produce the articles to be sold, it is usually coupled with a license to make. Whether granted alone, or in connection with the right to construct the invention, it may be restricted as to time, place, and quantity, and by such restrictions the licensee is bound as rigidly as in the case of a license to use. In this, as in all other instances where a license covers two or more rights, the restrictions may apply only to one right, or in the same or different degrees to each of the rights conveyed. A license to make and sell may thus limit only the place and time of making, leaving the maker to find his market when and where he can; or it may confine his sales within a given territory, and fix no boundaries to the act of manufacture. Provisions in the license may, to the same extent, curtail the rights of purchasers of the patented article from the licensee, by limiting his power to sell it except for use within a specified area or for a certain purpose.1 When a license to practise an art is joined with an unrestricted license to sell its product, the latter license is superfluous unless the product also is a patented invention; but if the license to sell is limited as to time or place or purpose it may operate as a § 813. 1 In Dorsey Revolving Harvester Rake Co. v. Bradley Mfg. Co. (1874), 12 Blatch. 202, Woodruff, J.: (207) "Does the right to make and sell carry with it the right to use? If, by implication, the right to use is incident to, or implied in, the right to make and sell, does not the limitation of the right to make and sell to specific territorial limits, operate with equal strictness upon the right of use which is incidental thereto or is so implied? Is the incident broader in its scope than the principal grant? If it be true, as claimed, that when one who has the whole right in the invention, to make, sell, and use (either for the whole or a part of the United States), sells a machine, it passes from under the dominion of the patent, and may be used anywhere, does that follow when a mere licensee to make and sell within specified limits sells the patented inven tion to another? Does the cautiously guarded decision of the Supreme Court in Adams v. Burke (17 Wallace, 453), carefully limited to the precise case then under consideration, reasonably import an affirmative to the last question? Especially may one having a license to make and sell within a limited territory only deliberately contract to supply the patented invention for use in other territory, provided his manufacture and his actual negotiation of sales are within the privileged limits, and may he practically avail himself of the markets of the whole country?" 1 Baun. & A. 330 (335). That the assignee of a territorial right to make, use, and sell a machine may sell the product of the machine anywhere, as the territorial restriction relates to the machine only, see Simpson v. Wilson (1846), 4 How. 709; 2 Robb, 469. condition governing the enjoyment of the former license, and confining the use of the art to the production of such results as can lawfully be sold.2 A license to sell, or to use and sell, may embrace by implication the right to make, when, under all the circumstances of the case, the rights expressly granted would otherwise be unavailable to the licensee.3 §814. Express Licenses: Exclusive or Non-Exclusive. Licenses may be exclusive or non-exclusive. An exclusive license confers upon the licensee the sole right to make, use, or sell the invention within the area or for the purposes described. A non-exclusive license confers this right upon him in common with the licensor, and with all other persons upon whom the licensor may see fit to bestow it. The nature of the right in either case is the same; its value alone being 2 In Boyd v. Brown (1843), 3 McLean, 295, per Curiam : (296) “There can be no doubt that the original patentee, in selling rights for counties or States, might, by a special covenant, prohibit the assignee from vending the article beyond the limits of his own exclusive right. But in such a case the remedy would be on the contract, and not under the Patent Law. For that law protects the thing patented, and not the product. The exclusive right to make and use the instruments for the construction of this bedstead in Hamilton County is what the law secures, under his assignment, to the complainant. Any one violates this right who either makes, uses, or sells these instruments within the above limits. But the bedstead, which is the product, so soon as it is sold, mingles with the common mass of property, and is only subject to the general laws of property." 2 Robb, 203 (205). 8 That a license to use and sell carries the right to make, if without it the expressed privilege cannot be reasonably enjoyed, see Hamilton v. Kingsbury (1878), 15 Blatch. 64; 14 O. G. 448; 3 Bann. & A. 346. That the right to make and sell includes the right to use, see Turnbull v. Weir Plow Co. (1880), 14 Fed. Rep. 108; 9 Bissell, 334; 5 Bann. & A. 288; 23 O. G. 91; also § 808 and notes, ante. § 814. 