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BY ROBERT MORRIS, M.A., III ' OF THE INNER TEMPLE, BAURISTEH-AT-LAW. LONDON : STEVENS AND SONS, 119, CHANCERY LANE, 1887 T LONDON : PRINTED BY C. F. ROWOBTH, GREAT NEW STREET, FETTER LANE, B.C. s ^ i«7 PREFACE. The changes in the practice effected by the Patents, Designs, and Trade Marks Act, 1883 (46 & 47 Vict. c. 57), which came into operation on the Ist of January, 1884, seem to have caused a considerable increase annually in the number of applications for patents. The number of patents granted annually may probably be taken at not less than 10,000. Thousands also of patents granted under the old procedure are still in force. Having regard, then, to the enormous number of transactions which must necessarily have taken place, even in the last few years, in relation to patents, both before and after the grants, it seems a singular circum- stance that no work has hitherto been published dealing exclusively with such matters. It is hoped that the following pages will, partly at least, supply a want that has, no doubt, been felt for many years. The writer's object has been to furnish to those who are concerned with patents, some precedents in conveyancing in rela- tion to the latter, which will be found of a practical character. The precedents are intended to be of considerable variety. Provisions are made for loans to inventors, repayable either absolutely, or only out of profits; or a2 iv PREFACE. for advances being made to tlicm by way of purchase of shares in the patents. Sales of patents or shares in them, either to individuals or to companies, both in simple cases and also on what may be termed "the hire system," are provided for. A sale of the latter kind is intended to be carried out by the grant of an exclusive licence until all instalments of the purchase-money are paid, or the total amount of royalties paid have reached a particular sum at least. Precedents of agreements and assignments appear, in which are laid down the con- ditions under which co-applicants for, or co-owners of, patents, with or without the intervention of trustees, are separately to work the patents. An assignment of a patent for a district, the partition of a patent into districts, mortgages of patents, assignments and mortgages of licences, and the grant of a sub-licence are also provided for. There are also to be found precedents of exclusive, non-exclusive, and partially exclusive licences, with or without reservations, some of which contain special clauses relating to the sup23ly of raw material or patent articles by one party to the other, or by the licensee to other licensees. The miscellaneous precedents relate to documents subsidiary to those dealt with in the other precedents, and include forms of notices. There are also many common forms and special clauses. The Introductory Chapter gives a short outline of the late and present practice. The other Chapters deal with the contents of the precedents, taking special notice of covenants, and questions as to the nature and extent of the liability of assigns as to them, and also consider points in the general law relating to covenants and contracts. The amendment of an application for PRKFACE. V a latent by introducing a lender or purclia.-ser, tlie present system of registration, the rights and obliga- tions of co-owners inter se, assignments of patents for districts, and the liabilities of lenders as partners, are also particularly considered. The Appendix contains not only the Patent Acts and Rules but also the clauses of the International Con- vention, the Partnership Law Amendment Act, and parts of the Conveyancing, &c. Acts of 1881 and 1882. Many thanks are due to the Comptroller-General and other officials at the Patent Office for information sup- plied respecting the practice at the Office. The Author is also much indebted to Mr. F. B. Palmer, of the Chancery Bar, Author of "Company Precedents," &c., for many valuable suggestions in relation to this Avork. P. M. 5, New Square, Lincoln's Ixx. June, 1887. TABLE OF CONTENTS. INTEODUCTOEY CHAPTEE. PAGE Definition of letters patent ; definition of patent 2 AVlio is an inventor; the term includes "first importer;" tlie Statute of Monopolies and the repealed acts 2, 3 Former mode of application for a patent ; provisional specifica- tion ; provisional protection ; fuller patent rights obtained by filing complete specification ; warrant for sealing the patent ; contents of letters patent (old) 3-5 Amendment of specification by disclaimer ; what persons could enter disclaimer ; disclaimers when retrospective in effect ; effect of disclaimers 6-8 Eegistration under old practice ; effect of registration (old prac- tice) ; other matters under old practice 8, 9 The New Acts. The Acts of 1883, 1885 and 1886; comptroller; general rules regulating practice at Patent Office issued by Board of Trade. 9, 10 First importer is still "an inventor;" who may apply for a patent ; devolution of right of application ; joinder of co- applicants by amendment 10-12 Present mode of application ; an importer must be resident ; fact of communication to be stated ; reference of application to examiner ; abandoned applications not published 12, 13 Provisional protection under new Act ; times for leaving and ac- ceptance of complete specification ; reference and report on the specification ; on acceptance the public may inspect for first time ; patent rights by acceptance of complete specifica- tion 13-15 Times for sealing patent (new practice) ; opposition to grant ; contents of letters patent (new) ; duration of patent 15-17 Assignment of patent rights for a district ; assignments of shares, &c., in a patent 17. 18 VI 11 TABLE OF CONTENTS. PAGE Amendment of specification by disclaimer, &c., retrospective effect of aineudmeuts of specifications ; extension of term of patent ; revocation of patents ; revocation now by petition only ; who may petition ; compulsory licences ; Secretary for War may hold certain inventions ; inventions and specifications kept secret ; new Acts how far applicable to patents and proceed- ings existing and pending at commencement 18-22 Eegistration under new practice ; what documents may be notified on the register ; rectification of the register by expunge- ment, &c 23-25 CHAPTEE ON AGEEEMENTS. Principal matters in the precedents of agreements 26 Disclosure and trial of the invention ; confidential communications of a secret invention 27-29 Amendment of application by making lender or purchaser a co-applicant 29 Interest on a loan according to net profits of a patent ; effect of bankruptcy of inventor ; interest equal to share in net profits and not in specie 29-31 Loan to patentees, only rej)ayable out of net profits and not per- sonally 31-33 Accounts 33 Improvements or additions to an invention or discovery of other process ; for what improvements patents can be obtained . . 33-36 Colonial and foreign patents ; international union 36 Sale of patent on the hire system 37-39 Some points in general law of contracts now to be noticed ; requi- sites of a simple contract ; agreement by deed ; estoppel . . 39-41 Specific performance of contracts generally ; specific performance of contracts for sale of patents ; specific performance of agree- ments for lending and borrowing money 41-44 Eescission of contracts ; no apportionment of entire contract, . . . 44-46 COMMON rOEMS. 1 . Form of letters patent (under new Act) 48 Eecitals. 2. Grant of letters patent (old form) 49 3. Complete specification filed (old practice) 49 4. Grant of letters patent (present form) .50 TABLE OF CONTENTS. IX PAGE 5. French patent 50 6. Claim to be first inventor 50 7. Provisional protection [or acceptance of complete specification] obtained 50 8. Invention made and jiatent taken out 50 9. Agreement to purcliase the patent and all improvements &c., and extensions 50 1 0. Title by assignment 51 Clauses. 1 1 . Trial of invention 51 12. Purchaser to be made co-applicant by amendment 51 13. Accounts to be kept, inspection allowed, evidence given &c. . . 51 14. Accounts &c. (varying last form) 52 15. Improvements, additions &c., by either party to be shared eaually 52 1 (5. Improvements &c. by vendor 52 17. Vendor not to be concerned in trade in similar articles 53 IS. Determination of agreement b}' either party on notice 53 19. iJetermination on default in payments or breach of covenants 54 20. Power to rescind if vendor delaA's proceedings to o>)tain jiatent — or purchaser may by power of attorney take out patent . . 54 21. Libert}' for purchaser to withdraw within given time on f(n-- feiting monies paid , 55 22. If patent not obtainable, monies (without interest) retiu-ned. . 55 23. If patent declared void, instalments cease, or if appeal made then payments only suspended — Final cesser of pajTnents to be in lieu of damages 55 24. Arbitration clause 55 25. Transmission clause (" assigns " to be imported) 56 PEECEDENTS OF AGEEEMENT8. AoKEK.MENT for LoAN by Instalments to enable Inventor to take OUT the patent and work the Invention — Provisional ruo- TECTiox [or AccEPTAXCE of complete Specitieation] already obtained — Pheli.mixary Trial of Invention— Option to make advances — Patent to be taken out in joixt Names and MORTGAGED to Lender — Intere.st half-yearly at fixed rate, and also according to profits — Term certain 59 X TABLE OF CONTENTS. PAQE II. AGREEMENT by a Manufacturer to pay exj^enses of obtaining a patent — No application yet made — Joint Patent- Manufacturer AEONE to work patent — Payment of Eoyal- TiES — Option to purchase patent — Provision for renewal of Agreement by surviving partners (if any) of Manu- facturer 64 III. Agreement for Loan to a Firm — Advances with interest repayable only out of fixed share of net profits haK- yearly — Present advance — Other sums advanced according to state of profits— Charge on patents— No Personal LLA.BILITY to repay 67 IV. Agreement for Sale of Moiety of a patent— Provisional PROTECTION obtained — Purchase-money in three instalments payable (1) at date, (2) on acceptance of complete specifi- cation, (3) on grant of patent— Contritions of working — Eescission before Grant in certain events 70 V. Agreement for Sale of Patent after acceptance of Complete Specification — Vendor to manufacture for Purchaser within District — Exclusive Licence for same District — Eoyalties on Goods sold to strangers — Clauses as to prices, accounts, dehvery and disposition of Goods on determination of Licence '3 VI. Agreement for Sale of Foreign and Colonial Patents (in course of being obtained)— Special Clauses enabling Pur- chaser to retire from any Purchase 77 VII. Agreement for Sale of Patents to a Trustee for a Limited Joint Stock Company (in course of formation) — Purchase- money in Cash and Shares 79 VIII. Agreement between Joint Applicants for a Patent, defining their respective interests and powers on working separately 82 IX. Agreement to grant Exclusive Licence for District — Con- dition Precedent to purchase expected Cargo of Paw Material from Foreign Island for manufacture of the Patent commodity — Contents of Licence as in Schedule, including provisions for future purchases of Paw Material — An^vlysis by Chemists — Determination of Agreement in certain events B4 X. Agreement for Exclusive Licence to sell Ai-ticles — French Patentee — British Patent to be obtained in Joint Names and then vested in Licensor, subject to a Covenant to GRANT the Licence — Licensee first to establish his Busi- ness, and BUY a certain number of Articles from French Factory — Terms of Licence as in Schedule, including as to Monthly supply of Articles by Licensor 87 TABLE OF CONTENTS. XI PAGE XI. Agreement for Sale on the Hire System of a Patent (Exclusive Licence until Assignment) — Payment of Annu.vl Sums — No Royalties 89 XII. Agreement for S.vle ou Hire System of a Patent (var^-ing last Precedent) — Exclusive Licence until Assignment — Premium — Eoyalties haK-y early until total fixed Minimum paid 93 XIII. Agreement forming a Syndicate to turchase a Contract FOR Sale of a Patent, and to sell the contract or patent to a Company or otherwise 9G XIV. Deed of Partnership for working a Patent 99 XV. Agreement appointing a Sole Agent for the Sale of Patent Articles in the Metropolis 104 CHAPTEE ON ASSIGNMENTS (and Mortgages). A patent or share or for distinct part of invention generally assignable ; so also for a district ; a co-owner may assign his share ; mode of assignment ; should he by deed ; other- wise only a contract arises 110-1 Contents of ordinary deed of assignment ; Recitals — title or fact of invention or claim thereto — no implied warranty of title to the invention — Recital that assignor represented himself as inventor ; grant of })atent ; devolution of title ; Testatum — assignment of invention as well as patent, also of rights, powers &c. ; Covenants — for title and as to validity of patent ; as to improvements &c. and extensions ; not to seek leave to amend specification without consent 111-5 Contents of an assignment for a district — Covenants — validity of patent ; as to improvements &c. ; as to extensions ; payment of renewal fees ; no amendment of specification without con- sent of assignee ; production of the letters patent 1 lo-7 Comparison of advantages between assignments and exclusive licences for districts 117 Powers and obligations of co-owners of a patent infer se ; Mathers v. Green ; accounts as to royalties under licences ; diificidties of co-owners working separately, where no special provisions ; such provisions are personal covenants not generally binding the assigns ; covenant as to grant of licences ; covenant by assignee to perform obligations of assignor 118-21 xii TABLE OF CONTENTS. PAGE Division of patent into equal moieties (separate working) ; Divi- sion into unequal shares (separate working), no trustees — each owner to pay share of fees; licences to be granted jointly; each owner to pay royalties on articles made by him ; other provisions ; Assignment to trustees for owners — nature of ; assigns of owners to execute the deed, but they might be bound by their acts ; duties of the trustees — to grant licences to owners or strangers, to pay expenses, defend patent &c. ; contribution of owners to expenses ; remuneration of trustees; appointment of new trustees ; Assignment of a share by patentee, but he alone to work patent — nature of reservation ; conditions for working 121-7 Assignment of a licence — where licensor is not a party; where , licensor is a party 1 28 vy Mortgage of a patent — recitals and absolute covenants for title and validity; covenant as to payment of fees and mainte- nance of patent ; to detect infringements and take proceed- ings, or permit mortgagee so to do ; implied power of sale and other powers ; grant of licences by mortgagor ; provision that mortgagor may grant licences until power of sale exer- ciseable ; provision as to licences by mortgagee ; improve- ments &c. to form part of security 128-31 Mortgage of a licence — where licensor is not a party ; where licensor is a party 131-2 Eegistration of assignments and mortgages — not compulsor}^ except as against third parties ; registration will relate back to date of document, semble 132-3 PEECEDENTS OF ASSIGNMENTS AND MOETGAGES. AssIG^^:MEXTs. I. Assignment of a Patent, with benefit of Improvements, &c. (Ordinary Form) 136 II. Assignment of a Patent for a District 139 III. Assignment of a Moiety of a Patent — Conditions of Separate Working 142 lY. Assignment of one Twelfth Share of a Patent — Special provisions as to each Owner working the Patent separately 144 Y. Assignment of a Patent to Trustees for Co-owners in Un- equal Shares — Exclusive Licence for a particular Dis- trict to be granted to each Co-owner at Eoyalties — Power OF Sale and General Powers of Licensing in the Trustees — Trust Monies divisible half-yearly — Eemuneration to the Trustees 148 YI. Assignment by a Patentee of a Share of a Patent — The Assignor alone to work the Patent 154 TA15LE OV CONTEXTS. XIU PAGE YII. Assignment and ItELEASE of a Patent by one Co-grantee to the other in pursuance of an Agreement for Sale of the Entirety by the Inventor entered into befSee Turney v. Bayley.) Turney v. Bayley, 4 De Gex, Jo. & Sm. 332 ; 33 L. J. Ch. 499- - 33 V. Vera v. Smith, 1 Vent. 121 - - - - - - 107 VonHeyden V. Neustadt, L. R. 14 Ch. D. 230; 42 L. T. 300; 28 W. E. 496 118 W. Wall V. Bright, 1 Jacob & Walker, 494 - - - - 159 Wallington v. Dale (1852), 7 Exch. 888; 23 L. J. Ex. 49 - - - 7 Walton V. Lavater (18G0), 8 C. B. N. S. 162 ; 29 L. J. C. P. 275 ; G Jur. N. S. 1251 ; 3 L. T. N. S. 272 .... 110,111 Waring V. Ward, 7 Yes. jr. 337 - - - - -121,127 Warwick v. Hooper (1850), 3 Mac. & G. GO - - - - 218 Weaver v. Sessions, 6 Taunt. 155- - - - --45 Webb V. Spicer, 13 Q. B. 886 ; 18 L. J. Q. B. 142 - - - 125 Werdermann v. Societe Generale d'Elcctricite, L. E. 19 Ch. D. 246.. 32, 33, 69, 120, 185 West V. Eeid, 2 Hare, 260 ; 12 L. J. N. S. Ch. 245 - - 123, 145 White, Ex parte, Nevill, In re, L. E. G Ch. 397 ; 19 W. E. 488 ; 40 L. J. Bank. 73 ; 24 L. T. N. S. 45 ; aff. by H. L. nom. Towle v. White, 21 W. E. 465 ; 29 L. T. N. S. 78 - - - - - 105 Whittaker, In re, Macmillan, Ex parte (1871), 24 L. T. N. S. 143 - 30 Wiles V. Woodward, 5 Ex. 557 ; 20 L. J. Ex. 261 - - - 111 Williams v. Hathaway, L. E. G Ch. D. 544 - - _ _ si Williams v. Millington, 1 Hen. Black. 81 - - - - 106 WiUiams v. Williams, L. E. 2 Ch. 294 ; 36 L. J. Ch. 419 ; 15 W. E. 657 : 16 L. T. N. S. 42 - - 42 Willoughby v. Willoughby, 1 T. E. 772 - - - - 196 Wirth's Patent, Ee (1879), L. E. 12 Ch. D. 303 ; 28 W. E. 329 - 11, 13 Witham v. Vane, 44 I.. T. N. S. 718 - - - - - 125 Withers v. Reynolds, 2 Barn. & Adolp. 882 ; 1 L. J. N. S. K. B. 30 - 45 Wright V. Bell, 5 Price, 325 - - - - - - 42 Y. Young V. Smith, L. E. 1 Eq. 180 ; 35 Bcav. 87 - - - - 112 ABBREVIATIONS USED, EDITIONS CITED, &c. C F One or more of the Common Forms, at pp. 4S — .56. Sp. CI Oue or more of tlie Special Clauses relating to licences at pp. 228—242. P- R Patent Rule or Rules issued by Board of Trade in 1883 and 188-5. Sec Appendix. Tlie Act of 1835. .5 & G Will. IV. c. 83 (Patents). ,, 1844 . . 7 & 8 Viot. c. 69 (Patents). ,, 1852. .15 & 16 Vict. c. 83 (Patent Law Amendment Act). „ 1853. .16 Vict. c. 5 (Patents). ,, 1883 .. 46 & 47 Viet. c. 57 (Patents, Designs and Trade Marks Act, 18S3). See Appendix. The New Act . . . .The Act of 1883. The Act of 1885. ,48 & 49 Vict. c. 63 (Patents, Designs and Trade Marks Amendment Act, 1885). Sec Appendix. ,, 1886. .49 & 50 Vict. c. 37 (Patents Act, 1886). See AppendLx. The New Acts . .The Acts of 1883, 1885 and 1886. The Old Acts Tlie various Patent Acts repealed by the Act of 1883, includino- the Acts of 1835, 1844, 1852 and 1853. ° Conv. Act Tlic Conveyancing and Law of Property Act, 1881 (44 & 45 Vict. c. 41). See Appendix. Conv. Act, 1882. .45 & 46 Vict. c. 39. See Appendix. The Works on the New Acts cited are those of : — Aston, J. J., Q.C. [the late], 1883; Aston, Theodore, Q.C., 1884; Higgins, Clement, 1884 ; Johnson (Patentee's Manual), 1884; Lawson, 1884; Muuro, J. E. C, 1884 ; Seward-Brice, Q.C, 1885; Terrell, T., 1884. Tlie older and other Works on Patents cited are those of : — Agnew, 1874 ; Carpmael (Patent Cases), 1843 and 1851 ; Coryton, 1855 ; Godson, 1823; Goodeve (Patent Cases), 1884; Higgins (Digest of Cases), to March, 1880; Hindmarch, 1846 ; Macrory (Patent Cases) ; Norman, 1853 ; Webster (Patents and Digest), 1841. Editions of Conveyancing and other Works of a general nature are as follows : — Addison on Contracts, 8th cd. 1883 ; Benjamin on Sales, 3rd ed. 1884 ; Buckley on Companies, 4th ed. 1883 ; Chitty on Contracts, Uth ed. 1880 ; Copinger's Index to Conveyancing, 1872 ; Davidson's Precedents in Conveyancing, any edition unless otherwise stated; Elphinstone, Norton & Clark's (Elph. N. & C.'s) " Inteiiiretation of Deeds," 1885; Everest & Strode' s Law of Estoppel, 1884; Fry on Siiecific Per- formance, 2nd ed. 1881 ; Key & Elphinstone's Precedents in Conveyancing, 2nd ed, 1883 ; Lindley on Partnership, 4th cd. 1878 ; Palmer's Company Precedents, 3rd ed. 1884 ; Pollock's Principles of Contract, 4th ed. 1885 ; Smitli's Leading Cases, 7th ed. 1876, 8th ed. 1879 ; Woodfall on Landlord and Tenant, 13th cd. 1886, ADDENDA, &c. Page 62.'^Refcr to the following ohscrvations for pp. 130, 131. Page 130.*:^The power to the mortgagor to grant licences might be made exercise- able not only wp to the time when the power of sale should first become exer- ciseable, but also beyond that time, until the mortgagee shall give notice in writing to the mortgagor that he determines the power. The power of attorney might be made an irrevocable power for the prescribed period under sects. 8, 9 of the Conveyancing Act, 1882 {2)ost, p. 384). Such a power would, no doubt, from the circumstances of the case, be held to have been given for valuable consideration. As a mortgage is registered simply as an assignment {post, p. 132, n.), the mortgagee can alone grant valid licences, subject to the question of notice as to equities. See sect. 87 of the new Act, post, p. 322. The ]X)wer of attorney should, of course, enable the mortgagor to receive the royalties under each licence until the mortgagee, consistently with the other provisions in the power, shall, by notice in writing served on the licensee, requii'e the future sums to be paid to himself. Page 1311^ — The power to the mortgagee to grant licences might be made exerciseable only after he shall have given notice in writing to the mortgagor that he claims to be entitled to exercise the same. Page 165, line i frotn the bottom. — After the word "owners" add (within the bracket), " and ' estate and interest as aforesaid,' instead of ' share.' " Last line but one. After the word "owner" add ^^ but providing that the parties shall ' contribute in the same proportions as provided in the case of fees as aforesaid.'" In the same line, substitute ^^ aiuV for the last word " bnt.''^ Pages 169,''170. — As to the power of the mortgagor to grant licences, refer to the above observations for p. 130. As to the power of the mortgagee to grant licences, refer to the above observations for p. 131. Page 289,"note {d). — The covenant might be as follows : — " And that he the said A. B. will not during the continuance of this licence do or knowingly suffer any act matter or thing whereby the said licence dated &c. may become determined or revoked." Page 29|p, Form IV. — The memorandum is to be supposed to be entered on the register in pursuance of a pro\'iso in the power of revocation that " the licensee shall be at liberty at any time thereafter to sign and enter or cause to be entered on the register at the Patent Office a memorandum that this licence had become revoked as aforesaid." In the form, for the word "agreement" write " licence." PATENTS CONVEYANCING. INTRODUCTORY CHAPTER. PAOS Definition of letters patent ; definition of patent 2 Who is an inre>itor, the term includes ^^ first importer ;^^ the Statute of Monopolies and the repealed acts 2, 3 Former mode of application for a patent ; provisional sjiecification ; provisional protection ; fuller patent rights obtained by filing complete specification ; xvarrant for sealing the patent ; contents of letters patent {ohl) 3 — 5 A.mendment of specification by disclaimer ; what persons could enter disclaimer; disclaimers, when retrospective i)i effect; effect of disclaimers C — 8 Registration under old pi-actice ; effect of registration {old prac- tice) ; other matters under old practice 8, 9 TUE NEW ACTS. The Acts q/1883, 1885, a7id 1886; comptroller ; general rules regu- lating practice at Patent Office issued by Board of Trade .... 