license is determined by the circumstances out of which it has arisen.5

§ 810. Express Licenses may Cover one or more of the Rights

Embraced in the Invention.

A license may relate to any or to all of the subordinate rights embraced in the invention. These rights are in their nature independent of each other, and can be exercised either separately or together, and can vest in different persons or in a single individual. It is optional with the owner of the patented invention to divide them, and to confer upon one licensee the right to make, upon another the right to use, and upon another the right to sell, or to bestow the three, or any two of them, on the same licensee.1 To which and to how many of these rights a given license relates depends upon its terms, interpreted by the intention of the parties as shown by all the circumstances of the case.

§ 811. Express Licenses: License to Make.

A license to make confers upon the licensee the right to construct the article which is described and claimed in the letterspatent. If conferred alone, it gives the licensee no right to use or sell the article when constructed, and hence is generally coupled expressly with one or the other of these additional rights, as in licenses to make and use, or to make and sell.1 Where the express words of the license embrace only the right to make, and the other rights are necessary to enable

That the scope of an implied license is ascertained from the circumstances, see Montross v. Mabie (1887), 41 O. G. 931; 30 Fed. Rep. 234.

§ 810. 1 In Steam Cutter Co. v. Sheldon (1872), 10 Blatch. 1, Woodruff, J. (8) "True, the patent granted to an inventor confers upon him the right to make, to use, and to vend to others to be used; and it is possible for him, in granting to others a share in his exclusive right, to limit the privilege granted, as he may see fit, and it is, therefore, possible for him to keep these

privileges distinct, if he can find persons willing to pay for one without the right to enjoy either of the others. Each case, however, must be judged of as well by the terms of the grant of privilege, as, also, by the situation of the parties or the circumstances under which they act." 5 Fisher, 477 (484).

See also Porter Needle Co. v. National Needle Co. (1883), 17 Fed. Rep. 536.

§ 811. That the right to make is distinct from the right to use, see Bicknell v. Todd (1851), 5 McLean, 236.

the licensee to derive any advantage from the license, the presumption that the licensor intended that the right conveyed should be beneficial to the licensee controls the interpretation of the license, and extends it to include the right to use or sell, rather than permit it to be practically void. Thus a license to make the invention, conferred upon a licensee in whose business the thing made is ordinarily employed, carries by implication a right to use it when constructed. A similar license to a manufacturer of articles for sale, who has no use for this particular article when made, authorizes him to sell as well as make it.2 The scope of the license is gov erned by the same presumption. A license to make an article which is covered by several patents, all owned by the same licensor, is a license under each of these patents, to whatever extent the making of the invention may require.3

§ 812. Express Licenses: License to Use.

A license to use varies in signification according to the nature of the invention to which it relates. When the invention is an art a license to use it is a license to practise the invention, and confers a right to do whatever the specification of the patent may prescribe or suggest, no other form of license being appropriate to this class of inventions. When the invention is an instrument, however, a license to use bestows merely the right to employ the completed article for practical purposes, but not the right to make it nor to sell it.1

2 In Steam Cutter Co. v. Sheldon (1872), 10 Blatch. 1, Woodruff, J. (8) "If a party engaged exclusively in the construction of machines of various kinds, for sale to others, were to receive a license to manufacture a patented machine, for a consideration presently paid to the patentee, a construction which would deny him all opportunity to make the privilege of any value, forbidding his sale of the machines when manufactured, should be very clearly imported by the license, or the court would hold that the parties meant that he should derive some benefit from the license, and not be left thereafter

wholly dependent on the will of the patentee." 5 Fisher, 477 (484).

8 That a general grant of the right to make the patented device, by the owner of two patents which cover the making, confers the right under both patents, see Day v. Stellman (1859), 1 Fisher, 487.

That a license under a foreign patent does not authorize the licensee to make the articles abroad for sale here, see Société Anonyme v. Tilghman's Patent Sand Blast Co. (1883), L. R. 25 Ch. D. 1.

§ 812.1 In Steam Cutter Co. v. Sheldon (1872), 10 Blatch. 1, Wood

In the absence of express restrictions in the license, this right of use is unlimited as to place, quantity and method, and may be continued during the term for which the patent has been granted, although the use must be confined to the precise invention covered by the patent of the licensor.2 Express restrictions as to place, time, quantity or mode of use, are binding on the licensee and render all use contrary to such restrictions an infringement of the patent. A license to

use within a certain district only, or at a certain shop, or on a certain line of railway, gives no authority to the licensee or his vendees to employ the invention in another district, or at a different shop, or on a new or an extended line of railway. A license to use a specified number of the patented

ruff, J. (8) "On the other hand, when the patentee, having made machines, sells one with the right to use the same, his grant may, with propriety, be limited to the particular machine sold; and it is also clear that such a sale would (unless limited in terms, or by special circumstances), import the right to use, although not so expressed. So, a sale of a patented invention to a dealer, not for use but for sale to others, would carry with it the right, in the ultimate purchaser, to use the machine sold. Limitations in respect to territorial limits, extent of use, and the like, may be, and in general are, provided by express terms or stipulations." 5 Fisher, 477 (484).

