§789. Assignees: when Bound by Prior Acts of Assignors. The privity which exists between the assignor of a patented invention and his assignees renders them subject to the legal consequences of all his prior acts of which they have actual or constructive notice or of which such notice is presumed.1 They are concluded, equally with himself, by judgments rendered against him before the assignment, and receive their interests subject to all the equities of which they have knowledge.2 If their title accrues pending an interference, they are bound by its results to the same extent that the assignor would have been had the assignment not been made. But private conduct or admissions of the assignor, of which his assignees could have obtained no information or were not bound to make inquiry, do not thus affect them.1 Acts subsequent to the assignment cannot prejudice their rights.

§ 789. That an assignee takes the patent subject to all the legal consequences of the inventor's prior acts, see Worley v. Tobacco Co. (1881), 104 U. S. 340; 21 O. G. 559; McClurg v. Kingsland (1843), 1 How. 202; 2 Robb, 105.

That an assignee of the interest of another assignee takes no more than his grantor had, and is chargeable with notice of what he might have learned if he had inquired of the original grantor, as against a later assignee of the original grantor, see Hamilton v. Kingsbury (1880), 17 Blatch. 460; 17 O. G. 847; 4 Fed. Rep. 428.

2 That the assignee of a patent is concluded by a decree against his assignor, see Pennington v. Hunt (1884), 20 Fed. Rep. 195; and §§ 983, 1017, 1048, and notes, post.

That an assignee takes subject to the assignor's disclaimers, and other acts working an estoppel, see Blades v. Rand, McNally, & Co. (1886), 27 Fed. Rep. 93; 37 O. G. 99.

That where an assignee assigns his rights, his assignee is bound by all the equities of which he has knowledge, see

3

Kinsman v. Parkhurst (1855), 18 How. 289.

8 That a purchaser who buys an interest in an invention during an interference is bound by the rule of caveat emptor, see Ex parte Mason (1872), 2 O. G. 274.

That under Sec. 58, act of 1870, an assignee is not estopped by the paten tee's statement in an interference proceeding as to the date of his invention, see Union Paper Bag Mach. Co. v. Crane (1874), 1 Bann. & A. 494; 6 O. G. 801; Holmes, 429.

That a concession as to priority does not affect prior assignees, see Hammond v. Pratt (1880), 16 O. G. 1235.

That the rights of an assignee against a rival inventor are the same as those of his assignor, see Gay v. Cornell (1849), 1 Blatch. 506.

4 That an assignee for valuable consideration is not bound by a prior unrecorded equitable claim of which he had no notice, see Campbell v. James (1880), 18 Blatch. 92; 18 O. G. 1111; 2 Fed. Rep. 338.

That whether assignees without notice are estopped by the conduct of the

§ 790. Assignment of Right of Action for Past Infringements. The right to sue for past infringements may be assigned in connection with an assignment of the patent, like any other chose in action, and the remedy can be enforced in law or equity by the assignee.1 Such an assignment may be made after a suit has been commenced, in which case the defendant must be notified thereof before proceeding further in the cause. No especial form is required for such assignment. An irrevocable power of attorney to collect the claims, or an instrument purporting to assign the patented invention, but executed after the patent has expired, are regarded as sufficient for this purpose. Such an assignment is not legally recordable.4

inventor, quere, see Sprague v. Adriance (1877), 3 Bann. & A. 124; 14 O. G. 308.

That a purchaser, pending a suit to which he is a party, takes subject to the equities of the other parties to the suit, see Kearney v. Lehigh Valley R. R. Co. (1886), 27 Fed. Rep. 699. § 790. That the right to sue for the infringement of a patent is assignable, see Shaw v. Colwell Lead Co. (1882), 11 Fed. Rep. 711; 20 Blatch. 417; Hamilton v. Rollins (1877), 5 Dillon, 495; 3 Bann. & A. 157.

That the assignment of a share in the proceeds of suits for infringements creates no interest in the invention or the monopoly, see Tilghman v. Proctor (1888), 125 U. S. 136; 43 0. G. 628.