9, 10 First importer is still " a?i inventor " ; icho may apjjly for a patent ; devolution of rigid of application ; joinder of co-applicants by amendment 10 — 12 Present mode of application ; an importer must be resident ; fact of communication to be stated; reference of ajiplication to exa- miner; abandoned applications not published 12, 13 Provisional protection under new act ; times for leaving and accept- ance of complete specificatio7i ; reference and report on the specification ; on acceptance the public may inspect for first time ; patent rights by acceptance of complete specification . . 13 — 15 Times for sealing patent {neiv practice) ; opposition to grant ; con- tents of letters patent {neiv) ; duration of patent lo — 17 Assignme7it of patent rights for a district; assignments of shares, ^'c. in a patent 17, 18 Amendment of specifications by disclaimer, ^T. ; retrospective effect of amendments of specifications ; extension of term of patent ; revocation of jjatents ; revocation noiv by jjctition only; who may petition; compulsory licences; Secretary for IJ'ar may hold certain inventions ; inventions and specifications kept secret; neiv acts how far applicable to patents a)td proceedings existing and 2)endi)ig at commencement 18 — 22 Hcgisfration under new practice ; what documents maybe notified on the register; rectification of the register by expungement, ^r. 23 — 25 M. B IXTRODUCTORY CHAPTER. Definition of letters patent. Definition of "patent." Who is an in^ ventor. The term includes " first im- porter." Letters patent iu respect of an invention may be defined to l)0 an instrument in writing or print issued by or on behalf of the Crown to the inventor, by virtue of which he and his assigns, and persons authorized by him and them respectively, are entitled during a fixed term of years to the exclusive right or privilege of using and exercising the invention, subject to the conditions prescribed therein {a). This right or privilege is an incorporeal chattel, which by the terms of the grant is impressed with all the character of personal estate by being limited to the grantee, his executors, administrators, and assigns {h). Lentil the beginning of the year 1884, when the Patents, Designs, and Trade Marks Act, 1883 (c), first came into operation, letters patent were sealed with the Great Seal of the United Kingdom. By sect. 12 of that act, letters patent are to be sealed with the seal of the Patent Office, and when so sealed shall have the same effect as if sealed with the Grreat Seal, The term "patent" is a convenient and popular expression, meaning the letters patent, and also, or, alternatively, according to the nature of the case, the right or privilege conferred by the instrument. The term will be used in the like sense herein. In the new act {d) the word " patent " is defined to mean " letters patent for an invention," but has, no doubt, the extensive meaning as above. The term "inventor," as used herein, is to be understood to mean any person who, in the language of the Statute of Monopo- lies (21 Jac. I. c. 3 (^)), is "the true and first inventor of any new manufacture within this realm." This description was decided, in Edgchervy v. Sfcrens {/), to include "a first importer" from (a) The term "letters patent" is from the Latin " Utterce patentes" or " open letters." The letters are addressed to the public at large, and there- fore there is supposed to be no necessity to close or seal them up. Other letters of the Sovereign, which are closed up and sealed outside, are called " writs close " {litters clausca). See 2 Bl. Com. 349 (Kerr) ; Agnew, 1. For the present form of letters patent, see Form I, post, p. 48. Letters patent are also issued which do not relate to inventions— e.(/., such as confer titles of honour, or appoint to public offices. {h) Hindmarch, 233. (c) 46 & 47 Yict. c. o7. This is in general referred to herein as " the new act" or "the Act of 1883," and is set out in the Appendix, pp. 305—330, and is followed by the two Amendment Acts of 1885 and 1886. {d) Sect. 36. (e) See this act in Appendix, j5osf, p.' 303. (/) 1 Webs. 35. THE LATE PJ.'ACTICE. li abroad, /. c, one who obtained liis information from some person (the true inventor) abroad, and Avas tlie first to introduce the invention into this countrj-. If the communication was not made in confidence, the importer would have been entitled to hold the patent for his own benefit (//), or, if otherwi.se, he would become a trustee for tlie inventor. The decision in lult/rbrrri/ v. Stcvcm has been followed or recognized in many other cases {It). The new act apparently makes no alteration in the position of such an importer (/). The Statute of Monopolies (21 Jac. I. c. :]), which is still in The Statute force in certain sections (y), declares monopolies in general to be aud^the're-"^ void (/•), but excepts letters patent for the term of fourteen years pculed acts, or under, granted or to be granted to the first and true inventor in the case of new manufactures within the realm (/). This statute- did not introduce a new law, but is simply declaratory of the common law, and simply exempts patents which are good at common law from the penalty which the statute imposes upon such patents as were then prohibited {m). The statute, in its unrepealed sections, is the only statute in force in relation to patents, except the new Act of 188-i and the Amendment Acts of 1880 and 188G. The list of acts (hereinafter called " the old acts ") which were in force immediately before the 1st day of January, 1884, and are repealed by the new act, are to be found in the schedule to the latter (^/). The Patent Law Amendment Act, 1802 (hereinafter 15 1-16 Vict, called " the Act of 1852 "), which has been wholly repealed by the '"' ^'^' new act, subject to the savings under sects. 40 and 113 of the latter act, gives the late practice for obtaining patents, which it is now proposed to notice shortly in some respects. An application under the Act of 1802 for the grant of letters Former mode of uppliwition • ■ — ■ for a patcut. {g) Steadman v. Marsh, 2 Jur. X. 8. oOl. (/() See A'icktls v. lioss, 8 C. B. G79 ; PUmpton v. Malcohnson, L. R. 3 Cb. D. 555 (Jessel, M.E.) ; and Marsdcn v. Savilh Street, iC-c. Co., L. 11. 3 Ex. D. 203 (Jessel, M.E.) and many otlier cases. (/) See p. 10, post. (j) See Apjiondix, p. 303, post. {k) Sects. 1 and 3. {I) Sects. 5 and 6. (to) Agnew, 2, referring to 3 Co. Inst. c. 85, pp. 181 — 181. (n) Appendix, p. 330, 2^osf. See, however, sect. 45 of the now act as to provisions relating to patents existing at the commoncement of the latter, and sect. 113 thereof as to the saving, in certain respects, of the past opera- tion of the repealed acU, n2 INTRODUCTORY CHAPTER. Provisional specification. Provisional protection. patent was by petition to the Crown, stating that the petitioner was in possession of the invention, which he believed would be of great public utility, and that he was the true and first inventor thereof, and that the same was not in use by any other person or persons to the best of his knowledge and belief (o). The petition was supported by a declaration verifying the statements, and also by an instrument in writiog called a provisional specification signed by or on behalf of the petitioner. The provisional specification contained simpl}^ a description of the nature of the invention (j)), without any details as to the manner in which it was worked (ry), as the only object of such specification was to identify the invention with a view to obtaining the letters patent (r) . As soon as the law officer to whom the provisional specification had been referred had certified his allowance of its sufficiency, and the certificate had been filed, the petitioner became entitled for six months as from the date of his application to use and publish the invention without prejudice to the grant of the patent. The privilege thus obtained was called " provisional protection " (.s), as the petitioner was thereby protected from the consequences of publishing the invention, which would have the effect of depriving it of novelty before the patent was granted (;'). No right of priority, however, was in this way gained over any other applicant for a similar invention, who had left at the Patent Office another provisional specification in respect of it {u). The privilege also did not enable the petitioner to take proceedings against any persons for acts of infringement committed before he obtained fuller patent rights, as next mentioned (r) . (o) The form of tliis petition was gi^■en in the schedule to the act. Where the petitioner was the importer only, the fact had to appear in the petition and proceedings, or otherwise the patent became void [Millujan v. Marsh, 2 Jur. N. S. 1083). (p) Sect. 6. The new act has made no alteration as to the nature of a pro- visional specification. {q) Re NewaU and Elliot, 4 C. B. N. S. 269 ; Penn v. Bihhj, L. E. 2 Ch. 127. (r) Ee Newnll and Elliot, siqjra (per Pollock, C.B.). (s) See sect. S. {t) Such prior publication might otherwise have been deemed a dedication to the public. See Hindmarch, 33. • [u) Ex parte Bates and Itedgate, L. E. 4 Ch. 577 ; Ex parte Bailey, L. E. 8 Ch. 60; £x 2Mrte Henry, ibid. 169. (r) Sect. 24. 1 HE LATE PKACTICE. Instead of obtaining protection by means of a provisional speei- Fuller patent fication, the petitioner could have obtained fuller patent rights for Uiined by the same period of six months by filing a complete specification piete Hpecifi- witli his petition and declaration. A complete specification pur- '^^tion. ported to be such as particularly described and ascertained the nature of the invention, and in what manner it was to be per- formed. It was under tlio hand and seal of the petitioner, and was verified by the declaration. No investigation of the merits of this specification beyond what was requu'ed in the case of a pro- visional specification took place, and as soon as a certificate of the proceedings had been given to the petitioner, he obtained his protection for the period of six montlis from the date of his application. Such protection was more extensive than the pro- visional protection, as the petitioner acquired the like powers, rights and privileges as might have been conferred on him by letters patent duly sealed as of the date of application, and without prejudice to the grant (.r), and was enabled after the sealing of the patent to take proceedings for infringements committed in the meantime (//). After all other necessary preliminaries had taken place, such as Warrant for the giving of notice to the commissioners of the intention to patenr. proceed with the application, and the advertising by them of such intention, so as ^to enable any persons to oppose the grant, and subject to such opposition (if any), a warrant was issued by the law ofificer for the sealing of the patent (~) ; which, in general, was only issued w'ithin the time of protection, tmless it was required in lieu of any other destroyed or lost, or unless the sealing had been delayed by reason of opposition {a). A patent was sealed either before or after the complete specifica- Contents of tion was filed. In the former case it contained a condition making (oi/j^^ ^* ^^ it void if the grantee failed to furnish a complete specification or file the same within the proper period. In the latter case, the condition was to the effect that if the (so called) complete specifi- cation was false or incomplete, the patent would be void. There were other conditions for rendering the patent void, namely, in case (1) the grant was contrary to law or prejudicial or incon- venient to the public, or (2) the invention was not a new one as to (x) Sect. 9. {y) Sect. 24, as read with sect. 9. (z) Sect. 15. (a) Sept. 20. 6 INTKODUCTOIJY CllAPTKK. the public use aud exercise thereof within the kingdom, or (3) the grantee was not the true and first inventor within this reahn as aforesaid (i'^) , or (4) some previous patent had ah^eady been granted elsewhere in respect of the invention, or (5) the grantee should fail in payment of the stamp duties, or (G) the grantee should not cause the patent articles to be supplied for the service of the Crown when required. The patent was granted to the patentee, his executors, administrators, and assigns. AUeration of No provision was made under the old law for amendment of the by^disclaimOT. complete specification after the grant of the patent, except under the Amendment Act of 1835 (c). By that act {d) any person who as grantee, assignee, or otherwise, obtained a patent, might, by leave of the law ofiicer, enter a disclaimer of any part of the specification, or of the title of the invention, or enter a memo- randum of any alteration in the specification or title, but not so as to extend the patent rights. Where there was no opposition (commenced by entry of a caveat) the disclaimer or the memo- randum of alteration was filed and enrolled with the specification, and was deemed part of the patent or specification {e). The object sought was to procure the omission of such words or statements as tended to vitiate the patent (,/'), and therefore was by way of rejection only {g), except as to the insertion of words necessary to complete the meaning (A) . No extension of the patent was allowed (/), but clerical errors in a specification were corrected on application to the Master of the Eolls {J). "What persons Under the Act of 183'j (/.•) it was held that a grantee of a patent, disclaimers. though he had entirely parted with his interest, might enter a dis- claimer (/). After that decision the Act of 7 & 8 Vict. c. 69, was passed, providing (in) that a patentee who had assigned any part of his interest might, together with the assignee, and an assignee of (h) Tliat is, as to the public use and exercise thereof. (c) 5 & 6 Will. IV. c. 83, which, is totally rei^ealecl by the new act. {d) Sect. 1. (e) Ibid. If) Fuilsion V. Smith, 11 II. L. Cas. 2.13. {(j) Ibid., per Lord Westbury. (/i) Ibid., and also Thomas v. Welch, L. E. 1 C. P. 192. (0 Foxwdl V. Bostocic, 4 De G. J. & S. 298. (j) Johnson's Patent, L. E. 5 Ch, D. 503; Sharp's Patent, 1 Webs. G41, [k) Sect. 1, uli sup. \l) Spilsburij V. Chiujh (1S42), 2 Gale & Dav. 17 ; 1 Webs. 255. (m) By sect. 5, which is repealed by the new act. THE LATE rKACTICE. the whole interest might alone, enter a disclaimer or memorandum of alteration, which when entered and filed should be valid and effectual in favour of the person or persons in whom the rights were or hecamo vested. It also provided {m) that no objection Bhould be made in any proceeding whatsoever on the ground that the party making such disclaimer or memorandum had not suffi- cient authority in that behalf. The public being thus concerned or bound, subject to the question of fraud (if any), only according to the record, reliance was placed on the discretion of the law officer in giving leave to disclaim («). In Wallinyton v. Dale (o) tliQ patentee had assigned the patent, and alone entered a dis- claimer before the complete specification was filed, and it was held that the disclaimer was valid as from the date of record of it. In consequence of the power of the grantee to enter a disclaimer after ho had assigned all his interest, it was not unusual in practice for the grantee, on the assignment, to covenant not to enter a disclaimer without the leave of the assignee. Disclaimers were not generally retrospective, so as to give the Disclaimers, owner of the patent power to take proceedings for infringements of ^ ective^in" the patent committed before the filing of the disclaimer {})). By effect, the Act of 1852 {(j), the leave of the law officer was required in order to take such proceedings. When leave was given by the law officer to disclaim, conditions were usually imposed, regard being had to the circumstances under which the invention may have been used by other persons previous to the application for leave. Sometimes there was a condition that the owner of the patent should not sue in respect of any past infringements (r), especially where the patent had been long imperfect from want of a disclaimer, and manufacturers had embarked large capital in making and dealing with the patent articles (.s). Where a person, (m) Ihul. (n) See Spihhury v. Chnujh {idi sup., and wliicli was decided before the act of 7 & 8 Yict. c. 59, was passed) as to tlio remarks of Lord Denman, C.J., ou the exercise of this discretion. (o) 7 Exch. 888 (1852). {p) Lucas's Patent, Macr. P. C. 235. See also Perry v. Skinner (1S37), 2 M. & W. 471 ; Stacker v. Waller, 9 Jur. N. S. 138 ; and S. C. nom. Stacker v. Warner, 1 C. B. 1-48. See, however, Pej. v. ^1////, 10 C. B. 379. (r/) Sect. 39. (r) Smith's Patent (1855), Macr. P. C. 232, 234 ; JIarrison's Patent (1853), ibid. 31. (s) Tranter's Patent, Johns. P. M. 191 : Lawson, 25. INTRODUCTORY CHAPTER. Effect of dis- claimers. Registration under old practice. who had obtained his information from the patentee as to the process, presumed upon a defect in the specification, and infringed the valuable part of the patent, and worked the same in secret, and otherwise acted unfairl}', he was held bound, on the applica- tion for leave to disclaim, to pay a fixed sum to the patentee as a condition for not being proceeded against for the infringement (t). The law officer might, if he thought fit, on an application for leave to disclaim, order an action to be brought in respect of past infringements (u). The effect of a disclaimer was to make the owner of the patent the patentee of the undisclaimed part onlj, as from the date of the disclaimer (r), subject, as we have seen {ic), to the equities (if any) between himself and any other persons who had worked the invention in opposition to his interests. The effect was merely to strike out from the si:)ecification those parts of the machine [or other article or commodity made by the invention or to which the latter could be applied] which were disclaimed, and the disclaimer could not be read as explanatory of that which remained (.r) . The Act of 1852 (//) provided that two books or series of books should be kept at the Patent Office for the purposes of registration, to be called respectively the " Register of Patents " and the " Register of Proprietors." In the Register of Patents were to be recorded the grant of patents, the deposit and filing of certificates, disclaimers and other matters and things affecting the validity of the patents (z) . In the Register of Proprietors were to be recorded all assignments, licences, and other dealings and matters relating to the proprietorship of patents (re). It was the practice to enter in the latter register the documents in their entirety, and no re- striction seems to have been placed on the entry therein of docu- ments conferring mere equitable interests in patents, or even the right to a share of the net profits to be made in working them (b) . {t) Lucas's Patent, uhi sup. ; Lawson, 25. (m) Smitli's Patent, uhi sup. {v) Clark v. Kenrick, 12 M. & W. 221. (w) Lucases Patent, uhi sup. (x) TetJey v. Easton, 2 C. B. N. S. 706. [y) Sects. 34 and 35. (z) Sect. 34. (a) Sect. 35. (6) In Re Morey's Patent, 25 Beav. 583, it was held that this register might contain not only a register of documents, but any other fact which the court or the commissioners miglit think fit. In the new act (Appendix, post, pp. THE NEW ACTS. » The Act of 1852 (c) also provided that certified copies of entries in the Ilegister of Proprietors were to be received in evidence in all courts and proceedings, and sliould be prima facie proof of the assignment, licence, or proprietorship, and until such entries, the grantee or grantees were to be deemed the sole and exclusive proprietors (r) . Any such entry might have been expunged on the application of an aggrieved party {d). As between the assignor and assignee, and also as against third Effect of re- parties having notice of the assignment at the time of their dealing practice). with the assignor, it was decided that notwithstanding sect. 35 of the Act of I85i, registration of the assignment was not neces- sary (ost. {(]) Mr. Terrell, in Lis work (Introduction, and -p^). 12, 17, 21), thinks that an importer cannot now obtain the grant of a patent. Mr. Seward 13rice (p. 3) has doubt on the subject. Messrs. T. Aston (p. 4), Lawson (p. 3), and Johnson (p. 96), hold the view expressed in the text. The Form A 1 of the Patents Eules (p. 359, pod), according to which an importer declares that the invention was communicated to him from abroad, and that he claims to be the true and first inventor thereof, is, no doubt, as Mr. Terrell contends, objectionable, according to the ordinary meauiiig of the words, but the .same may be said as to the elt'ect of the decisions that the term " inventor " includes "importer." The difficulty is to emploj' language in the declaration which will satisfy the requirement of sect. 5, sub-sect. 2 (as above mentioned), and also disclose the fact of communication. In Milliyan v. Marsh (2 Jur. N. S. 1083), it was decided that a patent obtained by an importer who in his decla- ration did not state the fact of communication, was void. This deci^iion must, it is conceived, still rule. See on this, p. 13, jiost. (r) Sect. 4. See also sect. of the Amendment Act, 1885. (s) Sect. 5. {t) Cheavin v. Walker, L. E. 5 Ch. D. 858 (per Bacon, V.-C). See sect. 99, post, p. 324, as to declarations by guardians or committees or other persons in the case of applications for patents on behalf of infants, lunatics, or other persons under disability. («) See Married Women's Property Act, 1882 (45 & 4G Vict. c. 75), as to the holding or acciuisition of property by married women independently of their husbands. [v) Sect. 117. \iv) Beard v. E. 359. The Patent Office has given notice that applicants using this form must be resident in the United Kingdom (Johns. P. M. 96, 365). In lie U'irih's Patent, L. 11. 