Practical Pointers for Patentees Part 7

"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, t.i.tle, 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 ent.i.tled 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 a.s.signments, 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 a.s.sured that their rights are protected.

a.s.sIGNMENT 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, a.s.signed, and transferred, and by these presents do sell, a.s.sign, and transfer unto the said Ohio Typewriter Company, its successors and a.s.signs, the entire right, t.i.tle 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 a.s.signs, 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 a.s.signment 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 a.s.signor to convey to the a.s.signee 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, a.s.sign 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.

a.s.sIGNMENT 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, a.s.sign, and transfer unto the said John Roe, his heirs and a.s.signs, 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 a.s.signs 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 a.s.signment 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, a.s.signed, and transferred, and by these presents do sell, a.s.sign and transfer unto the said John Roe, his heirs and a.s.signs, the entire right, t.i.tle 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 a.s.signs, 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 a.s.signment 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 a.s.signs, 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.