable titles both unite must be attributed to their own negligence, rather than to the legal doctrine by which these respective rights are regulated and preserved.

§ 787. Assignor Estopped to Deny Validity of Patent or Title of Assignee.

The assignor of a patented invention is estopped from denying the validity of the patent or his own title to the interest transferred. He cannot become the owner of an older patent

is title of record, see Ex parte Osgood (1885), 33 O. G. 1265.

That an assignment in trust gives the assignee a legal title, see Campbell v. James (1879), 17 Blatch. 42; 18 O. G. 979; 4 Bann. & A. 456.

8 That a contract to assign creates only an equitable interest, see Gibson v. Cooke (1850), 2 Blatch. 144; Park v. Little (1813), 3 Wash. 196; 1 Robb, 17; and cases cited in § 769, note 5, and § 771, note 4, ante.

That an equitable title may rest on unrecorded conveyances, see note 2, ante.

§ 787. 1 That an assignor is estopped to deny the validity of the patent, see American Paper Barrel Co. v. Laraway (1886), 28 Fed. Rep. 141; 37 O. G. 674; Underwood v. Warren (1884), 21 Fed. Rep. 573; Time Telegraph Co. v. Carey (1884), 22 Blatch. 34; 26 O. G. 826; Consolidated Middlings Purifier Co. v. Guilder (1881), 9 Fed. Rep. 155; 3 McCrary, 186; Faulks v. Kamp (1880), 5 Bann. & A. 73; 17 O. G. 851; 17 Blatch. 432; 3 Fed. Rep. 898; Onderdonk v. Fanning (1880), 4 Fed. Rep. 148. See § 1021 and notes, post.

That parties subsequently becoming interested with the assignee are bound by the same estoppel, see Time Telegraph Co. v. Carey (1884), 22 Blatch. 34; 26 O. G. 826.

That an assignor is estopped to deny his own right to convey the patent, see Faulks v. Kamp (1880), 17 O. G. 851; 5 Bann. & A. 73; 17 Blatch. 432; 3 Fed. Rep. 898; Ex parte Edison (1875), 70. G. 423.

That a patentee is not estopped to deny the validity of his patent as against an assignee of his own trustee in bankruptcy, see Cropper v. Smith (1881), L. R. 26 Ch. D. 700; 10 App. Cas. 249.

That the estoppel operates against the assignor in favor of the assignee though the patent be invalid or the title void as against all the world beside, see Curran v. Birdsall (1883), 20 Fed. Rep. 835; 27 O. G. 1319.

That where a member of an infringing firm was formerly a part-owner of the patent, he is estopped from denying its validity unless he conveyed his interest to the plaintiff without considera

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for the same invention and hold it against his assignee, nor can he practise the invention contrary to the provisions of his assignment, and when sued for infringement set up in his defence the invalidity of the patent or his own inability to convey it. On the contrary, if the patent be in fact invalid, and the assignor obtains a valid patent for the same invention, the valid patent enures to the benefit of the assignee, except where his assignment covered only the then existing rights of the assignor. In the same manner the assignee is estopped

tion, see Parker v. McKee (1885), 32 the patent in a suit against him by the O. G. 137.

That a plaintiff cannot deny the existence of a company through which he derived title, see Bogart v. Hinds (1885), 33 O. G. 1268.

That a patentee is estopped from denying the validity of the patent or its re-issues in a suit against him by his assignee, though the re-issues were granted after the assignment, and the assignee ought to have known that they were void, see Burdsall v. Curran (1887), 42 O. G. 1167; 31 Fed. Rep. 918.

That an applicant is estopped to deny his deed of assignment, see Ex parte Edison (1875), 7 O. G. 423.

2 That a patentee having sold his patent cannot buy in an older patent and thus defeat his assignee's rights, even if the older patent be manifestly superior to his, see Rumsey v. Buck (1884), 20 Fed. Rep. 697; Curran v. Burdsall (1883), 27 O. G. 1319; 20 Fed. Rep. 835.

That where an assignor is co-owner of an older and superior patent, the assignee of the junior patent becomes the licensee of the other co-owners, and these must look to the assignor for their compensation, see Curran v. Burdsall (1883), 27 O. G. 1319; 20 Fed. Rep. 835.

That where an assignor agreed to stop making the invention and paid a license fee to the assignee for the privilege of selling what he had on hand, he cannot deny the validity of

assignee for infringement by making and selling after the assignment under new letters-patent, see Consolidated Middlings Purifier Co. v. Guilder (1881), 9 Fed. Rep. 155; 3 McCrary, 186.

That a party who clothes another with the legal title to a patent, and confers upon the assignee the power to determine who shall take its benefits, is estopped to complain of fraud on the ground that another is not allowed to share in it, see Racine Seeder Co. v. Joliet Wire Check Rower Co. (1886), 27 Fed. Rep. 367; 37 O. G. 452.

See as to infringements by assignors § 914 and notes, post.

8 That where the grantor of a patent afterwards acquires a patent for the same invention, the latter enures to the benefit of his grantee, see Faulks v. Kamp (1880), 5 Bann. & A. 73; 17 Blatch. 432; 17 O. G. 851; 3 Fed. Rep. 898.

That if the title of the vendor is invalid at the time of the sale, a title afterwards acquired by him will enure to the benefit of the vendee, see Sherman v. Champlain Transportation Co. (1858), 31 Vt. 162.

That where one of two joint-patentees obtains a sole patent for the same invention, after the assignment of the joint patent, the sole patent vests in the assignees, see Kohler v. Kohler (1888), 43 O. G. 247.