12 Ch. D. 303, it was held by Cairns, L.C, that a patent might be granted to an alien i)erson resident abroad who had obtained the communication from another alien also resident abroad. ()■) As to Forms A, A 1, see Johns, P. M. 96, 317. {j) See MiUiijan v. Marsh, 2 Jur. N. S. 1083 {ubi sup.), and Steadinan v. Marsh, 2 Jur. N. S. 391. The name of the communicant is to bo mentioned in the declaration. (Form A 1, j^ost, p. 359.) {k) See sects. 6 and 7. ( Z) Sect. 4 of Amendment Act, 1885 (Appendix). The abaudonmeut, &c., must be before the acceptance of the complete specification, as publication takes place on such acceptance. See sect. 10, and post, p. 14. (m) See sect. 14. (h) Ante, p. 4. (o) As to this time, see sect. 8, and ji. 14, j^oat. act. 14 INTRODUCTORY CHAPTER. Times for leaving and a{'cept;mce of complete specification. Reference of and report on the specifica- tions. On acceptance the public may inspect for first time. next mentioned, to be deemed an abaudonment of the application, it follows that if the failure occurs, provisional protection at once ceases, and, consequently, that if the applicant intends to make a fresh ajtplication he must discontinue the public use of the inven- tion {p). The above point could barely have arisen under the old law, as protection was afforded for a fixed period of six months, without reference to the date of sealing, and the application for the warrant for and the issue of the patent might have been made at any time up to twelve days before the expiration of the period {q). A complete specification in lieu of a provisional specification can be left with the application. "Where, however, a provisional speci- fication is put in, the complete specification must be left within nine calendar months from the date of the application or otherwise the application will be deemed to be abandoned (r). Another month or less may be allowed on payment of the prescribed, fee (.s). The complete specification will be void if not accepted within twelve months (t) from the date of application, unless the applicant lodges an appeal against the refusal to accept {tt). The provisional (if any) and complete specifications are to be referred to an examiner who will ascertain their fitness and (if necessary) that the invention stated in both is substantially the same, and make his report thereon to the comptroller, who may refuse to accept the complete specification unless it be amended to his satisfaction (?•). The first publication, consequent on the proceedings, takes place immediately on the acceptance of the complete specification. The fact of acceptance is advertised in the Official Journal of the Patent Office, and the application and specification with the drawings (if any) are then open to public inspection {iv). (p) As to non-publication in the case of an abandoned application, see sect. 4 of Act of 18S5 (p. 332, post). Under the old law, the abandonment of proceedings commenced with, a provisional specification did not establish pubHcation {Oxietj v. TIoJde)i, 8 C. B. N. S. 666). (q) See third set of rules to Act of 1852. (r) Sect. 8. As to non-publication of abandoned applications, see sect. 4 of Act of 1885 (p. 332, j'^ost), and Oxley v. Ilvhlen, siijtra. (s) Sect. 3 of Act of 1885. {t) Extendible three months longer at most by sect. 3 of Act of 1885. (m) Sect. 9, sub-s. 4. {v) Sect. 9. (w) Sect. 10, and Patents Hules, 25, 26 (p. 338, posO- THE NEW AeT;5. 15 The protection afforded hy the acceptance of the complete speci- Patent rights fication is similar to that under the old law (x). From the date of ofc"om'' kte'^ acceptance until the sealing or expiration of the time for sealing specification, the patent the applicant lias tlie like privileges and rights as if a patent had been sealed at the date of acceptance, but he cannot institute any proceeding for infringement unless and until tlie patent is granted to him (//), and then only for infringements com- mitted after such acceptance (~). A patent will be sealed as soon as maybe, but not after the Time for seal- expiration of fifteen months or (in case of extension T)y the comn- !"" P"**"^^"*^ . -^ I (uow prac- troller {a) ) nineteen months from the date of application, unless ^ifc). delay is caused to the sealing by an appeal to the law officer in respect of it or by opposition to the grant (h). Where the sealing is thus delayed, further time may be given by the law officer [fj). If the api^licaut dies within the fifteen months (r) the patent may be granted to his legal [personal] representatives, and sealed at any time within twelve months after the death (h). The date of sealino- is put as of the day of [initial] application, although (as said before) no proceedings can be taken in respect of infringements committed before the publicatiou of the complete specification {//). Prior public user, want of utility, or an objection that the Opposition to invention is not properly the subject-matter of a patent, was formerly, but is not now, a ground of opposition to tlie grant, which can now be opposed only on the three grounds mentioned in the act (e). Tliese grounds must be either— (1) that the applicant has obtained the invention from the other party or from the person of whom the latter is the legal representative, or (2) that the invention has been patented in this country on an application of prior date, or (3) that an examiner has reported to the comptroller (x) Ante, p. 6. {y) Sect. 15. The provisional protection may bo considered as merged in the patent rights thus obtained. As to the time for sealing, see infra. The sealing may be delayed by opposition. (2) Sect. 13. («) If the comptroller allows extra time for leaving or accepting the com- plete specification (not exceeding one month and three months respectively), a further extension of four months is allowed for sealing in addition to the fifteen mouths (sect. 3 of Act of 18S5). {h) Sect. 12. ^ (c) Or nineteen months or later (if any) time for sealing. Such an exten- sion is probably to be implied in sect. 12. {(1) Sect. 13. (e) Lawson, 11, and cases there cited. rrarit. 16 INTRODUCTORY CHAPTER. that the specification appears to comi^rise the same invention as is comprised in a specification bearing the same or a similar title, and accompanying a previous application (.7). Notice of the opposition must be given at the Patent Office within two months from the date of the advertisement of the acceptance of the complete specification, and then b j the comptroller himself to the applicant {g) . At the end of the two months the comptroller will hear the case, and decide thereon subject to an appeal to the law officer {g). Evidence on oath may be taken at the hearing of the appeal (//). Contents of The form of letters patent given in the schedule to the new letters patent . , i i i p mi • (new). act differs m some respects from the old form (/). ihere is now no recital, as was formerlj^ the case, that the grantee believes the invention to be of great utility, as such recital was always ap- parently unnecessary [j). The term " patentee" is by recital made to apply to the grantee, his executors, administrators, or assigns. In the present form there is a recital that the inventor has by and in his complete specification particularly described the nature of his invention. Such a recital would necessarily not be inserted in patents granted before the act, as not only was the complete specification, if put in before the grant, not investigated at the office, as now is the case, but the grant might have been made before any complete specification was put in {k). It does not seem, however, that such recital, inserted on the strength of the report of the examiner as to the sufficiency of the specification, will make the insufficiency thereof no longer a ground for revocation (/). The operative part of the patent is substantially the same as before, except that the Channel Islands are omitted. Licences, or consents, or agreements to use the invention are to be under the hand and seal of the grantee, but it is not stated, as formerly, that such must be obtained beforehand (w). The conditions for making void the patent are substantially the same as in the old form, with the {g) Sect. 11. [h) Sect. 38. See Patents Eules, 1883, rr. 32—41 (p. 339, j.ost), as to proceedings in opposition to grants of patents. (?) See as to contents of old form, pp. 5, 6, ante. [j) See Hindmarch, 47. {k) See ante, pp. 5, 6, as to grant of former patents. {!) For present grounds of revocation, see sect. 26, and ^^osf, pp. 20, 21. (m) A verbal agreement in the nature of a licence wliicli had been acted on by both parties for some years, and under wliicli roj'alties had been paid, •was held to be a continuing licence [Crossley v. Dixon, 10 H. L. Cas. 293). See Chapter on " Licences," j^ost. TnE NEW ACTS. 17 following variations and exceptions :— As the patent cannot now Lo granted before the acceptance of the complete specification, there is, of course, no condition, as formerlj^ as to the non-filing thereof within the prescribed period. The present form finally provides that the patent shall be construed in the most beneficial sense for the advantage of the patentee. This is, in effect, the former provision of the like kind, but with the omission of the words " notwithstanding the not full and certain describing the nature or quality of the said invention, or of the materials thereunto con- ducing and belonging." These additional words were probably inserted to meet the case of the invention not being fully and certainly described in the patent itself ; for, before such form was used, it seemed the practice to insert the specification in toto in the patent by way of recital {n) . The duration of the patent, when sealed, is the full term of Duration of fourteen years from the time of application, subject to the payment ^''^*''''*' of the fees within the prescribed times (o), and to the other condi- tions in the patent itself (;;). The new act provides for the assignment of a patent for any Assignment place in or part of the United Kingdom and Isle of Man as effec- ri-htsTor a tually as if the patent were originally granted to extend to that ^st"'^*- place or part only {q). This is a new provision. Formerly, before the Act of ] 852, separate patents were granted for England, Scot- land, and Ireland. By that act patents for the entirety of the United Kingdom were only granted, but it was provided that (?0 Bythewood & Jarman, Vol. VII. 3rd ed. 1842, p. 480, who coufined the additional words to the patent itself, and not to the actual .specification, ■which, of course, stood on its own merits. See also Webs. 42, n. ; Ilindmarcli 72, 73, lOG. (o) As to what fees are payable, see second schedule to the act (p. 329, post), pegg and first schedule of the Eules of 1883 (p. 344, post), and of 1885 (p. 357, post). The second list appears to comprise the former, with additions. (See Eule 4, p. 335, post.) If default in pajTnent of fees is caused by mistake or inadvertence the comptroller may enlarge the time. (Sect. 17.) (/>) Under sect. 25 of the Act of 1852, patents obtained here for inventions Expiration of already patented abroad became void on the expiration of the foreign patent, foreign The new acts have no similar provision, so that it may be presumed that the P^*^"!^^' _.'j?j^ duration of a British patent granted under them, whether on an application BritLh ^' ° pending at or made since the commencement thereof, is unaffected by that of patents, any foreign patent for the same invention. See Lawson, pp. 140, 141 (notes to sect. 45), as to the effect of sect. 113, post, in respect of sect. 25 of the Act of 1852. {q) Sect. 36. M. C INTRODUCTORY CHAPTER. Assignments of shares, &c. in a jiatent. Amendments of specifica- tions by dis- claimer, &c. assignments of such patents might be made separately for each of the countries. As will be seen hereafter, not only the entirety of the patent and any undivided part or share therein, but also the entirety of the patent itself, so far as it relates to some distinct or separate part (if any) of the invention, can be assigned (y). The amendment of tlie specification, both before and after the grant of the patent, is not now restricted to mere rejection, as was the case under the former process of disclaimer (s). As amended, however, the specification must not claim an invention substantially larger than or different from the invention as claimed by the speci- fication before the amendment (/) ; but, with this exception, the amendment may be by way of disclaimer, correction, or explana- tion (u). The applicant or patentee (r) first obtains leave from the comptroller or (on appeal) the law officer to make the amendment. The application for leave is advertised in the Official Journal, and may be opposed on the hearing before the comptroller or law officer. The leave, when obtained by the applicant or patentee, is conclusive as to his right to make the amendment, except in case of fraud, and may be given subject to conditions (?r). Where any action for infringement, or other legal proceeding in relation to the patent, is pending, the foregoing provisions do not apply {x) ; but where the action or proceeding is for infringement or revocation of the patent, the owner thereof may, by order of the court or a judge in such action or proceeding, subject to terms (if any) as to costs or otherwise, be at liberty to apply at the Patent Office for leave to amend his specification by w^ay of disclaimer, and the trial or hearing may in the meantime be directed to be postponed (y). (r) See Chapter on " Assignments," ^wsi, p. 110. (s) See pp. 6 — 8, ante. (0 Sect. 18, sub-sect. 8. {u) Sect. 18, sub-sect. 1. (u) This term means the person for the time being entitled to the benefit of the patent, and is so defined by sect. 46. It does not seem, therefore, that the grantee, after he has parted with the whole of his interest, can disclaim or make any other amendment. See old law on this, pp. 6 — 8, ante. {iv) See sect. 18 generally for this and the preceding two statements. The specification must aj)parently be the complete specification, after accept- ance at least, as until then there is no publication from the office. (Sect. 10.) The comptroller or law officer is, no doubt, in imj^osing conditions, guided by the old practice as to disclaimers. See pp. 6 — 8, ante. {x) Sub-sect. 10. (y) Sect. 19. See Ftisee Vesta Co. v. Bryant and May (1887), L. E. 34 Ch. D. 458 (Kay, J.), and Bray v. Gardner (1887), L. E. 34 Ch. D. 668 (C.A.), as to the terms on which such an order has been granted. THE NEW ACTS. 19 Subject to such conditions to the contrary as may be imposed on Retrospective the applicant or patentee on his obtaining leave to amend the amwidraents specification, as before mentioned, it appears that amendments now jfoi^'^*'''^'^'^" have a retrospective effect. By sect. 19 of the Act of 18o2, no action could be brought for an alleged infringement committed before the filing of the disclaimer, unless with the leave of the law officer (~). Under the new act no such leave is required, but no damages will be given in any action in respect of the use of the invention before the amendment was made, unless the court is satisfied that the original claim of the patentee was framed in good faith and with reasonable skill and knowledge (a). The term of a patent may, in certain instances, on petition to Extension of the Queen in Council, be extended for the benefit of the patentee pau^nt. or his assigns {b). ■ The extension will be granted as a matter of favour and not of right {b), and mainly on the ground of the extraordinary merit of the invention and the inadequate remunera- tion already afforded to the inventor therefrom (c). This was the old law (d), and in the absence of provision to the contrary in the new act, must no doubt still prevail. It is however provided by the new act (c), that the Judicial Committee of the Privy Council, in considering the application, are to have regard to the nature and merits of the invention in relation to the public and to the profits made by the patentee [or his assigns] as such, and to all the circumstances of the case. The intention to apply must be adver- tised six months at least before the expiration of the term (./'). The committee will hear the petitioner and any person who opposes the extension or theu- respective counsel (/'). The extension will not be for more than seven years, but in exceptional cases the committee, in lieu of extending, may order a grant of a new patent " for the term therein mentioned," and containing such restrictions, conditions, and provisions as the committee may think fit (y). (z) Seo ante, p. 7, as to this. (rt) Sect. 20. (6) See sect. 25. (c) See Adair's Patent, L. E. G App. Cas. 178. ((/) See Pitnunis Patent, L. E. 4 P. C. 87 ; also TlonibaWs Patent, 9 Moo. P. C. C. 393; MarkwicFs Patent, 13 Moo. P. C. C. 313; Derosne's Patent, 2 Webs. 4 ; and Norton's Patent, 1 Moo. P. C. C. N. S. 339 (all cited iu Lawson, 34). (e) Sect. 25, sub-sect. 4. (/) Sect. 25, sub-sect. 1. [g) Sect. 25, sub-sect. 5. c2 20 INTRODUCTORY CHAPTER. Rules of procedure and practice for regulating proceedings on such petitions may be made from time to time by the Uueen in Council ; and, subject thereto, the procedure and practice of the Judicial Committee, as existing at the commencement of the act, is to prevail {//). Revocation of Patents were formerly liable to be revoked or declared void on patents. ^ account of fraud, false suggestion, non-compliance with the con- ditions, failure of any of the essential requisites of novelty and utility, or abuse of the privileges granted by the patent (/) . Under the new act (J) every ground on which a patent might, at the commencement of the act, be repealed by scire facias, is available by way of defence to an action for infringement, and is also a ground of revocation. In construing this provision, however, allowance must be made for the changes made in the proceedings to obtain patents. Under the old law, as we have seen {k), there was no investigation at the Patent Office of the merits of the com- j)lete specification before the grant was made, and the patent was void if such specification turned out insufficient. Proceedings by a process called scire facias (/) were the means to repeal the patent in such event. In the present form of a patent, there is no recital of the result of the investigation, except as to the specification having particidar/// described the nature of the invention. This "particular" description is perhaps little (if any) more than what is required for a provisional specification (;«), and does not include the further requirement of a complete specification, namely, that it should " particularly describe and ascertain .... in what manner it [the invention] is to be performed" {n). As, also, the act does not make the acceptance of the complete specification conclusive {h) Sub-sect. 6. No rules have been made under this provision. See the rules existing at commencement of the new act, and which are still in force, post, Ai:)pondix, p. 362. (?) Webs. 32 ; Lawson, 45, (y) Sect. 20, sub-sect. 3. {Jc) Ante, p. 5. (?) As to the practice upon writs of scire facias, see Hindmarch, 376 ; Norman, 194. {m) By No. 10 of the second set of Rules and Eegulations under the Act of 1852, the provisional specification was to state distinctly and intelligibly the whole nature of the inyention, so that the law oflficer might be apprised of the improvement, and of the means by which it was to be carried into effect. This must be read in connection with the decisions in the cases mentioned at p. 4, ante. (H)^ec se^t. 5. -,.„v^3-<- ^^!^ -^ THE NEW ACTS. 31 as to its sufficiency, it seems that the insufficiency of the specifica- tion would now be a ground of revocation, as it was before the act. It is suggested (o), however, that as by sect. 33 this form is not compulsory, and by sect. 116 the prerogative of the Crown in relation to the grant or withholding the grant of a patent is saved, the Crown may insert a condition making void the patent in case of the insufficiency of the specification. Shoidd this be the case, and the courts decide that the acceptance of the specification is conclusive as to its sufficiency in an appUcation for revocation, the form of a patent would probably bo changed so as to insert this condition (p). The old proceeding for revocation by scire facias is abolished. Revocation • 1 ••ii.i i./\mi "*^^ ^y peti- and the present remedy is by petition to the court ((?}. ine tiononly; Attorney-General in England or Ireland, or the Lord Advocate in ^'^o may Scotland, or any person authorized by any one of them, may be petitioners. Without such authority, however, any other person may be a petitioner who alleges — (1) fraud in the obtaining of the grant against his rights or those of any person through whom he claims, or (2) that he or any such person was the inventor, or (3) that he or any person through whom he claims an interest in any trade, business, or manufacture, had publicly manu- factured, used, or sold within this realm, before the date of the patent, anything claimed by the patentee as his invention (/•). Where a patent has been revoked on the ground of fraud, the comptroller may, on the application of the true inventor, grant him a new patent of the same date as that of the revocation, which shall cease on the expiration of the term granted by the revoked patent (.v). (o) Lawson, 131 (note to sect. 33). {p) The late Mr. J. J. Aston, Q.C., in his work on the new act (Introductory- Chapter), considered that this acceptance of the complete specification at the Patent Office would be conclusive as to its sufficiency ; and (p. 41) that the law officer may be said to settle the specification. The Messrs. Johnson (Pat. M. p. 112) have the same opinion. Mr. Seward Brice (p. 20) and Mr. Munro (p. 9) have a contrary view. Mi-. T. Aston, Q.C. (p. 12) is inclined to think that the official examination woxild ensure the sufficiency as regards the descrip- tion of the modus operumli. (7) Sect. 26. The coiirt is the Iligh Court of Justice in England, subject to the provisions for Scotland, Ireland, and the Isle of Man. (See sects. 107—112.) (r) Sect. 26, sub-sect. 4. See sub-sects. 