2 That a license does not authorize the use of any other invention than the one described in the license, though invented by the same licensee, see Miller's Falls Co. v. Ives (1877), 14 O. G. 203; 14 Blatch. 169; 2 Bann. & A. 574.

That the sale of an invention, the use of which involves the use of a process patented by the same grantor, is a license to use the process, see Downton v. Yaeger Milling Co. (1879), 17 O. G. 906; 1 McCrary, 26; 5 Bann. & A. 112; 1 Fed. Rep. 199.

That the sale of a machine with right. to use a patented article therewith gives a license to use the article, but is not an assignment and need not be in writing, see Buss v. Putney (1859), 38 N. H. 44.

8 In Dorsey Revolving Harvester Rake Co. v. Bradley Mfg. Co. (1874), 12 Blatch. 202, Woodruff, J.: (204) "The right to make and vend, and the right to use, are completely severable; and, while a grant of the right to make and sell to others might be deemed to imply the right in the purchasers to use the thing purchased, a patentee may restrict the use. The patent as effectually secures to him a monopoly of the right to use as it does of the right to make. The patentee or his assignee may, therefore, give the exclusive right to make and sell for use within certain territory; and such a restriction would be entitled to enforcement." 1 Bann. & A. 330 (332).

That a license to use within a certain district confers no rights beyond the limits of that district, see Chambers v. Smith (1870), 5 Fisher, 12; Woodworth v. Cook (1850), 2 Blatch. 151.

That a right to use in one place only makes a user in any other place an infringement, but such infringement does

articles, or to use the patented process for the production of a certain quantity of its results, does not empower the licensee to use a greater number or produce a greater quantity, even though he is willing to pay the licensor additional royalties or license-fees in proportion to the increase of his use of the invention. A license to use for a given purpose only, or in

not revoke the right to use in the place specified, see Steam Cutter Co. v. Sheldon (1872), 10 Blatch. 1; 5 Fisher, 477.

That a machine licensed to be used in certain territory cannot be used else where by other purchasers, and a demand by an agent for royalties properly due cannot ratify its improper use, see Wicke v. Kleinknecht (1874), 1 Bann. & A. 608; 7 O. G. 1098.

That the purchaser of a machine from one who has a right to use, and to sell to others to be used, only in a certain territory, has no right to use it elsewhere, and if he does, is liable for royalties to the patentee, see Burke v. Partridge (1878), 58 N. H. 349.

That a license to manufacture "at their shop," in a place described, is not transferable, see Searls v. Bouton (1881), 21 O. G. 1784; 20 Blatch. 426; 12 Fed. Rep. 140.

That a license to one to use "at his own establishment" does not cover a use at a shop owned by himself and others, see Rubber Co. v. Goodyear (1869), 9 Wall. 788.

That the sale of certain buildings and machinery with the right to use certain patented processes, gives no license to use the processes elsewhere, see Wetherell v. Passaic Zinc Co. (1872), 2 O. G. 471; 9 Phila.385; 6 Fisher, 50. That a personal license to use a patented device in one certain shop does not forbid its being made elsewhere, see Wood v. Wells, Crittenden & Co. (1873), 6 Fisher, 382.

to use a patented device on their road extends no farther than the road was built and used by it at the time the license was given, the use on roads built or leased afterwards not being protected, see Emigh v. Chicago, Burlington, & Quincy R. R. Co. (1863), 1 Bissell, 400; 2 Fisher, 387.

That a license to use the invention on a railroad fifty-eight miles long does not confer the right to use it on a new road owned by the same licensee, see Emigh v. Chicago, Burlington, & Quincy R. R. Co. (1863), 2 Fisher, 387; 1 Bissell, 400.

That a license to use a device on a certain railroad does not carry the right to use the device on the cars of the licensee over whatever railroad they may be run, see Hodge v. Hudson River Railroad Co. (1868), 6 Blatch. 85; 3 Fisher, 410.

That a railroad company, running its cars on another railroad, is not operating said road within the meaning of a license granted "to the operator" of such road, see Hodge v. Hudson River Railroad Co. (1868), 6 Blatch. 85; 3 Fisher, 410.

That a license to use the patented device "on any road now or hereafter owned," etc., covers its use on all ma chines on such roads, see Matthew v. Pennsylvania R. R. Co. (1881), 8 Fed. Rep. 45.

4 That a license based on the pre-pay. ment of a specific sum for each machine used, will not permit the use of other machines unless paid for in the same That a license to a railway company manner, see Wooster v. Seidenberg

a particular manner, or for a period less than the duration of the patent, binds the licensee with equal strictness, and makes him liable as an infringer for any excess of use beyond what is distinctly conferred upon him. In licenses to use the law often implies the grant of other powers which in the case in question are essential to the enjoyment of the right to use. A license to use a specific article carries the right to repair it as long as its identity remains. A license to use a certain number of articles bestows the right to keep the number in use complete, by purchasing, or if necessary by making, new ones as the old are worn out or destroyed.8

§ 813. Express Licenses: License to Sell.

A license to sell confers the right to vend the patented article. Being comparatively valueless without the right to (1875), 10 O. G. 244; 13 Blatch. 88; 2 Bann. & A. 91.