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 classes of persons in whom the patentee can vest an interest of some kind. They are an assignee, a grantee of an exclusive sectional right, and a licensee.

[Sidenote: Assignee, Grantee, and Licensee Defined.]

"An _assignee_ 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 assignee.

"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.

"A _licensee_ is one who has transferred to him in writing, or orally, a less or different interest than either the interest in the whole patent, or an undivided part of such whole interest, or an exclusive sectional interest." (_Potter_ vs. _Holland, 1 Fish, 327._)

[Sidenote: The Language of Law.]

If a man were to give another an orange he would simply say, "I give you this orange"; but if the transaction be intrusted to a lawyer to draw up according to the requirements of law, says the _Observer_, he would most probably put it in the following language: "I hereby give, grant, and convey to you all my interest, right, title, and advantage of and in said orange, together with its rind, skin, juice, pulp, and pits, and all right and advantage therein with full power to bite, suck, cut, or otherwise eat the same or to give the same away, as fully and effectually as I, the said A. B., am now entitled to cut, bite, or otherwise eat the same, or give away the same with or without the rind, skin, juice, pulp, or pits; anything hereinbefore or hereafter or in any other deed or deeds, instruments of nature or kind whatsoever to the contrary in anywise notwithstanding."

It is always better and more satisfactory to have assignments, royalty contracts, agreements, etc., drawn up specially to accord with the facts, details, and covenants of each particular case; and there is no one probably better able to do this than the attorney who secured the patent. However, if in the case the parties to the transaction cannot well delay proceedings to have the papers prepared by an attorney, by adhering to the following forms in any such transactions, both the purchaser and seller may rest assured that their rights are protected.

ASSIGNMENT OF ENTIRE INTEREST IN LETTERS PATENT

_Whereas_, I, Richard Doe, of Columbus, County of Franklin,
State of Ohio, did obtain Letters Patent of the United
States for an improvement in Typewriting Machines, which
Letters Patent are numbered 000,000, and bear date January
1, 1901; and whereas I am now sole owner of said patent, and
of all rights under the same; and whereas the Ohio
Typewriter Company, a corporation, of Cincinnati, County of
Hamilton, and State of Ohio, is desirous of acquiring an
interest in the same:

_Now, therefore_, to all whom it may concern, be it known,
that for and in consideration of the sum of five thousand
dollars to me in hand paid by the aforesaid corporation, the
receipt of which is hereby acknowledged, I, the said
Richard Doe have sold, assigned, and transferred, and by
these presents do sell, assign, and transfer unto the said
Ohio Typewriter Company, its successors and assigns, the
entire right, title and interest in and to said Letters
Patent and the invention therein patented; the same to be
held and enjoyed by the said corporation for its own use and
behoof, and for the use and behoof of its successors and
assigns, to the full end of the term for which said Letters
Patent are or may be granted, as fully and entirely as the
same would have been held and enjoyed by me had this
assignment and sale not been made.

_In testimony whereof_, I have hereto set my hand and
affixed my seal, at Columbus, County and State aforesaid,
this tenth day of January, A.D. 1901.

RICHARD DOE. (_Seal._)

In presence of
JOHN SMITH,
THOS. JONES.
STATE OF OHIO, }_ss._:
COUNTY OF FRANKLIN, }

Subscribed and acknowledged before me this tenth day of
January, A.D. 1901.

_Seal._ JOHN RICE, _Notary Public_.

If it is the intention of the assignor to convey to the assignee the right to recover for past infringement of the patent, a clause like the following should be added:

And for the same consideration, I do hereby sell, assign and transfer unto the aforesaid corporation, all claims and demands, both at law and in equity, which may have accrued to me by reason of the infringement of the aforesaid Letters Patent with the right to sue and recover therefor in its own name and for its own use and behoof.

ASSIGNMENT OF AN UNDIVIDED INTEREST

_Whereas_, I, Richard Doe, of Philadelphia, County of
Philadelphia, State of Pennsylvania, did obtain Letters
Patent of the United States for improvements in Locomotive
Headlights, which Letters Patent are numbered 000,000, and
bear the date of June 26, 1900; and whereas, John Roe, of
Philadelphia, County of Philadelphia and State of
Pennsylvania, is desirous of acquiring an interest in the
same: _Now, therefore_, this indenture witnesseth, that for
and in consideration of the sum of one thousand dollars to
me in hand paid by said John Roe, the receipt of which is
hereby acknowledged, I do hereby sell, assign, and transfer
unto the said John Roe, his heirs and assigns, one undivided
one-half interest in and to the aforesaid Letters Patent
and the invention therein patented; the same to be held and
enjoyed by the said John Roe, his heirs and assigns to the
full end of the term for which said Letters Patent are or
may be granted as fully and entirely as the same would have
been held and enjoyed by me if this assignment and sale had
not been made.