5, 0, 7, as to delivery of particidars, evidence, &c. (s) Sect. 26, sub-sect. 8. In In re Avery's Patent, W. N. 22 Jan. 1887, 22 INTKODUCTORY CHAPTER. Compulsory licences. Secretary for War may hold certain inventions. Inventions and specifica- tions kept secret. New acts, how far ajjplicablo to patents and proceedings existing or pending at commence- ment. Compulsory licences may, on tlie petition of any person in- terested, be ordered to be granted by the Board of Trade in respect of a patented invention, where, by reason of the default of the patentee in granting licences on reasonable terms, one or other of the following circumstances occur. These are — (1) that the^ patent is not being worked in the United Kingdom, (2) that the reasonable requirements of the public with respect to the invention cannot be supplied, or (3) that any person is prevented from working or using to the best advantage an invention of which he is possessed (0- The order maybe for the grant of licences on such terms as to the amount of royalties, security for payment or otherwise, as the Board having regard to the natui-e of the inven- tion, and the circumstances of the case, may deem just, and any such order may be enforced by mandamus (/). These provisions do not apply to patents granted before the commencement of the act, or on applications then pending (;u). Inventions of any improvement in instruments or munitions of war may (either with or without consideration) be assigned to the Secretary for "War, who, after such assignment, may before any application for the patent or publication of the specification certify to the comptroller his opinion that the particulars of the invention and manner in which it is to be performed shall be kept secret (v). After such certification, the specification and drawings (if any) and other documents relating to the invention are delivered to the comptroller in a sealed packet and kept so sealed by him for the term of the patent that might otherwise have been granted, subject to the orders of the Secretary of State or law officer («•). Patents existing at the commencement (1st January, 1884) of the act, or since granted on applications then pending, are governed by its provisions, including those relating to the amount and time of payment of fees, but excepting those relating to patents binding the Crown and to compulsory licences (;?). Pending applications p. 10, Stirling, J., lield that an attorney under a power could not petition for revocation in his own name, and also that all persons interested in a patent must be parties. (<) Sect. 22. See Tatents Eules, 1883, 57—63, pp 341, 342, posf. [it) Sect. 45, sub-sect. 2. Iv) Sect. 44. {w) Ibid., and see same section for other provisions for the purpose of preventing publication of any such invention. (x) Sect. 45; and see also sect. 113. As to the expiration of foreign patents making void the British patents, see ante, p. 17, n. THE NEW ACTS. 23 for disclaimer or extension are probably governed by the old law {//). Questions on these and other pentling matters are no doubt, however, at this lapse of time, almost or entirely dis- posed of. The registers under the old practice are to be deemed parts of RogLstration under new the same book as the Eegister of Patents under the new act [z). practice. The practice of registration, however, is considerably altered. Formerly (a), entry was made of documents themselves. Now, entries are to be made of the names and addresses of grantees of patents, and notifications [only] of assignments and of transmis- sions of patents, of licences under patents, and of amendments, extensions and revocations of patents, and such other matters affecting the validity or proprietorship of patents as may from time to time be prescribed (b). The register is prima facie evidence of any matter by the act directed or authorized to bo inserted (b). No notice of any trust, expressed, implied or constructive, can be entered on tlio register or receivable by the comptroller (c). Further, the person for the time being registered as proprietor of any patent shall, subject to any rights appearing from the register to be vested in any other person, have power absolutely to assign, grant licences as to, or otherwise deal with the same, and to give effectual receipts for any consideration for such assignment, licence or dealing, but equities may be enforced as in respect of any other personal property {d). The documents, notifications of which, as affecting the pro- "^^^lat doou- . nionts may bo prietorship of patents, may be entered on the register, must be notified on the such as confer legal interest or rights. At least this seems the ° effect of sects. 85 and 87 {r) ; so that a mere beneficiary can hardly under the former section be the registered proprietor of a patent or licence who, as mentioned in the latter section, has power to assign or otlierwise deal with it. Executory agreements. (y) Sect. 113 seems to show tliis. The word " applicatiou " iu sect. 45 means " application for a patent." The like word in sect. 113 lias the more general meaning. (z) Sect. 114. (a) Ante, p. 8. (Z>) Sect. 23. (c) Sect. 8(5. {d) Sect. 87. (e) This is Mr. T. Aston's view. See p. 65 of his work. The same inter- pretation is put xipon the above sections at the Patent Office. 24 INTRODUCTORY CHAPTER. therefore, as sucli cannot be registered. Licences, or agreements under seal having the effect of licences, can, perhaps, be registered^ although they were executed before the patent was sealed, as the limited patent rights obtained before the sealing will form part of those granted by the patent itself, and the prescribed form of a patent (/) does not restrict the date at which the consent, licence or agreement may be given by the patentee. As to agreements between co-applicants or co-patentees stating the terms on which they, working separately, shall respectively use the patent rights, it is presumed that they are fit subjects for registration, on the ground that they amount to licences between the parties {g) . It is presumed that no instrument executed before the actual date of the sealing of a patent, and purporting to be an assignment thereof, or of some share or interest therein, will amount to an assignment of a legal estate or interest, so as to admit of registration. This seems to result from the circumstance that the purported assignment would be inconsistent with the terms of the patent, and that no legal grant can be made of property of which the grantor has neither an actual nor a potential ownership at the time of grant {It). It does not seem that any other documents executed before a patent is sealed can be registered, except the licences and agreements above mentioned, and the legal assurances of any such instruments (/) . Rectification By scct. 90 of the new act {J), provisions are made for the recti- by expunge- fication of the register and the expungement or varying of any ment, &c. entry injurious to the rights of any persons as the court may think (/) Post, p. 48, Form 1. {g) It has been stated at the Patent Office that after the grant has been duly recorded documents executed before the sealing of the patent, and even during the period of provisional protection, which give any legal rights or estate in a patent, may be notified on the register. Mr. Lawson intimates (p. 30) that it was, and presumably woiild be, the jjractice not to register documents affecting provisional specifications onli/. This opinion does not, perhaps, apply to licences and agreements above mentioned, which are intended to extend beyond the period of provisional protection. {h) See Millar's Bills of Sale, 3rd edition, 1871, pp. 36—38 (and also 4th edition, 1877), citing Grantham y. Ilawley (1 Hobart, 132), and Bacon's 14th maxim and comments thereon, and the remarks of Tindal, J., in Lunn v. Thornton, 1 C. B. 379. An intended assignee of the above kind should become a co-applicant by amendment. See ante, p. 12, and post, p. 29. (i) As to registration of assignments and mortgages respectively, see also pp. 132, 133, post. {j) Post, p. 322. THE NEW ACTS. fit. No case appears to be reported in connection with tliis section. As these provisions are practically of the same nature as those under the Act of 1852 (/.) in the above respect, it may be well to take notice of some of the legal decisions under the old law relating to the latter provisions. In lie Greenes Patent (/), a patentee in 1853 assigned the patent to persons who did not at first register the assignment. A new assignment of the patent was made in 1855 to the fatlier of the patentee for valuable consideration, who there- upon registered his assignment before the first assignees registered theirs. On the application of the latter, the first entry was ordered to be expunged (m). In iic Morofs Patent the facts were nearly similar, except that the first assignment was only of a moiety of the patent, and it was held that a subsequent assignee from the patentee had constructive notice, on account of the recital in his deed of assignment, of the prior interest, although it was therein described merely as a licence. The entry of the second assignment was not ordered to be expunged, but the court directed that a statement should be entered on the register that the licence referred to was actually the assignment in question, and refused to direct a statement to be entered to the effect that the second assignee had had notice of the first assignment, as the notice was only con- structive. "Where a deed is good and Jjond fide^ it would seem that no entry could be made on the register qualifying its effect, or giving it a construction (;/). According to this rule, it was held that the entry of a deed of assignment of his half share by one co-patentee, who thereby also purported to release his assignee from all claims by himself and the other co-patentee, should, on the application of the latter, be expunged, as the deed could not be altered (o). {k) Sect. 38. (/) 24Beav. 145. (?7i) In the report of that case it does not appear that the second assignee had any notice, express or constructive, of the prior assignment ; but, in 7?e Morey'a Patent, 25 Beav. 583, the decision in Re Green's Patent was treated as having been based on the fact of fraud, to which the second assignee was privy. (?i) ^e Morey's Patent, supra, as cited in Lawson, 18G; and see Pe JIvrsIeij and Kni(jJiton's Patent, L. K. 8 Eq. 475. (o) Be Horsley and Knighton''s Patent, supra. 25 2Q CHAPTER ON AGREEMENTS. TAGE Principal matters in the precedents of agreements 26 Disclosure and trial of the i7ivention ; confidential communications of a secret inventio7i 27 Amendment of application by making lender or purchaser a co- applicant • 29 Interest on a loan according to net profits of a patent ; effect of bank- ruptcy of inventor ; interest equal to share in net profits and not in specie 29 Loan to patentees, only repayable out of net profits and not per- sonally 31 Accounts 33 Improvements or additions to an invention or discovery of other pro- cess ; for tohat imjjrovements pateiits can be obtained 33 Colonial and foreign patents ; International Union 36 Sale of patent on the hire system 37 Some points in general law of contracts note to be noticed; requisites of a simple contract ; agreement by deed; estoppel 39 Specific performance of contracts generally ; specific performance of contracts for sale of patents; specific performance of agreements for lending and borroioing money 41 Rescission of contracts ; no apportionment of entire contract 44 Principal The precedents of agreements given herein relate cliiefly to the matters in tbe ^ ^^ • ll precedents of foUowmg matters :— 1. The advance of moneys by way of loan in order to defray the expenses of taking out a patent, and to provide capital for working it(«). 2. The advance of moneys hy way of ^mrchase of an interest in a patent in order to defray the expenses of taking out the same, which one of the parties is to work for the benefit of both {h). 3. An arrangement of the terms and conditions on which joint (a) Agreements I. and ///., jiost, pp. 59, 67. (h) Agreement II., p. 64, 2^ost. Wliere the parties are to work togetlicr a partnership deed should be entered into. See a precedent of such a deed in Agreement XIV., p. 99. AGREEMENTS. 27 applicants for or grantees of a patent may each separately work it {c). 4. The sale of a patent or share therein (before or after grant) for cash payable at once or by instalments, or shares in a com- pany {(l). 5. The employment (by way of licence) of the vendor of a patent to manufacture or sell the patent ai-ticles for tlie purcliaser (e). 6. The supply by the vendor to the purchaser of the raw material for manufacture of the patent articles or commodities (/). 7. The sale of a patent on the hire si/sfon (so to speak) that is, where an exclusive licence is granted until payment of the whole consideration (fixed sums or royalties) and then (if necessary) a formal assignment is to be executed (g). 8. An arrangement of the terms and conditions on which a licence is to be granted (//). 9. The formation of a syndicate to purchase a patent and re-sell it to a company or otherwise (/). 10. The appointment of an exclusive agent for a district to sell patent articles (J). As the chapters on assignments and licences, 2)osf, and the foot- notes to the various clauses in the precedents of these agreements deal with much of the subject-matter contained in the latter, the observations in this chapter are intended to be mostly of a general nature, and applicable not only to agreements so called, but also to other instruments dealing with patents. In an agreement for the advance of moneys to an inventor in Disclosuro relation to the invention, it is usually provided, in case the other the iuvcntion party has not abeady satisfied himself as to the probable worth or Coiifidcntial comniuiiica- success of the invention that a full disclosure and trial of it shall be tions of a made before any money is advanced. Such a provision, though ^^^^^ mAcn- inserted as part of the agreement, is, of course, only introductory to the agreement proper, and, in the case of an intended loan (c) A(/rcements IV. and VIII., pp. 70, 82. {d) Agreements IV., V., VI., and VII., pp. 70 — 70. (e) Agreement IV., p. 70. (/) Agreement IX., p. 84. {g) Agreements XI. and XII., pp. 89, 93. {h) Agreements IX. and A'., pp. 84, 87. (t) Agreement XIII., p. 9G. {j) Agreement XV., p. 104. 38 AGREEMENTS. merely, would not be binding (/»•). This provision is generally supplemented by anotber to the effect that the person to whom the invention is thus to be disclosed, shall not, except for the purposes of the agreement, make use of the invention, and also (in case the complete specification has not been accepted) (/) communicate the secret of it to any one, without the written consent of the inventor. This reference to communication is not, however, strictly essential, although its insertion will form evidence of the intention of the parties. The true ground on which the inventor would be entitled to restrain the other pai-ty from unnecessarily divulging the secret of the invention, is that the communication of it was made to the other party strictly in confidence. The law on the subject of the ownership and communication of an unpatented invention may be shortly stated as follows. An inventor has no right, independent of a grant made to him by the authority of a positive law, to prevent other persons from using an article or making any particular appli- cation of the laws of nature, merely because ho was the first person to discover the article or application ; therefore the law does not recognize any right or property whatsoever in an invention which is not made the subject of a grant by patent {in). Thus, in Neichcyy v. James (ii), the court refused to decree specific performance of a contract to sell a secret invention which had been the subject of a patent long since expired, or to grant an injunction to restrain its disclosure. Where, however, under an agreement by the defendant with the inventor not to avail himself of communi- cations made to him respecting the invention which was to be made the subject of experiments by the two parties with the view of obtaining a patent for the invention, the defendant fraudulently obtained the patent in his own name, the inventor was held entitled to damages for the breach (o). An exception to the rule against the existence of a right of proprietorship in a mere secret invention, not (as a matter of course at least) intended to be patented, occurs in any case where the disclosure of the secret would involve a (Ic) That is from -^ant of consideration, unless the agreement were under seal. See post, pp. 40, 41, as to simple contracts and contracts under seal. (Z) See sect. 10 of the new act, j^ost, p. 310, as to publication by the office after the acceptance ; also ante, p. 14. (m) Hindmarch, 228. In) 1 Carp. P. C. 368. (o) Smith v. Dickenson, 3 Bos. & Pull. 630. AGREEMENTS. 29 breach of faith or trust. Thus, in Morison v. Moaf (;^), a party who has a secret in trade, and employs persons under contract or duty, express or implied, can restrain them from setting up their knowledge against the employer. The employers may have no title against the world in general, and yet a good title against the defendant ((/). The next provision to be noticed, in any case where the patent Amendment ^ 7 ^ ^ , * (jf application has not been obtained, is that iov obtaining it in the joint names by making of the parties. It is an undoubted advantage to a purchaser or a purchasor a lender, pending the application for the patent, to be made an co-appUcant. applicant and afterwards a grantee jointly with the inventor, as thereby ho is, to a great extent, protected from dealings with the patent behind his back (r). As before mentioned (s) the applica- tion can be amended, by adding the names of other persons as co-applicants. In the case of an agreement for a loan the lender, on the first advance being made, would properly claim to be made a co-applicant at once (/). In the case of a purchase, however, a vendor (the inventor) can hardly be advised to make the purchaser a co-applicant, so long as any considerable part of the pui'chase- money remains unpaid, especially as it might take time, trouble and expense to oust him from the position, in case be should fail in his engagement. As the acceptance of the complete specifica- tion is the crucial point in the proceedings, after which the patent can, unless there is opposition [u), be easily obtained, it seems advisable that provision should be made for the payment of a considerable portion of the purchase-money shortly after the fact of acceptance is notified to the pui'chaser, and that, on such pay- ment, the purchaser should be made a co-applicant. The amount of interest on money lent to an inventor who gives Interest on a •^ _ '-' loan according no security, except the patent itself, is generally made to depend, to net profits to some extent at least, on the amount of the net profits derivable (p) 20 L. J. Ch. 513; affirmed on appeal in 21 L. J. Ch. 248. {<}) Per Turner, V.-C, in same case. See also Morgan v. Seaward, 2 Moes. & Wels. 544 ; Fatterson v. (>as Light ifcc. Co., L. R. 3 App. Cas. 239. (r) As to the powers of each co-owner of a patent working separately, sec Chapter on " Assignments," post, pp. 118, 119. As to licences before grant, see p. 24. (s) Ante, p. 12. {t) As to the specific performance of contracts for lending and borrowing money, see jiost, pp. 43, 44. («) See sect. 11 of the new act. By that section, notice of opposition must be given within two months of the date of the advertisement of the accept-^ ance. 30 AGREEMENTS. from working the patent. It may not, perhaps, be desirable to give the mortgagee a fixed share of the net profits as interest, as the latter may, when portions of the loan have been repaid, be of excessive amount compared with that of the principal moneys remaining unpaid. It therefore seems best to provide for the payment of a fixed percentage of interest, and a further interest (also at a percentage) which shall not exceed a fixed share of the profits for the time being (v). The mortgagee, by receiving interest dependent on the amount of net profits, is not rendered liable as a partner with the inventor in the business of working the patent, although he may be held so liable on the construction of the agreement as a whole {ic) . EfPect of On the bankruptcy of a mortgagor, the rights of the mortgagee oHnventor. as to his security are in no way aifected by sect. 5 of the Partner- ship Law Amendment Act, which forbids competition by a creditor, the interest on whose debt has been made payable out of or by reference to the net profits of the business, with the general creditors {x). If, therefore, the interest provided to be paid be of the double nature above mentioned the mortgagee can, on the bankruptcy of the inventor, recover as far as may be out of the mortgaged patent his principal and the first above-mentioned fixed interest, and also, it is presumed, the arrears (if any) up to the commencement of bank- ruptcy of both kinds of interest. By sect. 5 of the Partnership Law Amendment Act (y), as read with the decision in Ex ^j^rr^e Sl/iel (see above), the mortgagee cannot compete with the other creditors, as to the assets not comprised in his security, in respect of any principal or interest. It seems hopeless to contend, how- ever, that under the above-mentioned arrangement as to the pay- ment of two kinds of interest, the total interest is not one varying with the profits. (v) See Agreement I., Clause 7, 2^osf, p. 61. {tu) See Partnership Law Amendment Act, 28 & 29 Vict. c. 86 (1865), Appen- dix, post, p. 368 ; and on tlie general question of liability as a partner by a person staring the net profits of a business, see Lindley on Partnersbip (4tli ed. pp. 33—54) ; MoUwo, March & Co. v. Court of Wards, L. E. 4 P. C. 419 ; the observations of Jessel, M.E., in Pooley v. Driver, L. E. 4 Ch. D. 458; and Ex parte Tennant, In re Howard, L. E. 6 Ch. D. 303 ; In re Stone, L. E. 33 Ch. D. 541 (Kay, J.); and BadeJey v. Consolidated Bank (1886), L. E. 34 Ch. D. 536 (Stirling, J.). See also Exparte MacmiUan, In re Whittuker, 24 L. T. N. S. 143 ; Elsie v. Webster, 5 Mees. & Wels. 518. [x] Expjarte Shiel, In re Lonergan, L. E. 4 Ch. D. 789. See sect. 5 of tho Partnership Law Amendment Act, j^ost, p. 368. [y) 28 & 29 Yict. c. 86, Appendix, 2^ost, p. 368. AGREEMENTS. 