Practical Pointers for Patentees Part 5

Copies of the "Rules and Forms of the Canadian Patent Office" and "The Patent Act" can be obtained upon application to the Hon. Commissioner of Patents, Ottawa, Canada. Section 8 of the Patent Act, revised May, 1898, provides:

"Any inventor who elects to obtain a patent for his invention in a foreign country before obtaining a patent for the same invention in Canada, may obtain a patent in Canada, if the same be applied for within one year from the date of the issue of the first foreign patent for such invention; and,

"If within three months after the date of the issue of a foreign patent, the inventor give notice to the Commissioner of his intention to apply for a patent in Canada for such invention, then no other person having commenced to manufacture the same device in Canada during such period of one year, shall be ent.i.tled to continue the manufacture of the same after the inventor has obtained a patent therefor in Canada, without the consent or allowance of the inventor."

The Patent Act as amended does not now require a Canadian patent to expire at the earliest date at which a foreign patent for the same invention expires.

Under the section just cited the patentee has three months, after the issue of his patent, within which to protect his interests in Canada. If within these three months he has not sufficiently demonstrated the commercial value of his home patent, and the advisability of taking out a Canadian patent, he is advised to give notice to the Commissioner of Patents, Ottawa, of his intention of doing so, which will fully protect his interests for one year, as under the above provision; and if the patentee fail to give this formal notice, he cannot obtain redress from any person who has commenced to manufacture his invention in Canada during the year.

There is also an advantage sometimes in giving this formal notice within three months and delaying the grant of the patent for one year, as the patentee is allowed to import the patented article into Canada during one year only, after the grant of the Canadian patent.

The construction or manufacturing of the invention in Canada must be commenced within two years from the date of the patent, and continuously carried on from that time, though the extension of this time may be secured upon timely application to the Commissioner, giving any good and proper reason. The time for importation is also sometimes extended upon proper application.

Canadian patents are granted originally for a term of eighteen years, the Government fee being $60 for the eighteen years, but at the election of the patentee this fee may be divided into three payments of $20 each, as follows: $20 at the time of the grant, $20 at the expiration of the sixth year, if the owner desires to keep the patent alive, if not he can allow the patent to become forfeited; and at the end of the twelfth year, if it is still desired to maintain the patent, the remaining fee of $20 may be paid. If the patentee in the meantime a.s.signs his patent, the a.s.signee will pay the required government fees at the end of the sixth and twelfth years, if it is desired to maintain its validity.

The Canadian patent covers and affords full protection in the following provinces:

------------------------+----------+------------- PROVINCES. | Area | Population |Sq. Miles.| 1911 ------------------------+----------+------------- Alberta | 253,000 | 372,919 British Columbia | 390,000 | 362,768 Manitoba | 72,870 | 454,691 New Brunswick | 28,000 | 351,815 Nova Scotia | 20,600 | 461,847 Ontario | 222,000 | 2,519,902 Prince Edward Island | 2,000 | 93,722 Quebec | 347,000 | 2,000,697 Saskatchewan | 250,000 | 453,508 Northwest Territories |1,922,750 | 10,000 Yukon | 200,000 | ---- |----------+------------ TOTAL |3,708,220 | 7,081,869 ------------------------+----------+------------

[Sidenote: Selling Canadian Patents.]

In selling Canadian patents, the patentee will proceed in much the same way as in the United States, though he cannot expect, nor should he ask, more than about one-third as much for the Canadian patent as he receives, or expects, from the United States patent. Patents are not as readily sold in Canada as here, but if the inventor has a useful invention of merit, which is being manufactured profitably in the United States, he will have no trouble in disposing of his Canadian patent at a satisfactory price.

It is in nearly all cases advisable for the inventor to first put his invention upon the market in the United States before trying to realize from his Canadian interests, as it will be found difficult to interest Canadian capital in a patent that has not been first put into practice here; and if the patentee be able to dispose of his Canadian patent at all, it is usually for a very insignificant sum; whereas, on the other hand, if the patentee fully protects his interests there, and proceeds to put the invention upon the home market, he will not only be able to present his Canadian patent in a more favorable and forcible way by proving its commercial value, but he will undoubtedly get better offers, and realize full value for his Canadian interests, in exact proportion to the success of his invention in the United States.

POPULATION OF CANADIAN CITIES

(_Compiled from the Census of 1911_)

Montreal 406,197 | New Westminster 13,394 Toronto 376,240 | Stratford 12,929 Winnipeg 135,440 | Owen Sound 12,555 Vancouver 100,333 | St. Catharines 12,460 Ottawa 86,340 | Saskatoon 12,002 Hamilton 81,897 | Verdun 11,622 Quebec 78,067 | Moncton 11,319 London 46,177 | Port Arthur 11,216 Halifax 46,081 | Lachine 10,778 Calgary 43,736 | Chatham 10,760 St. John 42,363 | Galt 10,299 Victoria 31,620 | Sault Ste. Marie 10,179 Regina 30,210 | Sarnia 9,936 Edmonton 24,882 | Belleville 9,850 Brantford 23,046 | St. Hyacinthe 9,797 Kingston 18,815 | Valleyfield 9,447 Maissonneuve 18,674 | Brockville 9,372 Peterboro 18,312 | Woodstock 9,321 Windsor 17,819 | Niagara Falls 9,245 Sydney Town 17,617 | Sorel 8,419 Hull 17,585 | Nanaimo 8,305 Glace Bay 16,561 | Lethbridge 8,048 Fort William 16,498 | Vancouver, North 7,781 Sherbrooke 16,495 | North Bay 7,718 Vancouver, South 16,021 | St. Boniface 7,717 Berlin 15,192 | Sydney Mines 7,464 Guelph 15,148 | Levis 7,448 St. Thomas 14,050 | Oshawa 7,433 Brandon 13,837 | Collingwood 7,077 Moose Jaw 13,824 | Fredericton 7,028

CHAPTER VIII

DECISIONS AND NOTES

The following digest will be found to contain much useful information for the patentee, it being a carefully selected list of decisions affecting a.s.signments, territorial grants, licenses, State laws, etc.; including those rendered by the Supreme Court of the United States, the Circuit Court of Appeals, State Courts, and of various Commissioners of Patents, all of which decisions enunciate well-settled and controlling principles of Patent Law.