That where an assignor grants to

from denying the validity of the patent, and of the title conferred upon him by the assignor, if he has taken and still enjoys the benefits of the assignment. Where by the terms of the assignment he becomes liable to the assignor for royalties on sales or for a share in the profits made by him. from the use of the invention he cannot, in an action of account brought by the assignor for their recovery, defend upon the ground that the invention was unpatentable, or the patent void, or the assignor without a title which he could convey. Nor can he purchase an outstanding claim against the assignor and hold it as a set-off against the amount due according to the terms of his assignment. But where an assignee, on discovering the defects in the patent or the title, repudiates the assignment and relinquishes its benefits, the estoppel is no longer operative upon him."

one person, and afterwards to another without warranty, and then again be comes the owner of the rights of the first grantee, the second grant becomes effective by estoppel, see Littlefield v. Perry (1874), 21 Wall. 205; 7 O. G. 964.

That a title may be acquired by estoppel against an inventor who permits third parties to deal with his invention as if it were their own, see National Feather Duster Co. v. Hibbard (1881), 11 Bissell, 76; 21 O. G. 635; 9 Fed. Rep. 558.

That an estoppel in pais cannot turn into a first and original inventor one who is not so, but can merely divert the patent from the inventor to an equitable assignee or defeat it altogether, see Swift v. Rochow (1880), 17 O. G. 450.

See further as to the estoppel of the assignor §§ 981, 1046, and notes, post.

That an assignee of a patent who has derived profits under it is estopped from denying its validity in an action for an account, see Swift v. Rochow (1880), 17 O. G. 450.

6 That an assignee cannot defend against a claim for royalties on the ground of fraud in the assignor, if he has received all the benefits of the assignment, see Shaw v. Soule (1884), 20 Fed. Rep. 790.

That an assignee manufacturing on terms cannot deny the validity of the patent when called to an account, see Kinsman v. Parkhurst (1855), 18 How. 289.

6 That an assignee cannot purchase of a third person a claim against the patentee and set it up against him on an account rendered in pursuance of an agreement to manufacture, see Kinsman v. Parkhurst (1855), 18 How. 289.

7 That a recital in a conditional contract of assignment that "the vendor is the owner of the patent," is not an estoppel on the purchaser, if the contract is rescinded before it takes effect, see Swift v. Rochow (1880), 17 O. G. 450.

See further as to the general doctrine of estoppel upon assignees and licensees, §§ 820, 1238, 1239, 1251, 1252, and notes, post.

See also §§ 1238, 1239, and notes, post.

§788. Assignments upon Condition: Reversionary Interests of Assignor.

An assignment may be made upon condition, or for a term less than the entire duration of the patent, and thus reversionary interests may be created in the assignor. These interests he can protect according to their nature, enforcing the conditions and maintaining actions, legal or equitable, as the case requires.2 After the termination of his interest in the invention, whether by forfeiture for breach of condition or by lapse of time, the assignee can neither license others to practise it, nor in any other manner limit the rights now vested in the assignor.3

§ 788. That unless an assignment is unconditional the assignor has rights which he can protect, see Cook v. Bidwell (1881), 20 O. G. 1083; 8 Fed. Rep. 452.

That as long as the conditions of a conditional assignment are not fulfilled, the assignor has a reversionary interest, see Otis Bros. Mfg. Co. v. Crane Bros. Mfg. Co. (1886), 27 Fed. Rep. 550.

That an assignment for a term of years leaves a reversionary interest in the assignor, which he can protect, see Still v. Reading (1881), 20 O. G. 1025; 9 Fed. Rep. 40; 4 Woods, 345; Cook v. Bidwell (1879), 20 O. G. 1083; 8 Fed. Rep. 452.

That whether an assignment on condition subsequent has been defeated is a question for the courts, not for the Patent Office, see Hammond v. Pratt (1880), 16 O. G. 1235.

2 That where a patent is sold with a condition of reconveyance, the condition may be enforced, see Andrews v. Fielding (1884), 20 Fed. Rep. 123.

That where the assignee of a patent fails to carry out the purpose for which it has been assigned to him, and the contract provides for a reverting of the patent in such case to the assignor, it will so revert, see Buckley v. Sawyer Mfg. Co. (1881), 7 Fed. Rep. 358; 2 McCrary, 350.

That any person taking title from

a conditional assignee with notice of the conditions is bound by them, see Werderman v. Société Générale d'Electricité (1881), L. R. 19 Ch. D. 246.

That where the inventor agrees with a capitalist to develop an invention, and each party is to use due diligence, and the patent is to revert to the inven. tor if the capitalist is in fault, no re verter will be decreed if both are in fault, and the inventor has been remun. erated, see Buckley v. Sawyer Mfg. Co. (1881), 2 McCrary, 350; 7 Fed. Rep. 358.

That where the owner of a patent, having assigned the exclusive right to make and sell, excepting the right to sell in a certain place, and reserving to himself the personal right to make and sell anywhere, and having transferred to the assignee the right to sue infringers and take the proceeds of the suits, afterwards sells the patent to one who knows of this assignment and its terms, the assignee can enjoin the vendee from making and selling, except in the particular place excepted, see Hapgood v. Rosenstock (1885), 23 Blatch. 95; 23 Fed. Rep. 86.

8 That after an assignment has been forfeited by breach of condition, the assignee can grant nothing either by way of license or otherwise, see Abbett v. Zusi (1879), 5 Bann. & A. 38.

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