31 In view of tlie construction -whicli tlie court might, adversely to Interest equal a lender, put upon an agreement so as to hold him liable as a ^^ru^tJ,^am\^^ partner, it seems safer, in his interest at least, not to give him as ""* ^^ ^P^^'^- interest a share of the net profits in specie, hut some percentage on the principal moneys dependent on the amount of net profits, as above mentioned (z). Cases of loans to persons in business, who are only to repay the Loan to pa- moneys out of the net profits of the business witliout otherwise repa}^ble"out incurring any personal liability, are probably of little occurrence. and"not^'^?r-''' "Where the sums advanced are also charged on the assets of s<^iially. the business, the limitation of tlie responsibility of the borrowers is somewhat similar to that of a limited joint stock company (not its members) with regard to its creditors. In framing an agree- ment for a loan of this kind, the risk of the lender being declared a partner must, of course, in his interest be provided against. Tlie inability of the lender to obtain payment except out of his security, that is, the patent and the net profits (its fruits) will not, it is clear, of itself make the transaction other than a loan, so as to prevent the application of sect. 1 of the Partnership Law Amend- ment Act, 1865 (a). The lender should, therefore, see that no provisions in the agreement will be likely to put him in the position of a person carrying on business by the borrowers as his agents (b). Accordingly, no provision should be inserted binding the borrowers to carry on the business at all, or (except for the purposes of inspection of the books, and obtaining and verifying the accoimts) enabling the lender to have any voice in the conduct of the business. In the further interest of the lender, the advance of the money beyond perhaps an immediate sum (a small one) might be made by instalments conditionally as to each instalment on the results to him in respect of the previous advances having been satisfactory. A precedent of the above kind of an agreement for a loan to a fii'm, joint patentees of an invention, is inserted (z) See on this the cases of Mvllwo, March & Co. v. Court of Wards, and Ex parte Tennant, In reJIoivard, siqtra. (a) This act is set out in the Appendix, j'^ost, p. 368. {h) See Cox v. Hickman, 8 Ho. L. Cas. 2G8, whore scheduled creditors to n deed of arrangement, who wcro to bo paid their debts out of the profits of the debtor's business, were held not liable to debts contracted by the trustees in carrying on the business pursuant to the deed. See also MvUivo, March cO Co. v. Cijurt of Wards, supra; and Lindiey, Book I., Chap. I., Sect. 11., " Quasi-Partnorship." 32 AGREEMENTS. herein (f). It is there virtually provided that principal and interest shall, until the charge on the patent becomes enforceable, be payable out of one tJiii'd shave of the net profits half-yearly. The object of pledging a share only, is, of course, to prevent the stoppage of the business, which otherwise might occur. The mode of ascertaining the net profits should, if possible, be arranged prior to such an agreement being entered into, and the precedent contains a recital to the effect that the custom of the firm in this respect shall be adhered to {d). The payment of interest on all past advances is, of course, first to be made, and then the balance of the share is to go in reduction of the principal sum then remaining unpaid. The condition for the advance of an instalment at the end of any half-year is, that in the settlement of the accounts for that period, it shall be shown that the amount of the one-third share will admit of the lender receiving in reduction of interest and principal a sum equal to, or exceeding a certain per-centage on the latter {e) . The instalments are for convenience provided to be equal in amount. The charge on the patent is supplemented by a declaration of trust of the patent in support of the charge. A legal mortgage could, of coui'se, be executed and registered, but such an act would tend to expose to the public the financial state of the firm (/). The charge is made enforceable only on default of the firm in its obligations under the agreement, or, in case for any half-year the share of net profits, will not admit of the lender receiving his full interest at least on the principal sum then remaining unpaid. On the authority of Werdennann v. Society Generale d^£lectn'cite{g), it seems that the assigns of the patent, (c) Agreement III., j^jost, p. 67. {d) See note {h) to Agreement III., post, p. GS, for some observations on the mode of ascertaining net profits of a business. (e) E.g., let tho interest on tlie advances be 10 per cent, per annum, and the principal sum remaining unpaid at the end of any half-year (but before the settlement of accounts for that period) be 2007. If the minimum per- centage above mentioned be 30, and is then reached or exceeded, the lender ■will be entitled to receive 60Z. at least, i. e., lOl. half-yearly interest, and the balance in reduction of principal. In respect of the new advance, the lender will be credited with 501. at least. (/) See note (/) to Agreement HI., post, p. 69, as to this, and also as to the agreement being executed as a deed, and the effect of the declaration of trust. {g) L. E. 19 Ch. D. 246 (Jessel, M.E., and Lush and Lindley, L.JJ.). See reference to this case in the Chapters on "Assignments " and "Licences,'' and generally as to the question of covenants being binding on assigns, post, pp. 120, 185. AGREEMENTS. 33 taking with notice of the agreement, would be hound thereby as to the charge and the payment out of tlie net profits. To ensure such notice, it is provided that both the partnersliip deed and the letters patent shall be endorsed with a reference to the agreement. The right to a share of net profits confers a right to an ac- Accounts, count (//). The same is the case, no doubt, where the right is not to a share of net profits in specie, but to some sum or per-centage equal in amount to or regulated by the amount of a share in the net profits. An express right to an account is invariably given in the precedents in this work. Where a patentee has assigned a share of profits, the assignee is entitled to call on a licensee of the patentee for an account, but the assignee must make the assignor and the assignees (if any) of other shares of profits parties to the account, and offer to pay to the licensee any moneys due to him from the assignor (i). In Werdennann v. Societe Generak d' Ekdricite (A-) a covenant by an assignee of a patent that he and his assigns would pay the assignor a per-centage on the net profits, was held to be binding on the assigns who took with notice of the covenant, and they were ordered to furnish accounts accordingly. The term '' improvement " or " addition " used in respect of an Improve- invention plainly suggests the dependence of the improvement additions to or addition on the invention itself. An entirely new process, inde- o^di'iovlr ° pendent of the invention, might, however, be discovered as applic- o^ °^^^^ able to the production of articles or commodities similar to those produced by or with the application of the invention. To such process the term "improvement" or "addition" would hardly then be applicable. An agreement, therefore, to include present (if any) or future improvements or additions to an invention in the contract for sale of the invention should, in the purchaser's interest, be made also to include any such process, if the purchaser is to preclude the vendor from afterwards setting up a rival invention. The importance of including the benefit of the dis- covery of such an independent process in a contract for sale of an invention, and the patent in respect of it, is noticed in The Printing process. {h) Harrington v. Churchward, 6 Jur. N. S. 576 ; Rishton v. Grisselh L. E. 5 Eq. 326 ; Turney v. Bayhy, 4 De G. J. & Sm. 332 ; all cited in Lindley, 4th ed. p. 946. (?■) Bercjmann v. Macmillan, L. E. 17 Ch. D. 427. (A) Supra. Soo, as to covenants (including as to furnishing accounts) how far bmding on assigns, Chapter on "Assignments," jmt, p. 120, and Chapter on " Licences," jwst, p. 185. M. j5 34 AGREEMENTS. and Numerical Recjktering Company v. >S'rt;;^7;.soM (/), where Jessel, M.K., intimates that, in tlie absence of a provision to that effect, the inventor (or vendor) might produce something which, without being teclinkaUn an infringement, or technicalh/ an improvement, would practically destroy the value of the patent purchased. The inducement, however, to the inventor (or vendor) to make any new discovery might be much diminished if he is to part with the entire benefit of it, without at the mme time becoming entitled to some remuneration for his trouble {m). The best method seems to be to provide that the purchaser shall have the option of purchasing the exclusive benefit of the new invention at a fixed price, which would, no doubt, from the uncertainty involved, be a small one, and should be made payable if and when the purchaser exercised his option in writing within a reasonable time after the communication of the discovery shall have been made to him. The practice, however, has been to include new discoveries in relation to the patent articles, without providing for any special remuneration on the benefit of them becoming vested in the purchaser of the original invention. Sometimes the mere personal right to the vendor to use any such new discovery made by him is reserved in the contract. This would be done especially in a case where the vendor is at liberty personally to use the original invention, or generally to make the patent articles by any j^rocess whatever. An agreement by which the vendor and piu'chaser of the entirety of a patent will be put on equal terms as to the use of any discovery made by the former is hardly to be recommended on account of the unsatisfactory position, inter se, of joint owners of a patent who are separately to Avork it (»)• If the new invention should be patented, a partition of it as to districts might be made, or a licence to use it be granted by the inventor to the other party. The case of new discoveries by either a licensor or a licensee being made to enure also for the benefit of the other of them, is considered in the chapter on " Licences " (o). The above remarks [l) L. E. 19 Eq. 464. (m) In. The Printing and Numerical Registering Co. v. Sampson, supra, Jessel, M. E., refused to assume as an absolute truth that a man will not invent without pecuniary reward, or that, having obtained money for the future products of his brain, ho will not be ready to produce those products; and mentions artists and sculj^tors by way of illustration. (?i) See Chapter on "Assignments," post, pp. 118—122, as to powers of co-owners separately working; and also Precedents HI. — VI. of Assign- ments, post, pp. 142 — 156, (o) Post, p. 218. AGREEMENTS. '35 will equally apply to now discoveries acquired, but not made, by the vendor. "Where a new discovery is to be included in the purchase of the original invention, the benefit of it can, of course, be made effectively to pass only so far (if at all) as the terms of the acquisition will permit (p). In the case of a joint discovery by the vendor and a third party, which is intended to be patented, the joint inventors would probably be bound, by force of the agreement above mentioned, if they effectually apply at all, to join the purchaser, if so willing, in the application for the patent, or otherwise the grant to the joint inventors would be made upon the terms of being vested in trustees for all parties (q). In the case of an agreement relating to a patent, otherwise than for the sale of the entirety of it, the above remarks as to special remuneration for any new discovery have apparently much less application, because, in general, each party would be entitled to some benefit from the original invention, and the question as to the want of inducement to make any new discovery would be of far less account. Hence, on an assignment of a share of a patent, or of the entu-ety of the patent for a district, or on the grant of a licence, or generally, where both parties remain interested to some extent in the original invention and patent, a mutual covenant should be inserted in the instrument providing for the use by both parties of new discoveries made, and perhaps acquired, by either of them, whether patented or not. A patent for an addition or improvement to an old manufacture For what . improvements may be granted {>•), but the patentee cannot make use oi the patents can subsfrafi(m, or original invention, patented by another person, on *^ ° which the addition or improvement was based or dependent (.y), except by license from him (/) ; but he may wait for the expiration of the existing patent, and then take out one himself, if his invention be novel, and that patent will be valid {ii). Where {p) See ante, p. 27, as to confidential communications of a secret invention. (arte Scott and Young, L. E. G Ch. 274 {ante, p. 12), as to conflicting claims of master and servant. The mode, generallj', of satisfying the claims of another person than the applicant's, would probably bo similar to that provided in one or other of these cases. (r) Boulion v. BuU, 2 II. Bl. 489; and Ilornhhu-er v. BonUvn, 8 T. E. 104, overruling Bircofs Case, 3 lust. 184. (s) Ex parte Fox, 1 Webs. 431. {t) Lister v. Leather, 8 Ell. & Bl. 1017. («) Per MaUns, V.-C, in Fox v. Dellestalle, \b W. E. IOj. d2 36 AGREEMENTS. Colonial and foreign patents. International union. application for a patent for an improvement or addition is made, it must be stated in the specification as being of sucli a nature, and not as an original {i.e., an independent) invention, and conse- quently the old process or manufacture on which the improvement or addition is to be grafted must be set out (.r) . The discovery of a more skilful and efficient mode of working a process already known and in use, is not the proper subject of a patent {//). With regard to agreements relating to the purchase of colonial or foreign patents, but subject to the provisions of the Inter- national Convention as mentioned later, the following circum- stances, some of which, at least, apply to most of the colonies or foreign countries, should be noticed : — (1) The inventor himself only can apply for a patent. (2) The patent will become void if the invention is not put in practice within a limited time of the date of grant, or not continuously used. (3) The patent will become void on the non-payment of the annual or other duties. (4) The patented articles are to be made in the country itself, and not imported, and (in the case of Austria) the inventor must begin to work his invention with inland materials. (5) Publication in the United Kingdom, or elsewhere out of the country, is a bar to obtaining the patent (z). (6) A foreign or colonial patent expires (at least) when the British patent expires. It should be seen also (as in the case of Denmark) that the patent is assignable, as, if it is not, an application for a new one v/ould have to be made (a) . An International Convention for the protection of industrial property was, on the 20th day of March, 1883, entered into between the governments of Belgium, Brazil, Spain, France, Guatemala, Italy, Holland, Portugal, Salvador, Servia, and Switzerland (b) . Great Britain was not a party to this conven- (cc) See Hill V. Thompson, 2 B. Moo. 451 ; and Gibson v. Brand, 4 Man. & Gr. 179. {y) Patterson \. The Oas Light and Coke Co., L. E. 3 App. Cas. 239, affirming Court of Appeal in L. E. 2 Ch. D. 812. On tlie above subject, see Agnew, pp. 50, 67, 100 et seq., and 276, wbere the cases are set out at some length. (z) In that case the application should be made as nearly as possible simultaneously with the application here, and certainly before the acceptance of the complete specification here. (a) See as to the laws relating to foreign patents, Johns. P. M. (Appendix), and Carpmael's Patent Laws of the "World. As to international and colonial arrangements, see sect. 103 of the new act, post, p. 325 ; also sect. 104. (i) See Appendix, post, pp. 365 — 367, where the Articles and Protocol are set out. To the above countries must now be added Great Britain, Norway, Sweden, San Domingo, and Tunis, who have since joined. Salvador has since AGREEMENTS. 37 tion, but, under Article 16 thereof, agreed, by an Order in Council, dated the 17th day of March, 1884, to adhere to it, with the reservation for her Majesty to accede to the convention on behalf of the Isle of Man, the Channel Islands, and any other of her possessions, on due notice being given to the other govern- ments for the time being adhering to the convention (c). The principal provisions seem to be those which are in effect : (1) that the subjects or citizens of one state are in any other state of the Union to be placed on the same footing as to patents as the sub- jects or citizens of the latter state ; (2) that the registration of an application for a patent in one state will, for the period of six months, give a right of priority as to registration in any other state ; (3) that the introduction of the patent articles manu- factured in one state into the state where the patent has been granted will not entail forfeiture of the patent, but the patentee must work his patent in accordance with the laws of the country into which he introduces the articles ; and (4) that states which have not taken part in the present convention shall be permitted to adhere to it at their request. If a patent is to be sold, but the purchase-money, or a portion of Salo of patent it, is not to be paid at once, the arrangement is sometimes earned Astern out by means of an absolute assignment in which the whole pur- chase-money is acknowledged to be received, followed immediately by a mortgage executed by the purchaser to the vendor to secure the repayment of the moneys and interest (d). In order, however, for the vendor to avoid tlie troublesome position of a mortgagee, another plan can be followed, namely, the execution of an agree- ment for the sale of the patent on what may be termed " the hire system." An exclusive licence is granted by the' agreement to the purchaser imtil the time fixed for payment of the final balance of the purchase-money and the completion of the purchase, with provisions for the determination of the agreement by either party in certain events, such as the failure of the patent, or default in payment of any instalment. A provision is often inserted, similar to that in an agreement for the sale of a piano or fiirnitm-e on the hire system, to the effect that on default in payment of any one withdrawn. Ecuador joined and afterwards withdrew. See ^U-ticlo XTI., post, p. 3G6. Queensland has been added by Order of the Queen in Council (see above) as frona the 17th day of September, 1885. (c) Under this article Queensland was made a party. See last note. {d) This is, no doubt, the common conveyancing practice as to land. 38 AGREEMENTS. instalment the remaining ones shall at once become due. This provision, though somewhat modified, appears in the precedent of a licence given herein, which is intended to provide for a sale on the hire system (e). In the kind of agreement now under con- sideration, no such provision occurs, as, owing to the indefinite value of a patent at all times, a purchaser might he found to object to its insertion. Further, it may be found prudent to make the terms of purchase less onerous, in order to attract a purchaser. It is, therefore, pro- vided (./') that the only penalties for default on the part of the purchaser, except as to the last instalment, shall be the obligation also to pay interest, and liberty for the vendor to rescind. On de- fault in payment of the last instalment, the vendor is virtually to have the choice between specific performance and the rescission of the contract (g). Again, as from the amount of each instalment, the purchaser is to be supposed liable to pay at the commence- ment of each year somewhat (at least) in excess of the sum fairly chargeable for the use of the invention for that j'ear (regard being had to the duration of the patent), he is permitted to determine the agreement any time before the commencement of the last year. An exception is made of the last year, in order that the vendor may have time, before he makes up his mind (if at all) to have the piu'chase completed, to seek for another purchaser. On payment of the final balance of the purchase-money an assignment is to be executed. By construction of law, however, the patent would then vest, it seems, in the purchaser without any assignment, although such an assurance is of importance to the pm'chaser and should be required (h). The event of the patent becoming void, either by revocation or omission of the vendor to pay the fees or otherwise before the purchase is completed, is provided for by this form of agreement. In case no appeal shall be made against a judgment in revocation of the patent, all instalments not already due at the date of the judgment are to cease to be payable. Pending the appeal (if any) (e) Licence VI L, post, p. 26G, wliere tlie sale is to be for a district only. (/) Agreement XL, post, p. 89, where the sale is to be for the whole kingdora. (17) Independently of this provision, he could claim specific performance, or, in default, rescission. See Fry on Specific Performance, p. 458 (3rd ed. 1881). The last instalment mentioned above is intended to be the largest. {h) S>eep)Ost, p. 91, note (/), to Agreement XL AGREEMENTS. 39 and subject to the right of either party to determine the agreement as therein provided, the payment of every instalment not previously due is suspended, which payment is to revive on the appeal be- coming successful. It is provided also that the final cesser of payments, as above mentioned, shall be in lieu of damages (if any) payable to the purchaser by reason of the patent becoming void. The right to these damages, however, will depend upon the nature of any covenant by the vendor as to the validity of the patent, or his liability to pay the fees or to defend the patent. In the precedent now under consideration, the liability of the vendor in respect of the validity of the patent is to be as to his own acts or defaults, which must necessarily be such as relate to the payment of the past fees, or performance or observance of the other conditions of the patent, and not to the novelty or utility of the invention (/). In the same precedent the vendor covenants to pay the future fees up to the completion of the purchase, or permit the purchaser to do so, and deduct the sums paid from the purchase-money, and also to defend the patent in proceedings for revocation (J). A sale on the hii'c system might also be effected by the agree- ment imposiug royalties for the use of the invention, which, when amounting in the aggregate to a certain sum, shall, after payment thereof, entitle the purchaser to an assignment of the patent. The form of such an agreement is given in the precedents (/i). The difference in the forms of the two kinds of agreements mentioned in this paragraph is mainly that duo to the difference in the con- siderations for the purchases. The same observations "v\ill, there- fore, mainly apply to both parties. The power of the vendor to rescind as contained in the later form is, however, more stringent than that in the earlier one. As the licensee may be lax in working the patent, and thus pay few or no royalties, the vendor is given a right to rescind on default not only in pay- ment of royalties due or breach of other conditions after notice to repair the same, or on bankruptcy, but also in the event of his not in any half-year manufacturing patent articles to a certain quantity. It is now proposed to note S(mie of the principal points in the Some points in general law (i) See2'>os(, p. 114. (y) Soo Chapter on " Licences," post, pp. 196, 190, as to covenants in an cxcluisivo licence wliere premiums are to be paid with or without royalties. {k) Agreement XI /,, post, p. 93. 