And I do hereby declare that I have not conveyed to any
other party the rights and interest herein transferred to
the said John Roe.

Witness my hand and seal this tenth day of January, A.D.
1901,

RICHARD DOE.

In presence of
JOHN SMITH,
THOS. JONES.

STATE OF PENNA., } _ss._:
COUNTY OF PHILADELPHIA,}

Subscribed and sworn before me this tenth day
of January, A.D. 1901.

_Seal._ JOHN RICE,
_Notary Public._

GRANT OF A TERRITORIAL INTEREST

_Whereas_, I, Richard Doe, of Dayton, County of Montgomery,
State of Ohio, did obtain Letters Patent of the United
States for improvements in Corn-Cultivators, which Letters
Patent are numbered 000,000, and bear date the first day of
January, 1901, and whereas, I am now the sole owner of said
patent, and of all rights under the same in the
below-recited territory; and whereas, John Roe, of
Indianapolis, County of Marion, State of Indiana, is
desirous of acquiring an interest in the same;

_Now, therefore_, to all whom it may concern, be it known,
that for and in consideration of the sum of one thousand
dollars to me in hand paid, by the said John Roe, the
receipt of which is hereby acknowledge, I, the said Richard
Doe, have sold, assigned, and transferred, and by these
presents do sell, assign and transfer unto the said John
Roe, his heirs and assigns, the entire right, title and
interest in and to said Letters Patent, and in and to the
invention therein patented for the States of Indiana and
Illinois, and in no other place or places; the same to be
held and enjoyed by the said John Roe, his heirs and
assigns, within and throughout the above specified
territory, but not elsewhere, to the full end of the term
for which said Letters Patent are or may be granted, as
fully and entirely as the same would have been held and
enjoyed by me had this assignment and sale not been made.

_In testimony whereof_, I have hereunto set my hand and
affixed my seal this tenth day of January, A.D. 1901, in the
presence of the subscribing witnesses.

RICHARD DOE.

In presence of
JOHN SMITH,
THOS. JONES.
STATE OF INDIANA, }_ss._:
COUNTY OF MARION, }

On this tenth day of January, A.D. 1901, personally appeared
before me Richard Doe, to me known and known to me to be the
individual who executed the foregoing instrument, and who
acknowledged to me that he executed the same for the purpose
therein expressed.

_Seal._ JOHN RICE,
_Notary Public._

LICENSE:--SHOP-RIGHT

_In consideration_ of the sum of two hundred dollars to me
paid by The John Roe Company, a corporation of Pennsylvania,
located in the city of Pittsburg, I do hereby license and
empower said company to make and use at its foundry and
machine shop in said Pittsburg, and in no other place or
places, in connection with its own business only, or that of
its successors and assigns, the improvements in Lathes, for
which Letters Patent of the United States No. 000,000, were
granted to me January 1, 1901, to the full end of the term
for which said Letters Patent are granted.

Signed and delivered at Pittsburg, in the County of
Allegheny, State of Pennsylvania, this tenth day of January,
A. D. 1901.

RICHARD DOE.

TO JOHN ROE COMPANY,
Pittsburg, Pa.

LICENSE:--NON-EXCLUSIVE--WITH ROYALTY

_This agreement_, made this tenth day of January, 1901,
between Richard Doe, of Wilmington, County of New Castle,
State of Delaware, party of the first part, and the Metallic
Railway Tie Company, of Chicago, in the County of Cook, and
State of Illinois, party of the second part,

_Witnesseth_, that whereas Letters Patent of the United
States, No. 000,000, for an improvement in Metallic
Railroad-Ties, were granted to the party of the first part
January 1, 1901; and whereas the party of the second part is
desirous of manufacturing Metallic Railroad-Ties containing
the said patented improvements:

_Now, therefore_, the parties hereto have agreed as follows:

I. The party of the first part hereby licenses and empowers
the party of the second part to manufacture, subject to the
conditions herein named, at their plant in Chicago, and in
no other place or places, to the end of the term for which
said Letters Patent were granted, Metallic Railroad-Ties
containing the patented improvements, and to sell the same
within the United States.