1 That a covenant in a license not to give the same right to any other is equivalent to an exclusive right in the licensee, see Day v. Cary (1859), 1 Fisher, 424. That the contract of a workman to give his employer the exclusive benefit of his inventions is an exclusive license during the life of the patent, see Wilkens v. Spafford (1878), 13 O. G. 675; 3 Bann. & A. 274. That a licensor granting an exclusive territorial license excludes himself and all others from using any device, though different in name, which is substantially the same, see Ferree v. Smith (1877), 29 La. Ann. 811. That an exclusive license, with an agreement to assign after the license expires, is without consideration if the patent is void, such a license conveying no rights which the licensee did not already have, see Harlow v. Putnam (1878), 124 Mass. 553. affected by its confinement to himself or its indefinite distribution to others. To this statement there is apparently a single exception, an exclusive license to make and use and sell operating upon the monopoly as well as the invention and vesting both in the licensee, while a non-exclusive license of the same extent merely conveys the rights in the invention.2 But the exception is apparent only,—such an exclusive license being in reality, though not in form, an assignment or a grant, according to the territory to which it relates. § 815. Express Licenses: By whom Granted: Caveat Emptor. Any owner of a patented invention may issue licenses within the limits of his own right, in any form and to any extent which he may deem expedient. A patentee or assignee, whether sole or joint, may license for the whole or for any part of the United States. A grantee can license only within the territory covered by his ownership of the invention. A license issued by one joint-owner is valid by estoppel against the other owners, though contrary to their will, whatever remedy they have under the present law being in an account for their share of the license-fee from the licensor. But no part-owner can grant an exclusive license, or in any other manner restrict the licensing powers of the other owners of the patent.2 As between the licensee and licensor the doctrine of caveat emptor is rigidly applied. The rights of 2 In Mitchell v. Hawley (1872), 16 Wall. 544, Clifford, J. (548) "Purchasers of the exclusive privilege of making or vending the patented machine hold the whole or a portion of the franchise which the patent secures, depending upon the nature of the conveyance. 3 O. G. 241 (242); 6 Fisher, 331 (333). See also Pickhardt v. Packard (1884), 23 Blatch. 23; 30 O. G. 179; 22 Fed. Rep. 530; Nellis v. Pennock Mfg. Co. (1882), 13 Fed. Rep. 451; 22 O. G. 1131; Farrington v. Gregory (1870), 4 Fisher, 221; and § 808, note 5, ante. § 815. That a license by one jointowner is valid, see Washburn & Moen Mfg. Co. v. Chicago Galvanized Wire Fence Co. (1884), 109 Ill. 71; Curran v. Burdsall (1883), 20 Fed. Rep. 835; 27 O. G. 1319; Dunham v. Indianapolis & St. Louis R. R. Co. (1876), 7 Bissell, 223; 2 Bann. & A. 327; De Witt v. Elmira Nobles Mfg. Co. (1876), 66 N. Y. 459; Clum v. Brewer (1855), 2 Curtis, 506; and § 796 and notes, ante. 2 See cases cited in note 1, and § 796 and notes, ante. 8 That the doctrine of caveat emptor obliges the licensee to ascertain whether the licensor has a good title, see Abbett v. Zusi (1879), 5 Bann. & A. 38. the licensee can never exceed those of his licensor, and it is his duty to ascertain, before he purchases his rights, whether the licensor is able to convey the interest he proposes to bestow. No previous conveyance, whether assignment, grant, or license, can be affected by the one which he receives, and thus he takes his right subject to all the limitations these may impose upon him.5 § 816. Duration of Express License: Effect of its Termination. Unless otherwise agreed, an express license expires at the end of the original term of the patent. No one but the patentee, or an assignee or grantee to whom the patentee has conveyed the extended term, can authorize the practice of the invention under the extension; and a license even by these is never presumed to cover the extended term unless such an intention clearly and unequivocally appears upon the face of the license itself.2 A license for the " whole term for which let That the rights of a licensee cannot be broader than those of his licensor, see Waterman v. Wallace (1875), 13 Blatch. 128; 2 Bann. & A. 126. 5 That an assignee, having assigned all his interest in the patent, cannot confer any right on a subsequent purchaser to use the invention, either during the present or an extended term, see Union Paper Bag Mach. Co. v. Nixon (1876), 1 Flippin, 491; 2 Bann. & A. 244; 9 O. G. 691. § 816. That a license to practise an invention expires with the patent on which it is based, see Wetherell v. Passaic Zinc Co. (1872), 6 Fisher, 50; 2 O. G. 471; 9 Phila. 