40 AGREEMENTS. of contracts now to be noticed. Requisites of a simple contract. Agreement by deed. Estoppel. general law relating to agreements or, as they are often called, contracts (/). A good and valid consideration is a requisite for a simple con- tract, and, it appears, must be disclosed in the document itself, if the contract is in writing («?-), as nothing not found in the document can be considered as part thereof (n). Parol evi- dence, however, is admissible to explain latent but not patent ambiguities in a document (o). Sect. 4 of the Statute of Frauds requires agreements that are not to be performed within the space of one year from the making thereof to be in writing. Such an agreement must be one which, from its terms, appears incapable of performance within the year; but the possibility of such performance will take it out of the operation of the section (i)). If, however, it appears from the terms that one party can perform his part, the statute does not operate {q). Where a verbal agreement in the nature of a licence had been acted on for some years by both parties and royalties had been paid there- under, it was held a valid and continuing licence (r) . An agreement by deed has a superior efficacy, as between the .parties thereto, over a simple contract, both on account of the almost absolute completeness of the consideration which, in general, is to be implied therein (s), and also of the doctrine of estoppel next noticed {f). Estoppel arises where a man is concluded by his own act or acceptance to speak the truth {u). Estoppel by writing does not (/) For the general law, see Chitty on Contracts, Addison on Contracts, Pollock's Principles of Contracts, &c. (7rt) Eden \. Blake, 13 Mee. & Wei. 614 ; and LocMt v. NicMin, 2 Exch. 93, cited in CHtty, 1 1th ed. p. 65. (ji) Kain V. Old, 2 Barn. & Cress. 627 ; Chitty, 107. (o) Chitty, 101, 102. Ip) Williams on Personal Property (Chapter on " Contracts") ; Pollock's Principles of Contracts, 4th ed. p. 160. {q) Donellan v. Heid, 3 Barn. & Adolph. 899 ; Cherry v. Ileming, 4 Ex. Eep. 631. See notes to Peter v. Cor>ipto7i, 1 Sm. L. Cas. 335 (7th ed.). (r) Crossleij V. Dixon, 10 H. L. Cas. 293. As to verbal and other licences not under seal, see Chapter on " Licences," ^osi, pp. 184, 187 — 189. (s) The exceptions -will be mostly in case of fraud or as to voluntary settle- ments, &c. under 13 Eliz. c. 5, or the bankruptcy laws. (t) The precedents of agreements given herein are to be treated as being of simple contracts, unless the contrary is stated in any footnote thereto respectively. {u) Co. Litt. 352 a ; Com. Dig. Estoppel A. AGREEMENTS. 41 arise in the case of a simple contract (x). Strong presumption, but not conclusive evidence, may, hovpever, arise against a party to the simple contract by reason of the recitals or statements therein, but he is at liberty to prove mistakes in, or the falsity of, them, unless another person has been induced thereby to alter his condition. In the latter event he would be estopped with respect to that person and that transaction (//). A deed operates as a conclusive bar, and prevents all inquiry into the truth (z). A recital in a deed of a particular fact which all the parties have agreed to admit as true is an estoppel to all (a) ; but when it is intended to be the statement of one party only, the estoppel is confined to that party {b). In JIi//s v. Laminrj (c), there was an agreement under seal in compromise of the disputes between two patentees of similar or rival inventions, in which, after providing for the exclusive use by either party of some limited part of the other's invention, subject to the payment of royalties, it was stated that it was assumed, for the purposes of the agreement, that each party was exclusively entitled to the portion of the invention over which he purported to grant the exclusive use to the other party ; and it was provided that, on breach of the agreement by either party, a certain sum should be paid to the other by way of liquidated damages. In an action to recover that sum, the defendant pleaded that the plaintiff's patent was not valid. It was held that the plea was bad, as the defendant was estopped by the agreement from disputing the validity of the patent [d). Certain general rules guide the court in decreeing specific Specific per- formance of (x) There must be a deed : Shep. Touch. 320, 321. See Grant v. Norn-ay, 10 C. B. GGj ; Jkites v. Todd, 1 Moo. & Rob. lOG ; also cases cited in Everest & Strode's Law of Estoppel, p. 193. There are exceptions to this rule by- certain statutes, which do not applj' to the subject of this work : see 18 & 19 Vict. c. Ill, s. 2, as to the signature of a bill of lading by the shipowner. [y) Per Bayley, J., in llmne v. Rogers, 9 B. & C. 577, 584, cited in Chitty on Contracts, p. 7 ; and see the other cases there cited. As to equitable estoppel, see Pollock, 479. (2) Carpenter v. Bailer, 8 M. & W. 209 ; Carter v. Carter, 27 L. J. Ch. 74. (a) StroiKjhill v. Btak, 14 Q. B. 787, and other cases cited in Chitty on Contracts, p. G. (b) Stroughill v. BucJc, su2:)ra. (c) 9 Exch. 256 ; 23 L. J. Ex. GO. {d) As to estoppel by recitals in a deed, see also the Chapters on " Assign- ments " and " Licences," ^josf, pp. HI, 112, 184, 191, 192. 42 AGREEMENTS. contracts generally. Specific p formance contracts sale of patents. er- of for performance of contracts generally. First, an action for damages only must appear an inadequate remedy (r). Secondly, there must be mutuality of remedy {/), e.g. an infant cannot obtain a decree {(j). Thirdly, the contract must be certain in its terms {h). Fourthly, the contract must not be in its nature revocable, as the interference of the court might after decree be rendered useless, e. (J. in the case of an agreement to enter into a partnership, the duration of which is not specified, and which would consequently be a partnership at will merely (0- Fifthly, there must be a consideration for the contract (/i) . Contracts relating to personal property will, in general, be enforced when the subject matter is very rare, or of unusual beauty or character (/). Specific per- formance under some or other of the above conditions will con- sequently be decreed of agreements relating to inventions and letters patent {m). An agreement for the sale of a patent may, at the instance of either the vendor or purchaser, be decreed to be specifically per- formed. This is the case even if the patent was not, at the date of the contract, actually taken out by the vendor, provided, at least, he was then entitled to make an application for the same (n). And even before the patent was granted, it was held that the court would enforce specific performance to the extent of decreeing (e) Harnett v. Yeildhuj, 2 Sch. & Lef. 553 ; Fry, 22. (/) Story, 723; Adderleyy. Dixon, 1 Sim. & Stu. 607; Fry, 201 ; Williams V. Williams, L. E. 2 Ch. 294, 304. {g) Flight v. Holland, 4 Euss. 301. For cases on other points, see WrigJd V. Bell, 5 Price, 325; Kenney v. Wexham, 6 Madcl. 355; Cogent v. Gibson, 33 Beav. 557 [infra). {h) Moseley\. Virgin, 3 Ves. 184; Story, 728; Fry, 37. (i) Hercy v. Birch, 9 Ves. 357; Sturgey, Midland Railway Co., 6W. E. 233. [k) Jefferys v. Jefferys, Cr. & Pli. 141, -which was the case of a father, by ■voluntary settlement, covenanting to surrender copyholds to trustees for his daughters. See also Ilervey v. Audland, 14 Sim. 531 ; and Fry, 42. (?) E.g., railway shares of a limited number, Duncuft v. Albrecht, 12 Sim. 199 ; timber, by reason of its vicinity, of peculiar convenience to the plain- tiff, a ship carpenter, Adderley v. Dixon, supra ; Buxton v. Lester, 3 Atk. 385 ; pictures, Dowling v. Beijemann, 2 John. & Hem. 544 ; and heirlooms, &c., Somerset v. Coohson, 1 Wh. & Tu. L. Cas. ; Pusey v. Fusey, 1 Yern. 273. As to inventions and patents, see the text above in continuation. (m) See Snell on Equity, and Fry on Specific Performance, generally. [n) Cogent v. Gibson, supra. In that case the agreement was to sell a British patent, which the vendor, the owner of a French patent for the same invention, had thereby agreed to take out at the expense of the purchaser. The patent was taken out, and the vendor was decreed specific performance. AGREEMENTS. 43 that tlie vendor, the defendant, should sign and seal a complete specification, tendered him by the purchasers, and, according to the agreement, completed by them at their own expense (o). An agreement by a vendor to assign all fature patents obtained by him for improvements on the patented invention thereby agreed to be sold, will, apparently, be decreed to be specifically performed, and such an agreement is not against public policy (p). An agreement to lend money to enable an inventor to take out g^^^fi^^^f;/ a patent cannot be specifically enforced. In liof/ers v. C/iallis {q) airreemcnt^s the court refused specific performance of a written agreement to ^'^^ borrow- borrow, which definitely fixed the terms of tlie loan, and the ing money, security to be given, but had remained unperformed by the in- tended lender, the plaintiff. Again, on the principle (in particular) that there was no mutuality of remedy, the court refused specific performance of a written agreement to lend money for a defined period at interest (r). The court, however, will decree specific performance of an agreement to execute a mortgage in considera- tion of money actually due or advanced (-s). Where some money has ah-eady been advanced, or other part performance occurred in an agreement to lend money to an inventor to enable him to take out the patent, which money is to be secured on the patent itself, together with interest dependent to some extent on the net profits, specific performance of the agreement to borrow or lend might, it is submitted, be decreed. The mortgage for the money advanced would, as above stated, be decreed to be executed. The borrower has, moreover, as to the payment of interest out of or by reference (o) Lewiii V. Brown (1866), 14 W. R. 640. (p) Printimj and Numerical Registering Company v. Sampson, L. R. 19 Eq. 462 ; Leather Cloth Company v. Lorsont, L. E. 9 Eq. 345. {q) 29 L. J. Ch. 240. Lord Eomilly there said that the Statute of Frauds did not apply to an agreement to borrow, and, therefore, if specific perform- ance could be decreed in the case of a written agreement, it would bo decreed in the case of a mere conversation, and, in the latter case, the task of the court would be too difficult and dangerous. (r) Sichd V. Mvsenthal, 31 L. J. Ch. 380. The agreement was one for entering into a partnership with an existing firm at a future fixed date, or, in default of the defendant so doing, for him to make the loan to the firm for two years at interest. The agreement had remained unperformed by the intended borrowers, the firm, who were plaintiffs. See also Broiujh v. oddy, 1 Euss. & Myl. 55 ; Flight v. Bolland, 4 Euss. 298 ; Bass v. Clivthj, 1 Tamlyn, 80; Crampton v. The Varna Bailivay Co., L. E. 7 Ch. 562. (s) Ashton v. Corrigan, L. E. 13 Eq. 76; Hermann v. Hodges, L. E. 16 Eq. 18 ; of. Taylor v. Eckersley, L. E. 2 Ch. D. 302 (all cited in Fry, 17). contracts. 44 AGREEMENTS. to the net profits contracted to sell (so to speak) a kind of derivative interest under the patent. The borrower also may almost be con- sidered as being unable to obtain moneys elsewhere on the strength of the invention and prospective patent rights, on account of their highly speculative and uncertain character. There seems, however, to be no direct authority on the point {f). Rescission of In general, a contract cannot be rescinded unless by consent of both parties (u). Exceptions occur in the cases of fraud, duress, or mistake (.r), or where there has been a total failure of the considera- tion (y), or where a condition precedent has not been (z) or cannot be performed (a) . Where there is a contract for the supply of goods of a certain total quantity by periodical instalments, the failure to supply any instalment will not preclude the defaulting party from requiring the completion of the contract (/*), unless time is of the {t) As to the cases of Rogers v. Challis, and Sichel v. Mosenthal, Fry, L.J., in h-is -vrork on Specific Performance, p. 17, notices that the agreement remained unperformed in the former case by the intended lender, and in the latter case, by the intended borrower, and states the decisions with these qualifications accordingly, but expresses no opinion as to what decree in each case would have been made if some money had already been paid, or other part performance occurred. {u) Chitty, 675; Addison, 1218. (a;) As to these, see Addison (Chapter on Voidable Contracts). {y) E.g., where the thing bargained for is completely different in sub- stance from that delivered {Kemiedi/ v. Panama, (fee. Mail. Co., L. E. 2 Q. B. 580) ; or cannot come into existence {Enowles v. Bovill, 22 L. T. N. S. 70). In the latter case, there was an agreement in consideration of an immediate monetarj- payment for a patentee to apply for prolongation of an existing patent, and also for a patent for a new invention, and also for him to grant licences of both jiatents to the other jiartj'. The patentee's death totally prevented the applications, and it was held that the money must be returned, on the ground of total faihue of the consideration. See, also. Chanter v. Leese (4 Mees. & Wels. 295 ; affirmed 5 ibid. 698) as to total failure (constructively imder the cii-cumstances) of the consideration for a licence not under seal, namely, the exclusive use of six patents, one of which was fotmd void. If the licence had been under seal, in which it was recited that the patent was valid, there would have been an estoppel (see ante), and the plea would have been void {Bowman v. Taylor, 2 Adolph. & Ell. 295). As to estoppel of a licensee by mere relationship, and failure of consideration moving from the licensor, see Chapter on " Licences," 2^ost, pp. 187—191. (z) Fitt V. Cassanett, 4 Mac. & G. 898 ; Chitty, 676. The defendant had made no default, and was held entitled to rescind. (a) Chanter v. Leese, supra, and p. 46, post. (&) Pordage v. Cole, 1 Wm. Saund. 319 Z; Simpson v. Crippin, L. E. 8 Q. B. 14 ; Jonassohn v. Toung, 32 L. J. Q. B. 385. AGREEMENTS. essence (c). "Where, iu the hitter case, each instalment is to be paid for on delivery, the failure to pay for any instalment will enable the vendor to cease supplying further goods {d). If part of a contract is performed, so that only partial failure occurs, no moneys paid can be recovered (e), unless the consideration is clearly severable (./■) . If a partial failure of performance can be com- pensated for in damages the contract is not put an end to {fj) ; nor can a contract in general be rescinded in toto by one party where both cannot be placed in the identical situation which they occupied when the contract was made (//), and accordingly, where one party has derived some advantage from the other party having to some extent performed the contract, the general rule is that the agree- ment shall stand, and that the defendant must perform his part thereof, and seek compensation in damages for the plaintiff's default (/). "Where the consideration has been executed, or, in other words, one party has entirely performed his part of the contract, the other party cannot by denying the title of the plain- tiff to the subject-matter of the contract be allowed to be discharged therefrom. This is illustrated by the case of an agreement not under seal, wliereby the defendant was licensed by the plaintiff to manufacture manure according to the plaintiff's patent, and sell the game. The prescribed quantity of manure was manufactured and sold by the defendant, who then refused to pay moneys imdcr 45 (c) See Iloare v. Rennie, 5 Hurl. & Norm. 19, where the first supply was exceedingly deficient in quantity, and the purchaser was held entitled to rescind. The decision is disapproved of in Simpson v. Crippin, and /o?ia^- sohn V. Yuung, supra; but semble, may be upheld on the ground of time being of the essence of the contract. See Bradford v. Williams, L. E. 7 Ex. '2od, where the decision is cited with approval, but apparently on the ground of the failure going to the root of the contract. See also 2 Sm. L. Cas. 39 (Tth ed.), notes to Cutter v. Powell, where the decision in Simi)son v. Crippin is approved of, and the rule laid down that in order to the rescission of a con- tract, the breach must have been as to something essential. {d) Withers v. Reynolds, 2 B. & Ad. 882. (e) Addison, 1184, citing Hunt v. Silk, 5 East, 449; Blackburn v. SmilJi, 2 Exch. 783 ; Nicholson v. Rickeils, 29 L. J. Q. B. o J. (/) Addison, 1184; Astle v. Wriv!iereas on the day of ,18—, the said A. B. duly filed a complete specification of the said invention {d). 4. Wherk.\s by letters patent under the seal of the Patent Office (^), dated &c., and numbered &c., the _ sole and exclusive licence and authority of making, using, exercising, and vending in the United Kingdom and the Isle of Man (/) an invention for &c. \_name of invention'], were granted to the said A. B., his executors, administrators, and assigns, for the term of fourteen years fromthe date thereof, subject to the payment of the fees and the conditions for making void the same, as therein provided. 5. And whereas under a Brevet d'Invention, dated e^c, and numbered &c., granted to the said A. B. in the Eepublic of France, he is entitled to the solo privilege or licence of using and vending within the said Eepublic and any of its Colonies or dependencies, an invention for &c., for a term of years from the day of , 18 — . Claim to be G. Whereas the said A. B. claims to be the inventor of improve- fiTst inventor, jj^euts in &c. \_title of invention'], and that such invention is not and has never been used or knoAvn within this realm. ProTisional 7. "Whereas the Said A. B., as inventor of a new and improvecl protection (or proccss for the manufacture of &c. [title of invention], made his acceptance of application for letters patent on the day of last, spSficadon) and has obtained provisional protection [or, sa//, " has obtained the obtained. acceptance of a complete specification."] Ptccital of 8. Whereas the said A. B. is the inventor of a new and invention and improved process for the manufacture of &c, \_titk of invention^, patent ta en ^^^ j^^^ obtained letters patent for the same within the United Kingdom [the Channel Islands], and the Isle of Man, dated &c., and numbered &c., for the term of fourteen years therefrom. rrench patent. Agreement to piircliaso a patent and 9. And whereas the said C. D. has agreed to purchase for the sum of £ the said letters patent and the exclusive benefit (c) The " subject" clause following the above date may j)robably, in most cases, be omitted. (d) A complete specification is now required to be left at the ofHce (sects. 5, 8, 9 of the new Act, post, pp. 308, 309. (f) As to the seal, see sect. 12 of the new Act. (,/■) The Channel Islands are not included. (Sect. IG of the new A.ci, post, p. 311.) See Form I., ante. COMMON FORMS. 51 thereof, and of any extension thereof, together with the like benefit all improve- in all iniprovomonts or additions to the said invention, or any ™*T*;^' ^'^■' discovery useful for the manufaetm-o of , now or hereafter yions. made [or acquired], Ly the said A. 15. 10. And whereas the vendor is entitled under an assignment, Title b)- dated &.C., and made between &c., to the said invention and letters 'i-^^'^ninent. patent, and the exclusive benefit thereof respectively. Clauses. 11 ((/). The said A. B. shall at his own expense, in the presence Trial of of the' said C. D. and any agent of his, make trial of the said i"^e^tio°- invention, and manufacture according thereto some good specimens [or a quantity not exceeding lbs. or &c.] of , and shall give to them respectively all necessary explanation of the process and details of such manufacture and the mode of application of the said invention, so as to enable them respectively to form an opinion as to the utility and value thereof ; but neither the said C. D. nor his agent shall, except for any of the purposes hereof, hereafter make use of the invention [or communicate the secret thereof to any person or persons (//)] without the written consent of the said A. 15. (/). 12. The said C. D. shall forthwith be entitled at his own expense Purchaser to [or at the expense of &c.] to be made an applicant for the grant ^^ made co- of the patent for the United Kingdom and the Isle of Man aJncndmcnt!^ jointly with the said A. B., who shall procure the amendment of his application in this respect accordingly {J). 13 (/•). The said C. D. shall keep at his usual place of business Accounts to all proper books of account, and make true and complete entries ^'-' ^^<'pt^. i^^- therein at the earliest opportunities of all particulars necessary or ^^ilo^pj convenient for the purposes hereof i-elating to the manufacture and evidence sale of the [articles] made according to the said invention, and the yi^'C") e concerned facture [or sell {q)'] any articles aforesaid, or such articles as shall similar be similar in character to the same, or be engaged or concerned in articles, or promote any business or company for the manufactm-e, sale, or letting on liire of any such articles respectively, or do any act or thing calcidated to depreciate the value to the said C, D. of the said invention. 18 (r). Either party may determine this agreement at any time Determina- hereafter [or after the day of next] by serving ^^°^ °^ ^f ther {p) Compare this -uith the last Form. See also notes thereto. {q) A riglit to maiuifactnre includes a right to soil the patent articles {Tlwrnns v. Hunt, 17 C. B. N. S. 183). (r) See also the next Fonns, 19 — 23, which all relate to rescission of agree- ments. 64 COMMON FOKMS. party on notice. Determina- tion on de- fault in pay- ment, or breaches of covenants. Power to rescind if vendor delays proceedings to obtain patent ; Or purchaser may by power of attorney take out patent. the otlicr of thom with three calendar months' previous notice in writing- for this purpose, but such determination shall be without prejudice to any moneys then due, or right of action to either party then already accrued hereunder. 