[Sidenote: a.s.signments.]

a.s.signments of patents are not required to be under seal. The statutes simply provide that "every patent, or any interest therein shall be a.s.signable in law by an instrument in writing." (_Gottfried_ vs.

_Miller, U. S. S. C. Decided Jan. 23, 1882._)

A contract a.s.signing a patent and all future improvements thereon is enforceable against a.s.signees of such improvements who take notice of the contract. (_Westinghouse Air Brake Co._ vs. _Chicago Brake and Mfg.

Co., 85 F. R., 786._)

Each co-owner of a patent may use his right without the concurrence of the others and license at will. (_Washburn & Moen Co._ vs. _Chicago Wire Fence Co., 109 Ill., 71._)

Owners of a patent are tenants in common, and each, as an incident of his ownership, has the right to use the patent or manufacture under it.

But neither can be compelled by his co-owner to join in such use or work, or be liable for the losses which may occur, or to account for the profits which may arise from such use. (_De Witt_ vs. _Elmira n.o.bles Mfg. Co., 12 N. Y. Spur., 301._)

Joint owners of a patent, right are not copartners, and in the absence of any express contract each is at liberty to use his moiety as he may think fit, without any liability to or accounting to the other for profits or losses. (_Vose_ vs. _Singer, 4 Allen (Ma.s.s.), 226; vide Pitt vs. Hall, 3 Blatch., 201._)

Although an a.s.signment of patent is not recorded within three months, it is binding on the a.s.signor, and he cannot sell the patent again. (_Ex parte Waters, Com. Dec., 1899, p. 42._)

A verbal license or interest in an invention has no effect as against a subsequent a.s.signee without notice of such verbal license or interest.

(_U. S. S. C., Gates Iron Works_ vs. _Fraser et al., 1894, C. D., 304._)

An a.s.signment to a.s.sign future patents, in consideration of the a.s.signee's paying the expense of taking them out, is broken by his refusal to pay for and take out a particular patent when requested, and a subsequent a.s.signment to another conveys a perfect t.i.tle. (_Buck_ vs.

_Timony, 78 Fed. Rep., 487._)

Any a.s.signment which does not convey to the a.s.signee the entire and unqualified monopoly which the patentee holds in the territory specified, or an undivided interest in the entire _monopoly,_ is a mere license. (_Sanford_ vs. _Messer, 2 O. G., 470._)

When a party does license, grant, and convey any invention which he may hereafter make, this gives only an equitable right to have an a.s.signment made, and this right may be defeated by a.s.signment of the patent to a purchaser for value without notice of this equity. (_Regan Vapor Engine Co._ vs. _Pacific Gas Engine Co. (Nineth Cir.), 7 U. S., App., 73._)

[Sidenote: Territorial Grants.]

A territorial grantee cannot be restrained from advertising and selling within his territory, even though the purchasers may take the patented article outside the vendor's territory. (_Hatch_ vs. _Hall, 22 Fed.

Rep., 483._)

One who buys patented articles of manufacture from an a.s.signee for a specified territory becomes possessed of an absolute property in such articles, unrestricted in time or place. (_U. S. S. C., Keller et al._ vs. _Standard Folding Bed Co., 71 O. G., 451._)

The sale of a patented machine by one authorized to sell, conveys the whole ownership to the purchaser, who may sell it again to another.

(_Morgan Envelope Co._ vs. _Albany Perforated Wrapping Paper Co., 152 U.

S. 425._)

[Sidenote: Licenses.]

Every person who pays the patentee for a license to use his process becomes the owner of the product, and may sell it to whom he pleases, or apply it to any purpose, unless he binds himself by covenants to restrict his rights of making and vending certain articles that may interfere with the special business of some other licensee. (_Met.

Washing Machine Co._ vs. _Earl, 2 Fish., 203; 2 Wall., Jr., 230._)

A license is not forfeitable for non-payment of royalties in the absence of express provisions to that effect. (_Wagner Typewriter Co._ vs.

_Watkins, 84 Fed. Rep., 57; 1898._)

A shop right is a personal license and is not a.s.signable. (_Gibbs_ vs.

_Hoefner, 19 Fed. Rep., 323; 22 Blatch., 36._)

A license to a person to use an invention only "at his own establishment" does not authorize a use at an establishment owned by him and others. (_Rubber Co._ vs. _Goodyear, 9 Wallace, 788._)

A license is not transferable unless its terms so state. (_Olmer_ vs.

_Rumford Chemical Co., 109 U. S., 75._)

A license merely to make and not to sell does not impair the patent owner's right to sue for infringement outside of the license; and the purchaser of the licensee's tools and materials would not carry the right to sell the product made thereon. (_American Graphophone Co._ vs.

_Walcut, 87 Fed. Rep., 556; 1898._)

A license to use a machine carries with it the right to repair the machine, and replace worn parts until the essential original parts of the machine have disappeared. (_Robinson on Patents, Sec. 827._)