II. The party of the second part agrees to make full and
true returns to the party of the first part, under oath,
upon the first days of January and July in each year, of all
Metallic Railroad-Ties containing said patented improvements
manufactured by them.

III. The party of the second part agrees to pay the party of
the first part five dollars as a license fee upon each and
every thousand Metallic Railroad-Ties manufactured by the
party of the second part containing the patented
improvements: provided, that if the said fee be paid upon
the days provided herein for semi-annual returns, or within
ten days thereafter, a discount of fifty per cent, shall be
made from said fee for prompt payment.

IV. The party of the second part agrees to put forth their
best efforts and use due diligence in the manufacture and
sale of the Metallic Railroad-Ties containing the said
patented improvements, and if the royalties do not amount to
five hundred dollars semi-annually, the party of the first
part may terminate this license by serving a written notice
upon the party of the second part.

V. Upon the failure of the party of the second part to make
returns or to make payment of license fees, as herein
provided, for thirty days after the days herein named, the
party of the first part may terminate this license by
serving a written notice upon the party of the second part;
but the party of the second part shall not thereby be
discharged from any liability to the party of the first part
for any license fees due at the time of the service of such
notice.

_In witness whereof_, the parties above named have hereto
set their hands the day and year first above written, at
Chicago, County of Cook, and State of Illinois.

RICHARD DOE,
_Metallic Railway Tie Company_,
Per John Roe, President.

LICENSE:--EXCLUSIVE--WITH ROYALTY

_This agreement_, made this tenth day of January, 1901,
between Richard Doe, of Boston, State of Massachusetts,
party of the first part, and the Roe Vending Machine
Company, a corporate body under the laws of the State of New
Jersey, located and doing business at the city of New York,
in the State of New York, party of the second part,

_Witnesseth_, that whereas, Letters Patent of the United
States, No. 000,000, were, on the first day of January,
1901, granted to the said party of the first part, for
improvements in Coin-Controlled Machines, and whereas said
party of the second part is desirous of manufacturing and
selling said patented article: Now, therefore, the parties
hereto have agreed as follows:

I. The party of the first part gives to the party of the
second part the exclusive right to manufacture and sell the
said patented improvements, to the end of the term of said
patent, subject to the conditions hereinafter named.

II. The party of the second part agrees to make full and
true returns, on the first days of January and July in each
year, of all machines manufactured and sold by them
containing the said patented improvements in the six
calendar months next preceding the date of any such notice;
and if the party of the first part shall not be satisfied in
any respect with any such return, then shall the party of
the first part have the right, either by himself or by his
attorney, to examine any and all books of account of said
party of the second part concerning any items, charges,
memoranda, or information relating to the manufacture or
sale of said patented Coin-Controlled Machines; and upon
request made, said party of the second part shall produce
all such books for said examination.

III. The party of the second part agrees to pay the party of
the first part five dollars as a license fee upon every one
of the said patented Coin-Controlled Machines manufactured
by them, the whole of said license fee for each term of six
months to be due and payable on the days hereinabove
provided for semi-annual returns; provided, that if said fee
be paid upon the days herein provided, or within fifteen
days thereafter, a discount of fifty per cent, shall be made
from said fee for prompt payment.

IV. The party of the second part agrees to pay the party of
the first part at least two thousand dollars, less discount,
as said license fee upon each of the semi-annual terms, even
though they should not make enough of said patented machines
to amount to that sum at the regular royalty of five dollars
each.

V. The party of the second part shall cast, or otherwise
permanently place, upon every such machine made under this
license the word "Doe," and in close relation thereto the
word "Patented," and the number and date of said patent.

VI. The party of the second part shall not, during the life
of this license, make or sell any article which can compete
in the market with said Coin-Controlled Machines.

VII. Upon the failure of the party of the second part to
keep each and all of the conditions of this license and
agreement, the party of the first part may, at his option,
terminate this license, and such termination shall not
release said party of the second part from any liability due
at such time to the party of the first part.

_In witness whereof_, the above-named parties (the said Roe
Vending Machine Company, by its president) have hereto set
their hands the day and year first above written,

RICHARD DOE,
_Roe Vending Machine Company_,
By John Roe, President.

No general legal forms should be relied upon too implicitly as suiting particular cases, and an inventor, in order to fully protect his interests, should consult a reliable patent attorney, and have the forms properly prepared to suit his individual case.