19 (.s). Provided always that if the said C. D. shall make default for one calendar month in payment of any moneys due hereunder, or shall commit a breach of any other of his obligations hereunder, and (where such breach is capable of being made good) shall for the space of days after he shall have been served by the said A. B. with a notice in writing requiring him to make good the same, omit so to do, or shall become bankrupt, or commit an act of bankruptcy, whether available for adjudication or not [or shall not in any half-year aforesaid manufacture by himself or his sub- licensees (if any) of the said articles at least according to the said invention, or any improvement or addition thereto, or new discovery as aforesaid], then the said A. B. may at any time thereafter by notice in writing served on the said C. D. forthwith rescind this agreement, but such rescission shall operate without prejudice to the recovery by the said A. B. of any [royalties or other] moneys due at the time thereof, or to any right of action by either party then already accrued hereunder. 20 (/). If the vendor shall unreasonably make delay in, or discontinue the proceedings in respect of, his application for the patent, and shall for more than days after he shall have been recpiested in writing by the pui'chaser to continue the same, omit so to do, the purchaser may, at any time thereafter before the vendor shall (if at all) continue such proceedings, either retire from the purchase of that patent (and shall accordingly be entitled to a retm-n of all moneys paid by him in respect of such purchase, together with interest thereon, respectively (as for money lent) at the rate of per cent, per annum from the times of payment until the repayment thereof respectively) or, if time will so admit, may at the expense of the vendor and by means of a power of attorney or other (if any) necessary power from him (who shall accordingly confer the same), himself continue or cause to be con- tinued the said application, and all proceedings consequent thereon, until the said patent shall be granted and vested in the purchaser as aforesaid ; and all moneys (if any) paid by the purchaser in the due and proper exercise of any such powers shall be repaid by the vendor on demand, together with interest thereon respectively at the rate last aforesaid from the time of payment until the repay- ment thereof respectively, notwithstanding that from any cause (s) See also last Form, and next Forms, 20 — 23, whicLi all relate to rescis- sion of agreements. {t) This clause, with slight variation, is used in Agreement VI., 2wst, p. 78, as to foreign and colonial patents in course of being taken out, and is, per- haps, more applicable to such patents than to British ones, but may be useful as to the latter also. See also the last two and next thi'ee Forms, which all relate to rescission of agreements. COMMON FORMS. 55 not attributable to the purcbaser tbe patent shall not be finally obtained. 21 (u). The purchaser may at any time not later than Liberty for weeks before the time fixed as aforesaid for the completion of the Slw ^"^ purchase, retire therefrom by then serving the vendor with a within given ^vritten notice for that purpose, whereby also he shall offer to relin- time on quish all claim to any moneys paid by him in respect of the said inon'eys^paid. purchase, and also to pay on demand any moneys then already due in the like respect and remaining unpaid. 22 (f). If through any cause attributable to the state of the title If patent not to the invention the patent cannot or shall not be obtained, the ^Q^g^gH^^Jj^j^, purchaser shall be entitled on demand to a return of all moneys ™Tmterest) paid by him in respect of the said pm'chase, but mthout any returned, interest thereon, or [subject as in clause provided] any claim for damages or compensation on account of the failure to obtain the patent. 23 (ir). If the said patent shall be judicially declared void and if patent de- incapable of being restored either wholly or as to some material ^^''^J'^jLj''*^?' part of the said invention, any instalment or instalments aforesaid ^^g^^ ^^^ then remaining unpaid shall thereupon cease to be payable either appeal made at all (and in that case this agreement shall absolutely determine J^^^^P^Jj without prejudice to the paj^ment of all moneys then already due, ^^gpended^ or to any right of action by either party then already accrued hereunder), or (in the event of a successful appeal from the judg- ment) during the period for which the same shall remain in force, and in the event of a successful appeal therefrom the right of the said A. B. to payment of the said instalments then remaining unpaid shall [subject to the exercise by either party of his riglit (if any) to rescind or determine this agreement as aforesaid] revive, and the said instalments or such one or more of them (if any) as shall have fallen due dming the period aforesaid shall bear interest at the rate aforesaid from the date of the judgment on appeal until payment thereof respectively. Provided alwaj's Final cesser that any final cesser of payment as aforesaid shall be deemed satis- of r^'^^^^'^ faction in full to the said C. D. of any claim by him for damages °^ almages. or compensation by reason of the said patent becoming or being declared void as aforesaid (.r). 21. If any difference shall arise between the parties hereto^ in Arbitration respect of the construction hereof, or their respective rights, duties, '^l'"^-"'-'- or liabilities hereunder, the same shall be referred to two arbitrators, one to be appointed by each of the parties, and such arbitrators or their umpire may accordingly make an award in respect of the {u) Seo last three Forms, and the next two Foi-ms, which all relate to res- cission of agreements. (y) The Forms IS — 23 all relate to rescission of agreements. {w) The previous Forms, 18—22, all relate to rescission of agreements. {x) Seo similar clauses as to royalties being in suspense, Jijreement XII., and Licence VII., iwst, pp. 93, 266. 56 COMMON FORMS. said difference and the amount of the costs of and incident to such reference and award respectively, and the person or persons by whom and in what manner the same shall be paid ; and the submission shall be made an order of the High Com't of Justice upon the application of cither party who may instnict counsel to consent thereto for the other of them, and the death of any party shall not operate as a revocation of the submission or otherwise be a bar to proceedings in respect thereof {//). Ti-ansmission 25. Except whcro in any case the context requires a different clause (''as- interpretation the expression "the vendor," or "the purchaser" ir^rted). ^ [or " the said A. B." or " the said C. D."], or any other expression designating the same person, wheresoever used herein shall extend and be construed to apply also as far as possible to the assigns of the person so designated. (y) The Common Law Procedure Act, 1854 (17 & IS Vict. c. 125), which, except as to tlie particular sections relating to arbitration and some others, has been totally repealed by the Statute Law Eevision, &g. Act, 1883 (46 & 47 Vict. c. 49), gives the rules as to submission to arbitration and proceedings thereon. On the subject generally, see Eussell on Arbitration. A concise statement of some of the principal rules, together with observations thereon, will be found in Palmer's Company Precedents, p. 21 (3rd edition, 1884). The sections of the Act, unaffected by the repeal, are sects. 3 to 17, 20 to 30, 59, 87,89,103, 106, and 107. 67 AGKEEMENTS. LIST OF PEECEDENTS. PAGE I. AGREEMENT for Loan hj Ixst.vlmexts to enable Inventor to TAKE OUT the Patent and woiuc tlie Invention — Peoyisioxal PROTECTION [or AccETTANCE of Complete Specif cation'] already obtained— VimiAii.n^\Y.Y Trial of Invention— Option to make Advances— Patent to be taken out in Joint Names and mort- gaged to Zenr/ey— Interest half-yearly at itxed rate, and also according to Proitts— Term certain 59 II. AGREEMENT by a Manl-facturer to ^jay expenses of obtain- ing a Patent — No aitlication yet made — Joint Patent — Manufacturer alone to work Patent— Vay-^e^t of Eoyal- xiES Option to purchase Patent — Provision for renewal of Agreement by Surviving Partners (if any) of Mamfac- turcr III. AGEEElNIENT/or Loan to a Firm— Advances with Interest repayable only out of fixed Share of Net Profits half- ycarli/ — Present Advance — Other Sums advanced according to state of Prof ts—0\iA.ViG^ ON Patents— No personal Lia- bility to repay • 64 07 IV. AGREEMENT /or Sale o/lSroiETY of a Pa /e«/— Provisional Protection obtained — Purchase-money in three Instalments, payable {I) at date, (2) on acceptance of Complete Specif ca- tion, (3) on grant of Patent— Co:sm'noys of working- Rescission before grant in certain events 70 V. AGREE]^[ENT/or S.vle of Patent after accept^ince of Com- plete Specification— Vendor to Manufacture for Purchaser toithin District — Exclusive Licence for same District — Royalties on Goods sold to strangers— Clauses as to prices, delivery, accounts and disjjosition of Goods on determina- tion of Licence ' '^ VI. AGREEMENT /or Sale o/ Foreign and Coj^osia-l Patents {in course of being obtained)— Special Clauses enabling Pur- chaser to retire from any Purchase " 58 AGREEMENTS. PAGE VII. AGEEEMENT for Sale of Patents to a Trustee for a Limited Joixt Stock Company (m course of formation) — Purchase-money in Cash and Shares : 79 VIII. AGEEEMENT heticeen Joi>-t Applicants for a Patent, defnimj their resjicctive Interests and poxoers on tvorking separately 82 IX. AGEEEMENT to grant exclusive Licence for district — Condition precedent to piurchase expected Cargo of raw -M.AT'KE.iX'L from foreign Island for manvfaetxire of the Patent commodity — Contents of Licence as in Schedide, including Provisio7is for future Purcuases of ratv material — Analysis by Chemists — Determination of Agreement in certain events 84 X. AGEEEMENT for exclusive Licence to sell articles — Erench Patentee — British Patent to be obtained in Joint Names, and then vested in Licensor, subject to a Covenant TO GR^us'T the Licence — Licensee frst to establish his Business, and buy a certain number of articles from Erench Factory — Terms of Licence as in Schedule, inchiding as to MONTHLY SUPPLY o/ ARTICLES by LICENSOR 87 XI. AGEEEMENT for Sale 07i the hire system of a Patent (exclusive Licence until assignment) — Payment of Annvai, sums — No EOYALTIES 89 XII. AGEEEMENT /or Sale on hire system of a Patent {vary- ing last Precedent) — Exclusive Licence until Assignment — Prcinium — Eoyalties half-yearly tintil total fixed minimum paid 93 XIII. AGEEEMENT /o>-»i/«y a Syndicate to purchase a Con- tract for Sale of a Patent, and to sell the Contract or Patent to a Company, or otlicricise 9G XIV. DEED OF Partnership /or icorhing a Patent 99 XV. AGEEEMENT appointing a sole Agent for the Sale of Patent Articles m the Metrojwlis 104 AGREEMENTS. 59 I. AGREEMENT for Loan hy Instalments to enable Inventor to Peecede>tL TAKE OUT tJie Patent and work tJte Invention — Provisional Protection [or Acceptance of Complete Specification'] already obtained — Preliminary Trial of Invention — Ojition to mahe Advances — Patent to be taken out in Joint Names and mort- gaged to Lender — Interest half-yearly at fixed Eate, and also according to Profits — Term certain. AN AGREEMENT made tlio day of 18— Between A. B. of &c. of the one part and C. D. of &c. of the other part (a) : Whereas the said A. B. as inventor of a new and EccUaU. improved process, &c. \title of inventionl made his application for Application letters patent on the day of last {b) and has ^J^^^^^^^ obtained provisional protection (e) : And whereas the said A. B. protection [or has requested the said 0. D. to lend him the sum of £a to Acceptance of enable him to obtain the patent for and establish himself at ^p^Jfi^^^Jtio^i in the business of working the said invention : NOW IT ' If IS AGREED AND DECLARED as follows :— toll 1. The said A. B. shall at his o^ni expense in the presence of Trial of the said C. D. and any agent of his make trial of the said inven- invention, tion and manufactm-e according thereto some good specimens (r/) of and shall give to them respectively all necessary explanation of the process and details of such manufactm-e and the mode of application of the said invention so as to enable them respectively to form an opinion as to the utility and value thereof but neither the said C. D. nor his agent shall except for any of the pm-poses hereof hereafter make use of the invention^ [or com- municate the secret thereof to any person or persons {e)'] A^ithout the \NTitten consent of the said A. B. (./'). 2. If the said invention shall not be tried as aforesaid mthin Option after calendar months from the date hereof or if within trial to ™'ike weeks after such trial the said C. D. shall not give notice in "" ^^°<=es- miting to the said A. B. of his intention to make any advances in the temis of this agreement the same shall at the end of such period absolutely determine (g). {(() As to recitals in agreements, and the law of estoppel, see ante, pp. 40, 41. (6) This date will als^o be the date of the patent, notwithstanding the time of sealing (sect. 13 of the now act, post, p. 311). (c) Or say, if the case, "has obtained the acceptance of a complete specifi- cation." As to provisional protection, and the patent rights obtained on the acceptance of the complete specification, sec pp. 13 — 15, ante, and sects. 14 and 15 of the new act, 2>ost, p. 311. {d) Or ''a quantitj' not exceeding lbs.," or &c. (e) If the complete specification has been accepted, omit the words in brackets. See sect. 10 of tho new act, as to publication by the office after the acceptance, post, p. 310, and ante, p. 14. (/) As to confidential disclosures in respect of a secret invention, see ante, pp. 27, 2S. {(j) Until C. D. has advanced any money the parties will be under no binding agreement, and each can withcbaw at any time before the period 60 AGREEMENTS. Peecedent I. If C. D. so decide, ad- vances to be made to ob- tain patent. C. D. to be made co- applicant by amendment. Joint grant of patent to be obtained and mortgage to be exe- cuted. No further advances unless former 3. If the said C. D. sliall give such notice as aforesaid he shall advance the said smn of £a by instalments [h) namely £b when he shall be satisfied that the said A. B. has prepared the complete specification of the said invention (/) and a further sum of £c within days after the acceptance of the complete specification shall have been duly notified to the said C. D. from the patent ofiice in respect of the joint ajjplication for the patent as hereinafter provided to be made and the balance of the said sum of £a upon the execution of the mortgage hereinafter mentioned. 4. As soon as the said C. D. shall have advanced the said A. B. the said sum of £n whether he shall have given such notice as aforesaid or not he shall be entitled to be made an applicant for the grant of the patent for the United Kingdom and the Isle of Man jointly with the said A. B. who shall procure the amendment of his application in this respect accordingly (J). 5. After the said application shall have been amended as afore- £aid the said patent shall with all due speed and at the expense of the said A. B. be obtained (/.•) in the joint names of the said parties and immediately after the grant thereof the said A. B. shall at his own expense execute a mortgage thereof or of all his interest therein so that thereby the entirety thereof shall be vested in the said C. D. to secure the repayment of all advances hereunder together with interest as hereinafter provided and so that on re- demption the entirety of the said patent shall be assigned to the said A. B. (/). 6 (wa). Provided however that the said C. D. may at any time refuse to make any advance unless satisfied with the application of fixed for the first advance. The first two clauses are, therefore, only pre- liminary to the agreement proi^er. If the lender -n-erc already satisfied with the invention and the complete specification he might advance a sum at once. (//) In case the complete specification has been accepted at the date of the agreement it may be suitable to substitute the following clause in lieu of Clauses 3 and 4 : — _" If the said C. D. shall give such notice as aforesaid he shall advance the paid sum of £a in two instalments namely the sum of £b on the said A. B. making him a co-applicant for the grant of the patent and the sum of £c upon the execution of the mortgage hereinafter mentioned." (t) Or say, " satisfied that Mr. X. of &c. or other patent agent nominated by or approved of by the said C. D. has under the instructions of the said A. B. prepared &c." The sum of £b is suggested in order to defray the expenses of the pre- paration of the complete specification, and obtaining the acceptance thereof. (y) See as to amendment of the application by making the lender or pur- chaser a co-applicant, p. 29, ante. (k) As to abortive or abandoned applications, see note (d) to the next pre- cedent. (/) The patent could, of course, be taken out by the inventor alone, and then mortgaged. The above method is, however, advised, in order to prevent adverse dealings with the patent before the execution of the mortgage. See ante, p. 29. As to the form of such a mortgage, see Mortgage II., post, p. 172. As to specific performance of agreements for loans, see ante, pp. 43, 44, (m) Omit this clause if the sum is to be advanced in only two instalments, as mentioned in note {h), ante. AGREEMENTS. 61 all previous sums advanced or being dissatisfied therewith shall be Peecedent I. unable or fail to make or sustain any reasonable objection thereto. ^ 7~ 7. The said A. B. shall pay to the said C. L). half-yearly on applied, every day of and day of com- interest at mencing as from the time of advancement thereof interest on fixed rate, every sum advanced and for the time being remaining unpaid [^^^,^^^^\^^ hereunder that is to say firstly a fixed interest at the rate of of profits, but per cent, per annum and secondly a further interest to not exceeding the exteut of one-third share of the net profits (if any) of the said l^^'^ZTol^'' business for the half-years then ending respectively or such part owing. of the said one -third share as shall be equal to per cent, {n) of the total sum advanced as aforesaid and for the time being remaining unpaid (o) . 8. Notwithstanding anything hereinbefore contained all ad- Moneys to vances shall except as next provided be repaid at the end of six i-omainfora calendar months from the respective times thereof. Provided ifYnteros?"*' however that if the said patent shall be obtained within punctually calendar months herefrom and the said mortgage shall be duly P'"^> ^^■ executed as aforesaid then so long as the said A. B. shall on or within thirty clays after every half-yearly day aforesaid until the day of 18 — pay all interest for the time being due as aforesaid and perform and observe all his obligations for the time being hereunder or under the said mortgage and shall on or before the day of 18 — (p) have finally established himself in the said business the said C. 1). shall not before the said day of 18 — (q) call in the principal moneys so advanced or any part thereof respectively. Provided also that the said C. D. shall not before the said day of 18 — (q) be compelled to receive the said principal moneys or any part thereof respectivel3% 9. The said A. B. shall keep at his usual place of business all Half-yearly proper books of account and shall make true and perfect entries '''^'^o^^.^ts, m- therein at the earliest opportunities of all particulars relating to ' * the manufacture or sale of the articles made according to the said invention and the licences (r) granted by him in respect thereof and all other dealings by him with or in relation to the said inven- tion and patent rights subject hereto and to the said business or any of them and shall balance his accounts at the end of each half-year aforesaid and shall at all times during the continuance and for the purposes hereof give the said C. D. or his agents all information and at the expense of the said A. B. evidence by statutory declara- tion or otherwise as to the truth of any particulars aforesaid and {n) In fixing this percentage, it should he noticed that the period is half a year only. (o) As to this further interest, see ante, p. 29. As to the position of the lender on the bankruiitcy of the inventor, see code, p. 30. {}i) Some early date. {(A The first-mentioned date. (r) There will be a check on the grant of licences by the mortgagor alone if the mortgage, or, in default of the latter being executed, the agreement itself, bo registered immediately after the grant of the patent. See note («■), infra, as to the registration of this agreement if no mortgage be executed. As to the power of one co-imtcntee to grant licences, sco post, p. 118. 62 AGREEMENTS. Contents of mortgage deed. rHECEDENT I. siifTor luiii 01' them to inspect and make copies or extracts from the said books or any of them as and when reasonably required by him or them and shall pay the expenses (not exceeding £ ) of a chartered accountant (if any) employed by the said C. D. for any half-year to investigate the said books and state of the said business for the purposes aforesaid and shall at the end of each half-year aforesaid send to the said C. J), a full account and balance sheet for such half-year (s). 10. The said mortgage deed shall contain all such covenants and provisions as shall be necessary to carry out the terms of this af^reement so far as they shall remain to be performed or observed together with absolute covenants for title to the said invention and patent rights subject to tliis agreement and as to the validity of the patent and for the payment by the said A. B. of all renewal fees and for the maintenance and protection by him of the patent but shall reserve to the said A. B. the right at any time or times before the said C. D. shall become entitled to exercise the power of sale to grant licences ^ther than cxclu.-,ke ones but at the highest royalties obtainable and not at fines or premiums and containing provisions enabling the licensor to revoke the sfime respectively on default in payment of any royalties for the space of thirty days or on breach of any other covenants or conditions therein contained and shall enable the said 0, D. at any time or times after he shall become entitled to exercise the power of sale to grant licences without restriction and shall as far as can be include the benefit of any extension (;') of the patent and of any improvements or additions to the said invention or any new discovery relating to the subject-matter thereof {ii) now (if at all) in the knowledge and possession of or which may hereafter be made by the said A. B. either solely or in conjunction with any other person or persons and of all patent rights obtainable by him in the United Kingdom and Isle of Man in respect thereof respectively and lastly shall contain all such other clauses or provisions as shall be necessary usual or convenient for securing to the said C. D. payment of the moneys and interest intended to be secured as aforesaid {v) . Charge on H. Until the said mortgage shall be executed the patent rights declaration ^^^ ^^® ^^^^^ being Comprised herein shall stand charged with the of trust. (s) As to accoimts generallj', see p. 33, ante. \t) As to applications for extensions, see ante, j). 