Practical Pointers for Patentees Part 6

A lawful sale of a patented article by a patentee or grantee, within his own territory, carries with it the right to use such article throughout the whole United States. (_Adams_ vs. _Burke, 5 O.G., 118_; _Hobbie_ vs.

_Smith. 27 Fed. Rep., 636._)

When an applicant in certain instruments a.s.signed his right, t.i.tle, and interest in an invention, retaining for himself the exclusive right to employ the invention in the manufacture of a certain cla.s.s of machines, Held, that such instruments do not convey the entire interest in the invention or any undivided part thereof, and they are construed to be nothing more than licenses. (_Ex parte Rosback, 89 O. G., 705. Decided Oct. 5, 1899._)

An implied license to use a patented improvement without payment of any royalties during the continuance of employment of the inventor, and thereafter, on the same terms and royalties fixed for other parties, is shown where the inventor applies the patent to his employer's work without any agreement for compensation for its use further than a notice that he would require pay after his employment terminated. (_Keys_ vs.

_Eureka Consol. Min. Co., U. S. S. C., 158 U. S., 150._)

A breach of a covenant in a license does not work a forfeiture of the license unless it is so expressly agreed. (_Consol. Middlings Purifier Co._ vs. _Wolf, 37 O. G., 567._)

[Sidenote: Patent t.i.tle.]

A patent right, like any other personal property, is understood by Congress to vest in the executors and administrators of the patentee, if he dies without having a.s.signed it. (_Shaw Relief Valve Co._ vs. _City of New Bedford, 19th Fed. Rep., 758._)

A patent to a dead man at the time of its grant is not void for the want of a grantee, but vests in his heirs or a.s.signs. (_U. S. S. C, De La Vergne Ref. Machine Co._ vs. _Featherstone, 1893, C. D., 181._)

A court of equity may direct a sale of an inventor's interest in his patent to satisfy a judgment against him, and will require the patentee to a.s.sign as provided in Rev. Stat., Sec. 4898, and if he refuses, will appoint a trustee to make the a.s.signment. (_Murray_ vs. _Ager, 20 O. G., 1311._)

A patent right cannot be seized and sold on execution. (_Carver_ vs.

_Peck, 131 Ma.s.s., 291._)

A receiver cannot, under his general powers, convey the legal t.i.tle to a patent (_Adams_ vs. _Howard, 23 Blatch., 27_), but a court may compel an insolvent to a.s.sign his patent to a trustee or receiver. (_Pacific Bank_ vs. _Robinson, 20 O. G., 1314_; _Murray_ vs. _Ager, 20 O. G., 1311._)

A patentee who a.s.signs his patent cannot, when sued for infringement, contest the validity thereof. (_Griffith_ vs. _Shaw, 89 Fed. Rep., 313._)

RULES OF PRACTICE

The following from the "Rules of Practice in the United States Patent Office" may be perused with interest to the patentee; a copy of which, together with a copy of the "Patent Laws," will be mailed free to any person upon addressing the Hon. Commissioner of Patents, Washington, D. C., requesting the same; these being the only books or pamphlets published by the Office for gratuitous distribution.

[Sidenote: a.s.signments.]

Every patent or any interest therein shall be a.s.signable in law by an instrument in writing; and the patentee or his a.s.signs or legal representatives may, in like manner, grant and convey an exclusive right under the patent to the whole or any specified part of the United States. Interests in patents may be vested in a.s.signees, in grantees of exclusive sectional rights, in mortgagees, and in licensees.

[Sidenote: a.s.signees.]

An a.s.signee is a transferee of the whole interest of the original patent or of an undivided part of such whole interest, extending to every portion of the United States. The a.s.signment must be written or printed and duly signed.

[Sidenote: Grantees.]

A grantee acquires by the grant the exclusive right under the patent to make and use and to grant to others the right to make and use, the thing patented within and throughout some specified part of the United States, excluding the patentee therefrom. The grant must be written or printed and be duly signed.

[Sidenote: Mortgages.]

A mortgage must be written or printed and duly signed.

[Sidenote: Licensees.]

A licensee takes an interest less than or different from either of the others. A license may be oral, written, or printed, and if written or printed, must be duly signed.

[Sidenote: Must be Recorded.]

An a.s.signment, grant, or conveyance of a patent will be void as against any subsequent purchaser or mortgagee for a valuable consideration without notice unless recorded in the Patent Office within three months from the date thereof. If any such a.s.signment, grant, or conveyance of any patent shall be acknowledged before any notary public of the several States or territories, or the District of Columbia, or any commissioner of the United States Circuit Court, or before any secretary of legation, or consular officer authorized to administer oaths or perform notarial acts under Section 1750 of the Revised Statutes, the certificate of such acknowledgment, under the hand and official seal of such notary or other officer, shall be _prima facie_ evidence of the execution of such a.s.signment, grant, or conveyance.