385; Mitchell v. Hawley (1872), 16 Wall. 544; 3 O. G. 241; 6 Fisher, 331; England v. Thompson (1869), 3 Clifford, 271. That an exclusive license expires when the term of the patent ends, see Union Paper Bag Mach. Co. v. Nixon (1882), 105 U. S. 766; 21 O. G. 1275. That a grant to make and use within certain territory for the term of the patent expires with the original term, and does not remain under an extension, see Wood v. Michigan Southern & Northern Indiana R. R. Co. (1868), 3 Fisher, 464; 2 Bissell, 62. That a sub-license to practise an invention expires with the term of the patent, see Hawley v. Mitchell (1871), Fisher, 388; 10. G. 306; Holmes, 42. That an express license to use an invention expires with the original patent, see Union Paper Bag Mach. Co. v. Nixon (1881), 105 U. S. 766; 21 O. G. 1275 ; Wooster v. Sidenberg (1876), 10 O. G. 244; 13 Blatch. 88; 2 Bann. & A. 91; Mitchell v. Hawley (1872), 16 Wall. 544; 3 O. G. 241; 6 Fisher, 331. 2 That the license is presumed to cover only the original term of the patent, and one who claims that it covers the extended term must prove it, see Hodge v. Hudson River Railroad Co. (1868), 6 Blatch. 85; 3 Fisher, 410. That a license may be made to endure under an extension, and the royalty will be collectible, see Union Mfg. Co. v. Lounsbury (1869), 41 N. Y. 363. That a license to endure till all pat ters-patent are or may be granted," or under "any letterspatent granted by the United States," does not satisfy the requirements of this rule, and will be operative only during the original term. The effect of the termination of the license ents now or hereafter to be granted for the invention expire is good, and will run until the expiration of the latest patent, see McKay v. Mace (1884), 23 Fed. Rep. 76. That after an extension by act of Congress the licensee stands on his original title, not on the act of Congress granting the extension, such act not conferring rights but merely protecting them, see Union Mfg. Co. v. Lounsbury (1869), 41 N. Y. 363. That one who takes a license under an extension thereby admits that he has no existing rights which he did not then set up, and is estopped from asserting them against the patentee, see Wooster v. Taylor (1874), 12 Blatch. 384; 1 Bann. & A. 594; 8 O. G. 644. guage embraced any subsequent extension of the patent. So, also, in Case v. Redfield (4 McLean, 526), where the court held that the language of the instrument embraced an extension, the language was 'all the right, title, and interest . ... in said invention and improvement, as secured... by said letters-patent, for the whole of the United States, for which letterspatent were or may be granted for said improvements.' In Clum v. Brewer, (2 Curtis, C. C. R. 506, 508), where the court held that the parties intended to cover an interest in any extension, the language was 'one undivided fourth part of my said invention, and of all my rights and property therein, secured by my said caveat or otherwise, that I have or may have from any letterspatent for the same, granted by the Government of the United States and within the limits thereof.' In Pitts v. Hall (3 Blatchf. C. C. R. 201), where the court held that there was no doubt that the parties intended by the language used to refer to and provide for an extension, the language to that effect was clear and unambiguous. In all four of the cases referred to, the instrument under consideration was one pur. porting to convey, by assignment or grant, an interest in the invention patented, and an interest in the entire right granted by the existing patent to make and use and vend to others to be used the invention patented. As Mr. Justice Curtis says, in Clum v. Brewer (p. 521), In Hodge v. Hudson River Railroad Co. (1868), 6 Blatch. 85, Blatchford, J. (89) "The presumption of law in regard to every license under a patent is that the parties deal in regard only to the term existing when the license is given, unless an express provision is inserted looking to a further interest. (Wilson v. Rousseau, 4 How. 646, 685, 686). Unless there be such a stipulation, showing that the parties contemplated an extension, the court is bound to construe the instrument, in each and all of its provisions, as relating to the then existing term only. (Gibson v. Cook, 2 Blatchf. C. C. R. 144, 146.) The language of the license in the present case is very different from the language of the instrument in the case of Phelps v. Com-where the invention is the subject sold stock (4 McLean, 353). In that case the language was 'to the full end of the term or terms for which letters-patent are or may be granted for said improve ments.' The court held that that lan it would be natural to expect to find, in the instrument of sale, something showing an intention that the purchaser should be interested, not merely in the original letters-patent, but in any ex |