That a right of action for infringe ment survives to personal representatives and may be sued on or assigned by them, and the assignee may sue thereon in his own name if the local law permits, see May v. County of Logan (1887), 30 Fed. Rep. 250; 41 O. G.1387.

That an assignment by an adminis trator of all rights under or through an expired patent carries claims for past infringements, see May v. Saginaw Co. (1887), 32 Fed. Rep. 629.

That a sale of patents by an admin

istrator under order of court for a nominal sum does not carry a right to sue for past infringements, see May v. Ju neau Co. (1887), 30 Fed. Rep. 241; 41 O. G. 578.

That an assignment of a claim for the use of an invention is not an assignment of the patent, see Campbell ". James (1880), 18 Blatch. 92; 18 O. G. 1111; 2 Fed. Rep. 338.

That an assignee of claims for past infringements takes subject to all equi ties, see New York Grape Sugar Co. v. Buffalo Grape Sugar Co. (1883), 21 Blatch. 519; 25 O. G. 1076; 18 Fed. Rep. 638.

2 That when a right of action is assigned after a suit is brought, the defendant should be notified of it, see Gear v. Fitch (1878), 3 Bann. & A. 573; 16 O. G. 1231.

8 That an assignment of an expired patent can take effect only as an assign. ment of claims for past infringements, see May v. Saginaw Co. (1887), 32 Fed. Rep. 629.

That the assignment of an expired patent may operate as a power of attorney to sue for and collect damages for past infringements, see Bell v. McCullough (1858), 1 Bond, 194; 1 Fisher, 380.

That an assignment of the right

§ 791. Grant Defined: Distinguished from Assignment.

The grant of a patented invention differs from an assignment only as to the territorial limits within which it operates. It differs from a license as to the nature of the rights conveyed. The grantee has the exclusive interest both in the invention and in the monopoly, within the prescribed limits, and may maintain an action in his own name for an infringement of the patent within his territory. A licensee has either a non-exclusive interest or an interest in less than all the rights embraced in the invention, and no interest in the monopoly which he can make effective by a suit at law in his own name. To distinguish, therefore, an assignment from a grant it is only necessary to determine whether the conveyance is of force throughout the entire United States or is confined to a particular locality. It matters not whether the restrictions are in positive or negative terms. An instrument transferring all the rights secured by the patent, except as to a certain town or county, is as true a grant as if the area lying outside of such town or county were specifically described.2

§ 792. Grant Distinguished from License.

To distinguish a grant from a license, regard must be paid to the nature of the interest conveyed. The interest must be

to maintain suits need not be recorded, see Gear v. Fitch (1878), 16 O. G. 1231; 3 Bann. & A. 573.

See further as to an assignment of a claim for past infringements, § 781 and notes, ante, and § 943 and notes, post.

§ 791. 1 See § 763, note 1, ante. 2 That the transfer of the entire interest in the invention within specified territory is a grant, see Potter v. Holland (1858), 4 Blatch. 206; 1 Fisher, 327; Ritter v. Serrell (1852), 2 Blatch. 379.

That the transfer of all the patentee's interest in a given territory is a grant, see Perry v. Corning (1870), 7 Blatch.

195.

That an assignment of all rights 2 Fisher, 588.
VOL. II. 36

entire within the prescribed area, and exclusive.1 A transfer of the right to make or use or sell, or of the exclusive right to make or use or sell, does not convey the entire interest; the grant must operate on all three of these rights, and be exclusive as to all; and a transfer which does not thus operate is a mere license. But these rights need not be particularly described in the conveyance, if it manifests an evident intention of the grantor to transfer them. An alienation of all the rights mentioned in the patent is an assignment or a grant according to the territorial limits fixed by the conveyance.2

§ 793. Grants upon Condition.