No instrument will be recorded which does not, in the judgment of the Commissioner, amount to an a.s.signment, grant, mortgage, lien, enc.u.mbrance, or license, or which does not affect the t.i.tle of the patent or invention to which it relates. Such instruments should identify the patent by date and number; or, if the invention is unpatented, the name of the inventor, the serial number, and date of the application should be stated.

[Sidenote: Conditional a.s.signments.]

a.s.signments which are made conditional on the performance of certain stipulations, as the conditional payment of money, if recorded in the office are regarded as absolute a.s.signments until cancelled with the written consent of both parties, or by the decree of a competent court.

The office has no means for determining whether such conditions have been filled. (_Rev. Stat., Sec. 4898._)

STATE LAWS ON SELLING PATENTS

In some States, laws have been pa.s.sed by which attempts have been made to regulate or prevent the sale of patent rights within their borders, by imposing upon patentees or their agents certain State restrictions, such as requiring the filing of copies of patents, making and filing proofs, taking out licenses, procuring certificates, complying with forms, or prescribing the terms of a note to be given for a patent.

While it has never been squarely brought before the United States Supreme Court, with the result that much conflicting legislation has been enacted by the different States, it may be said, as a general proposition, that a State or munic.i.p.ality, through the medium of its Legislature or officials, has no const.i.tutional right to make or enforce laws which in any way affect or control the transfer, sale, or other disposition of United States Letters Patent; or to interfere in any manner with the patentee going into the open market anywhere to sell his rights conferred by the patent.

It is a well-established principle of law that Congress has exclusive right and power to legislate on the subjects specially a.s.signed to it by the Const.i.tution, while power is delegated to the several States to legislate on those subjects not thus expressly placed within the control of Congress. It would seem clear that there can be no State interference with the rights which are incident to the grant of Letters Patent and expressly conferred thereby.

Ohio was the first State attempting to place restrictions upon the handling of patent rights, which, in 1868, pa.s.sed an act requiring any person, before offering for sale a patent right in any county, to submit the patent to the Probate Judge of the county, and make affidavit before said judge that the patent was in force, and that the applicant had the right to sell, and also requiring that any written obligation taken on the sale of such right should bear on its face the words, "Given for a Patent Right."

The portion of the Ohio statute relating to the making and filing proofs was subsequently made the law in Illinois, Minnesota, Indiana, Nebraska, and Kansas, while the requirement that written obligations given for a patent right should bear such statement written upon its face was made the law in Vermont, Michigan, Pennsylvania, Wisconsin, New York, Connecticut, and Arkansas.

In view of the decisions rendered by the Supreme Court of the United States in the cases of _ex parte_ Robinson, 2 Bissel, 309, and Webber _vs._ Virginia, 103 U. S., 347; 20 O. G., 136, some of the States repealed their statutes relating to the filing of proofs, while others did not--notably Indiana and Kansas, where the statute still remains in force.

While the Supreme Court in the above cases did not decide the const.i.tutionality of the State statutes, it was clearly indicated that property in inventions existed by virtue of the laws of Congress, and that no State had any right to interfere with its enjoyment, or to annex conditions to the grant, and that the patentee had a right to go into the open market anywhere in the United States and sell his property. It also established the proposition that a State may require the taking out of a license for the sale of the manufactured article covered by the patent; and the patentee should keep in mind the distinction between selling patents, or patent privileges, and the selling of goods or manufactured articles, as all who sell goods, whether patented or not, must conform with the local and State laws relating to same.

The statute requiring the insertion in written obligations of the words, "Given for a Patent Right," has been declared unconst.i.tutional by the higher State Courts in Illinois, Michigan, Minnesota, and Nebraska, and by the Circuit Courts in the southern district of Ohio, and in the district of Indiana; while its validity has been sustained by the courts of last resort in New York, Pennsylvania, Ohio, Indiana, and Kansas.

Therefore, the validity of the State statutes on the point referred to may be regarded as finally established in the last-named States until brought before the Supreme Court of the United States.

CHAPTER IX

THE TRANSFER OF PATENT RIGHTS

It frequently occurs to the patentee that a knowledge of the legal requirements of the transfer of patent rights would save him much time and trouble. Patentees should carefully scrutinize all papers offered by the parties in whose favor they are drawn, and, if possible, he should have his attorney to examine them.

There are three cla.s.ses of persons in whom the patentee can vest an interest of some kind. They are an a.s.signee, a grantee of an exclusive sectional right, and a licensee.

[Sidenote: a.s.signee, Grantee, and Licensee Defined.]

"An _a.s.signee_ is one who has transferred to him in writing the whole interest in the original patent, or any undivided part of such whole interest in every portion of the United States. And no one, unless he has such an interest transferred to him, is an a.s.signee.

"A _grantee_ is one who has transferred in writing the exclusive right under the patent, to make and use, and to grant to others to make and use, the thing patented, within and throughout some specified part or portion of the United States. Such right must be an exclusive sectional right, excluding the patentee therefrom.