A grant, like an assignment, may be conditional or temporary. It may also be limited as to the extent of its enjoyment. The grant of an exclusive right to make and use and sell a certain number of the patented devices within the prescribed territory, and of the exclusive use of the invention within such territory, is a valid grant, conferring upon the grantee the sole interest in the invention and monopoly in that area, and yet restricting him in its enjoyment to the number of the articles described.1 Limits may also be placed to his mode

§ 792.1 In Littlefield v. Perry (1874), 21 Wall. 205; 7 O. G. 964, the Supreme Court seem to recognize the grant of an undivided interest within a certain territory as valid and proper. The statute on which the power to transfer the monopoly depends, however, makes no provision for the conveyance of any rights within a specified area unless such rights are exclusive. Sec. 4898, Rev. Stat. "The patentee. . . may in like manner grant and convey an exclusive right under his patent to ... any specified part of the United States." See also Potter v. Holland (1858), 4 Blatch. 206; 1 Fisher, 327; Gayler v. Wilder (1850), 10 How. 477. A non-exclusive right must, therefore, be an interest in the invention as distinguished from the monopoly, that

is, a mere license, unless a grant of an undivided interest could be construed as making the grantee and grantor cograntees, in whom the entire and exclusive sectional interest resided.

2 That an assignment of all the patentee's right, title, and interest within certain territory is the grant of an exclusive right, see Perry v. Corning (1870), 7 Blatch. 195; Burdell v. Denig (1865), 2 Fisher, 588.

That an exclusive right for a term of years to use the invention in a given territory, and to use and sell the product of such use, is a mere license, not a grant, see Oliver, Finnie & Co. v. Rumford Chemical Works (1883), 109 U. S. 75; 25 O. G. 784.

§ 793. 1 That the grant of an exclusive right to make, use, and sell a cer

of using the invention, or to the sale of it or of its products outside of his territory; the conveyance is still a grant unless the enjoyment thus denied to the grantee is reserved to the grantor or vested in some other alienee.2 His right is no less exclusive for being limited in exercise, provided it resides in him alone. But in the absence of such restrictions the grantee may enjoy the rights to make and use and sell within his district as fully as the patentee could have done, and the products which arise out of his practice of the invention may be used by his vendees in any portion of the United States.3

tain number of the patented devices within a certain territory, and of the exclusive use of the patent in such territory, vests an exclusive territorial interest in the grantee, see Ritter v. Serrell (1852), 2 Blatch. 379.

2 That a grant of specific territory may be limited as to the mode of use and yet be valid, see Dorsey Revolving Harvester Rake Co. v. Bradley Mfg. Co. (1874), 12 Blatch. 202; 1 Bann. & A. 330.

That an assignee of a territorial right, without restrictions, may sell the patented device to be used anywhere, see Hatch v. Hall (1884), 30 O. G. 1096; 22 Fed. Rep. 438; McKay v. Wooster (1873), 2 Sawyer, 373; 6 Fisher, 375; 3 0. G. 441.

That such an assignee cannot sell the device to have it sold again or used in the course of trade outside his territory, see Hatch v. Adams (1884), 22 Fed. Rep. 434; 29 O. G. 776.

See also §§ 824, 914, and notes, post. That where the patentee grants a territorial right to make, use, and sell with out limiting the use by the vendee, the vendee of the grantee may use the invention anywhere without reference to other grants of the patentee, see Adams v. Burke (1873), 17 Wall. 453; 33 O. G. 114.

That a grantee cannot make outside his own territory, for use outside it, see American Paper Barrel Co. v. Laraway (1886), 28 Fed. Rep. 141; 37 O. G. 674.

That an assignment, by the assignee of an exclusive right to make and use the invention within a given territory, exhausts his own interests within that territory, and he has no right to make up the invention and put it into the market, to be used after the patent expires, con. trary to the rights of the patentee on the extension, see Union Paper Bag Mach. Co. v. Nixon (1876), 9 O. G. 691; 2 Bann. & A. 244; 1 Flippin,

491.

That the assignor of a territorial right cannot sell the device in that territory or to be used in that territory, see Union Paper Bag Mach. Co. v. Nixon (1876), 2 Bann. & A. 244; 9 O. G. 691; 1 Flippin, 491.

That the reservation by an assignor of the right to use the invention in one of several assigned States does not affect the assignee's rights in the other States, see Hobbie v. Smith (1886), 27 Fed. Rep. 656.

That an agreement that the grantee only should manufacture is not void as being in restraint of trade, see Kinsman v. Parkhurst (1855), 18 How. 289.