19. (it) As to improYcments or additions, &c., see ante, pp. 33, 34. ForeioTi and (^') I^ ^^7 colonial or foreign patents are intended to be also a. security colonial they cannot, of course, be comprised in the mortgage. There should be a patents. recital in the agreement of such intention, and also of applications being, or about to bo, made for the respective patents. A clause should then be inserted, providing that A. 13. will, with all duo speed, or within specified times, make or prosecute his applications, and obtain the respective patents, and execute a proper mortgage of them to C. D., according to the laws of the different counti'ies. After the complete siiecification in this country has been accepted, and consequently published (sect. 10 of the new act, and see ante, p. 14), it will be impossible in most colonies or foreign countries which are not members of the International Union to make effective apiilications for the patents. See as to colonial and foreign patents and the International Union, ante, p. 36. AGREEMENTS. 63 repayment of tlie principal moneys and interest as aforesaid and Peecedent I. the said A, B. shall hold the same patent rights in trust for the said C. D. to enable him more effectively to enforce the said charge where necessary and shall perform and observe the covenants and provisions to be comprised in the said mortgage deed so far as possible as if the same had been duly executed. Ix -witness &c. (ic) . {iv) By tlio Conveyancing Act, 1881, ss. 19, 20 {A-pji., post, pp. 375, 376), Tliis aorec- ccrtain powers of sale and other powers are given to mortgagees where tho ment to be mortgage is by deed. By sect. 2 (6) a mortgage includes "a charge." It executed as a seems, therefore, advisable that, in view of possible delay in tho execution deed in order of tho mortgage, the above agreement should bo executed as a deed. The to enforce the declaration of trust above made may bo useful in enabling C. D. to get in powers under tho legal estate under the Trustee Acts, 1800 and 1852, on any sale by him Conv. Act, to enforce the charge in case A. B. refuses to concur in the sale. See notes l^^^- to sections 19, 20, and 21 of the Convcj-anciug Act, 1881, in Wolstenholme Declaration and Turner's work on tho Convcvaucing' Acts. pp. GG— 72, 4th edition, 1885. ^^ ^^'"s* ^o be See note (c), Agreement III., post", p. G9, to the same effect. ^^^ purposes Should there be delay in the execution of the mortgage tho agreement 'v Tnistee itself should be registered, as being a document defining the interests of ■'^^*^- co-grautces (see p. 24, ante). Registration. Stamp duty will be paj-able on this agreement to the extent of the whole stamp duty, sum of £a (see Stamp Act, 1870, tit. "Mortgage," «S:c., sub-s. (1), and sect. 107), and on tho mortgage deed sixpence per £100 or fractional part {ib. tit. sub-s. (2)). 64 AGREEMENTS. IT. PREC. II. Recitals. luventiou. No patent yet apijlied for. R. established in manufac- tui'O. Disclosure of invention. E. to make and try speci- men, and if not elect to carry out agreement the same to be void with- out compen- sation. After R.'s election, patent to be obtained at his expense in joint names. W. to pay expenses of abortive pro- ceeding's if caused by him, together with interest. AGrllEEMENT by a Manufacturer to pay expenses of ohtaininfj a Patent — No application yet made— ^oi^t Patent — Manu- facturer ALONE to u'ork Patent — Payment of Poyalties — Option to purchase Patent — Provision for renewal of Agreement hy Surviving Partners [if any) of Ilanifactnrer. AN AGREEMENT made &g. Between W. of &e. of the one part and P. of &c. of tlie other part : Whereas W. claims to be the true and sole inventor of a method of determining the distances of certain objects from the eye of the observer by means of an adaptation of the telescope : And whereas W. has not yet applied for any letters patent in respect of the said invention : And whereas P. is established at as a manufacturer and seller of telescopes and other optical instruments : NOW IT IS IIEPEBY AQPEED as follows :— 1. W. shall forthwith fully disclose to P. the nature and extent of the said invention [a). 2. Within one calendar mouth after such disclosure and at his own expense P. shall make or adapt a telescope or other instrument in accordance with or exhibiting the said invention and make trial of the same and within a further period of one calendar month he shall in writing state his willingness to carry out the obligations on his part hereinafter contained or in default of such statement this agreement shall become null and void as to anything remaining to be done thereunder and the said invention shall continue to be the sole property of W. who shall not be liable in respect of any sum or sums expended by P. under this clause {h). 3. After P. shall have stated his willingness to carry out the obligations aforesaid the said parties shall at his expense apply for and obtain a patent in their joint names for the said invention for the United Kingdom and Isle of Man. Provided however that all moneys paid by P. in respect of any application or proceedings thereon which by reason of any wilful act or default of W. shall become abortive or abandoned (whether revivable or not) shall be repaid by W. on demand with interest thereon at the rate of per cent, per annum from the respective times when the same were so paid until the repayment thereof respectively (c) . (a) Compare this with Clause 1 of last precedent. Hero no elaborate clause is needed. {h) See as to disclosure and trial of an invention and remedies for breach of confidence in using or revealing the information, ante, p. 27. (c) No new initiatory application can, of course, be made after the accept- AGREEMENTS. Qo 4. Subject and without prejudice to the provisions hereinafter Pbec. II. contained the said parties hereto shall hold the said invention and q,7tT,7T ' patent and all other inventions and patent rights lor the time remaining being subject hereto equally between thorn as tenants in common, provisions, 5. 11. shall have the sole right for himself and partners (if an}-) Jjl^^Pf^'^.^f.e for the time being exclusive of "W. and all other persons of using iieid equally working and vending the said inventions and patent rights in- "« tenants in eluding the granting of licences at royalties. Provided however "*™'^°°- that both parties shall concur in the sale or assignment (if any) goje ri. 14, unte.) After the expiration of the time for acceptance, if no acceptance has been obtained, it seems that, as bj' sect. 4 of the Amendment Act, 1SS5 (/"),s/, p. 3.'5'2), no publication by the office is to ensue, the applicants may begin their applications de novo. This is, in fact, an abandonment of a provisional specification. In Oxhy v. Ilolden (8 C. B. N. S. G(3()), it was held (under old law) that the abandonment of a provisional specification [it^ had not been published by the office] was not a dedication to the public of the invention. No provision is made above for the default of E. in advancing moneys, or neglecting to co-operate in the application, as he would probably be in the position to make his own tenns. (d) For a provision in the case of bad debts, see f^ji. CL 17, iwsf, p. 232. 66 AGREEMENTS. Peec. II. Improve- ments, itc. by cither party to be in- cluded. R. may pur- chase W.'s interest at fixed price on notice. On death of K. his sur- viving part- ners may elect to continiiG the agree- ment. 10. Every improvement in or addition to the said invention or new discovery useful in the manufacture or adaptation of telescopes for the like purpose as aforesaid now (if at all) in the knowledge and possession of or which hereafter may be made by either party either solely or in conjunction with any other person or persons shall as far as practicable but subject to the rights therein of any such person or persons be treated as part of or as comprised in the said invention and except as to costs (if any) out of pocket occa- sioned thereby be communicated and explained by him free of charge to the other of them but no patent shall be applied for or taken out in respect thereof unless R. shall think fit and then as between the said parties at their joint cost and in their joint names subject to the rights of any such person or persons and such patent (if any) shall subject as aforesaid be also subject to this agreement in the same manner as far as possible as the letters patent to be obtained in respect of the said invention (e). 11. R. may at the end of any half-year aforesaid after having served "W. with one calendar month's previous notice in writing for that purpose and satisfying all sums (if any) then due to TV. hereunder purchase for the sum of £ all the estate and interest of W. in the said patent and any patent rights then subject hereto (_/'). 12. If R. shall die during the continuance of any patent rights for the time being subject hereto before he shall have elected to purchase the same as aforesaid his surviving partner or partners (if any) shall subject to any provisions in the articles of partnership to the contrary have the option to be declared in writing and served on W. within calendar months from the date of the death of R. to continue to carry out his part of this agreement upon the like terms as aforesaid except as provided in Clause 11. !:< AV1T>-ESS, &c. (r/). (e) As to improvements or additions, see ante, j>]). 33 — 36. (/) As to specific performance of contracts to sell patents, existing or future, see ante, p. 42. ((/) For a clause as to service of notices, see /Sp. CI. 51, j^osf, p. 2'12. AGREEMENTS. 67 III. AGREEMENT /or Loan to a Firm — Advances nif/t Interest repay- Prec. IIL able only out of fixed Share of Net Profits half-yearhj — Present Advance — Other Sums advanced according to state of Profits — Charge on Patents — No personal Liability to repay {a). AN AGREEMENT made the day of 18— Between A. B. and C. D. of &.G. (hereinafter called "the firm") Mecitak. of the one part and E. F. of &c. of the other part : Wheiieas the Title to firm is ahsolutely entitled to the patent rights mentioned in the patents in Schedule hereto: And whereas the firm has for some time past !f ^. ^^■. been engaged at its address aforesaid in co-partnership in the Lusi- fi^j^ to work ness of working the said patent rights and the granting of licences same, thereof : And whereas the said E. F. has agreed to advance the Agreement firm the sum of £ by instalments repayable together with for advances interest at the rate of per cent, per annum out of one-third payaUe'^out share of the net profits derivable from the said patent rights as of net profits, from the day of last but charged on the said patent "^'^ charged rights as hereinafter provided and not to be repayable by the fii-m ° ^^ ^^ '^' or any member thereof personally : And whereas the last half- I^ast half- yearly accounts of the said business have been duly made up and counts made ascertained as on the said day of last : And up. whereas the said E. F. has inspected the books of the said busi- Accounts for ness and ascertained the state thereof and the amount of net profits iaspe^ed^b^" derived from the said business during the two years immediately e. F., and preceding the said day of last and for the purposes accepted as hereof has accepted all the accounts relating to such period as ^°^^^^- entii'ely correct : And w^ here as the method by which the said ^f^^ method accounts have been taken is intended subject as hereinafter men- accoVntfac- tioned to be also applied in ascertaining the amount of future net ccpted for profits : And whereas in part pui'suance of the said agreement a^^certaining the said E. F. has immediately before the execution hereof ad- ^ ^<5 p^o s. vanced the firm the sum of £ part of the said sum of moneys now £ the receipt of which sum of £ the firm doth hereby advauced. acknowledge. NOW IT IS HEREBY AGREED as follows :— Operative 1. The said sum of £ and all other sums advanced here- ^^^' under shall bear interest at the rate of per cent, per annum intere^ronly from the respective times of advancement thereof but except as to repayable out the charge on the said patent rights hereinafter contained shall '^^ profits or together with the interest aforesaid be repayable only out of one- j,i^(^h^3. ^" third share of the net profits derivable from working the said (o) As to this kind of agreement, see ante, pp. 31, 32, F 2 68 AGREEMENTS. Peec. hi. patent rights and not by the firm or either memher thereof per- ■ Bonally (b). , n i i i, i£ Repayments 2. The Said payments out of net profits shall be made halt- half-yearly, yearly on every day of and day of commencing with the day of next or within thirty An instalment to be advanced each half- year if lender's re- ceipts are of defined extent at least. Charge of patent rights (with decla- ration of trust), but not enforce- able while firm performs obligations or works at profit. days thereafter respectively (c) and shall he made firstly m dis- charge of all interest aforesaid and then in or towards satisfaction of the principal moneys for the time being due hereunder and remaining unpaid. 3. The sum of £ (being the balance of the said sum oi £ ) shall be advanced in four equal instalments of £ each (d) at the respective times hereinafter mentioned that is to say if and whenever the said E. F. shall for any half-year aforesaid so long as any moneys advanced hereunder shall remain unpaid be entitled to receive out of the said net profits as hereinbefore pro- vided a sum equal to or exceeding per cent, of the entire principal sum advanced and then remaining unpaid and the firm shall have duly performed its obligations hereunder up to the time of accounts being furnished for such half-year as hereinafter pro- vided and shall not nor either member thereof have become bank- rupt or committed any act of bankruptcy whether available for adjudication or not the said E. E. shall then forthwith subject to the satisfaction of any moneys due to him on the said accounts advance one of the said instalments (e). 4. The said patent rights and all extensions thereof together with the interest of the firm in any patents hereinafter obtained by it in respect of any improvements or additions to the several inventions mentioned in the Schedule hereto or of any new dis- coveries useful for the manufactui^e of are hereby charged with the repayment of the said principal moneys and interest and the firm shall hold any patent rights sold by the said E. E. in enforcement of the said charge or any part thereof in trust for the purchaser or purchasers at any such sale but such charge shall not be enforced so long as the firm shall perform or observe its obliga- tions hereunder and work the said patent rights at such a profit at least as will admit of the said E. E. receiving each half-year out of the one-third share of the net profits for that period as aforesaid all interest then due on the principal moneys then already advanced by him and remaining unpaid but in case the firm shall make default in the performance or observance of any obligation here- When legal {b) If tlie firm are to be personally liable a formal legal mortgage instead mortgage. of this agreement should be executed. In the estimation of net profits for Mode of esti- ^^Y balf-year, and in the absence of an agreement to the contrary, interest mation of net on borrowed capital, and a fortiori the estimated receipts by the lender as profits. above provided, would not apparently be first deducted from the gross returns. See as to the mode of ascertaining profits when the person entitled is not a partner {e.g. a manager or foreman), Risliton v. OrisseU, L. E. 5 Eq. 326; Geddes v. Wallace, 2 Bligh, 270, cited in Lindley, 790 (4th ed,). (c) These extra days are mentioned in view of the charge made by Clause 4. (d) Or unequal instalments. (e) As to specific performance of agreements to lend or borrow money, see ante, pp. 43, 44. AGREEMENTS. 69 under and (where such default is capable of being' made good) Prec. III. shall for days after a notice in writing shall have been served on the firm by the said E. F. requiring it to make good the same omit so to do or in case the said share of net profits for any half-year shall not admit of the receipt by the said E. F. of the full interest thereout as aforesaid then the said E. F, may at any time thereafter notwithstanding any further advances made by him to the firm in the meantime call in the principal monej^s advanced and for the time being remaiuing unpaid hereunder together with all interest thereon aforesaid and in default of pay- ment thereof or any part thereof respectively forthwith may enforce the said charge (,/'). 5. The firm shall keep at its usual place of business all proper Accounts, books Sic. [CldKsc 9, Agreement I., p. Gl, anfe]. Inspection, 6. [For Clause as to payment of fees, use >Sj). CJ. 37, pont^ p. 238.] ^^' 7. The firm shall at all times during the continuance hereof fees™^'^ defend every proceeding for revocation of any letters patent com- Defence of prised herein, and protect the same from infringement. patent. 8. Notice of the effect of this agreement shall forthwith be Notice of this indorsed on the deed of partnership dated &c. of the firm and also j^^'^'^^?^^':'*,**^ on the several letters patent mentioned in the Schedule hereto and on partner- signed in each case by the several persons parties thereto {(j). Ix ship deed and WITNESS &c. (70 . P^*^°*'- The Schedule, (/) A formal legal mortgage could, of course, be executed, comprising tlie terms of this agreement, exceiDt as to the mere charge, and then registered. The object here, however, is to leave the firm quite unfettered in its dealings with the patents before the charge becomes enforceable, and to avoid any exposure of the affairs of the firm, which might result from registration of the mortgage. Notice of the charge is to be indorsed on the patent. (Clause 6.) If the agreement be executed as a deed, then sects. 19 and 20 of the Convey- ancing Act, 1881 (post), conferring powers of sale, &c., will operate. By sect. 2 (vi.) of that act, " a mortgage " may mean " any charge on any pro- perty for securing money." See Wolstenholme and Turner's Conveyancing Acts (4th ed.), notes to sect. 21 of the Convej-ancing Act, 1881. A declara- tion of trust, as above, is recommended. The object is to obtain, if necessary, an order under the Trustee Acts, 1850 and 1852, vesting the legal estate in the purchaser, in case the patentee will not, or cannot, join in the assignment. See note (?f) to Agreement I., ante, p. 63, to same effect. ((/) The indorsement seems advisable, as the agreement, not being a legal mortgage, will not be registered. See as to registration under the new act and the equitable doctrine of notice, ante, pp. 23 — 25. The notice will pre- vent licences being granted at premiums, or sales of the patents, without the concurrence of E. P. See as to assignees of patents taking with notice of the claims of a prior assignor to a share of tlie net profits being bound to account to him for the profits received by them, Werdermann v. Socit'te Gi'neraJc d'EIectrkltc, L. E. 19 Ch. D. 246 (Jesscl, M.E., and Lush and Lindley,L.JJ.). (/i) This agreement should be by deed (see note (e), antr), but cannot be Agreement to registered. Ibid., and also pp. 23 — 25, ante. be by deed. Stamp duty ad rah on the whole sum of £ must be paid as on a Stamp duty. mortgage. See Stamp Act, 1870, tit. Moktgage, &c. The lender will be under no liability as a partner. See Partnership Law ^/* h^|"l"y Amendment Act, post, p. 368, Appendix, and ante, p. 31. ° enrer as For a clause as to service of notices, see Sp. C'J, 51, post, p. 242. Service of notices. 70 AGREEMENTS. IV. fEEc. IV. AGEEEMENT for Sale of Moiety of a Pfl/e^/— Provisional Protection ohiaincd — Fur chase-money in three Indahnents pay- able (1) at date, (2) on acceptance of Complete Specification, (3) on Grant of Prt/c;;^— Conditions of working— Eescission before Grant in certain events. day of Between Hecitah. Invention and provisional protection. Agreement for sale of moiety of home patent, &c. Part of pnr- chase-money now paid. Complete specificntion to be pre- pared. Further part of purchase- money to bo paid after acceptance. On such pay- ment C. D. to be made co-applicant. AN AGEEEMENT made the — A. 13. of &c. (hereinafter called "the inventor") of the one part and C. D. of &c. of the other part : Whereas the inventor has invented certain improvements in &c. [title of invention'] and has obtained provisional protection within the realm in respect of such invention as from the day of last (a) : And whereas it is agreed that the said C. D. shall for the sum of £ pur- chase one half share in the patent and any extension thereof {b) obtainable in respect of the said invention : And whereas as part of the said purchase-money the said C. D. has immediately before the execution hereof paid the inventor the sum of £ the receipt whereof is hereby acknowledged (c) . NOW IT IS HEEEBY AGEEED as follows :— 1. The inventor shall forthwith prepare a complete specification of the said invention and with all due speed procure the same to be accepted at the patent office. 2. Within days after written notice of the acceptance of the complete specification {d) shall have been served on him by the inventor the said C. D. shall pay to the inventor the sum of £ [r) further part of the said purchase-money. 3. On payment of the said sum of £ the said C. D. shall be entitled to be made an applicant for the patent jointly with the inventor who shall then forthwith obtain the amendment of his application in tliis respect accordingly (/). (oA See notes («), {h), and (c) to Agreement /., above. {h) As to extensions, see ante, p. 19, and jjos^, pp. 114, 142. _ (c) This should be a small percentage by way of deposit. Until the complete specification is accepted a ]iurchaser wonld hardly pay a substantial part of the purchase-money. After the acceptance the purchaser pays a more substantial sum, and then should be entitled, as above provided, to be made a co-applicant. Ul) See Patents Eules 2o,post, p. 338, as to notice of acceptance. (e) A substantial part of the purchase-money. See note (c). (/) As to the amendment of the application in this respect, see atite, p. 29. AGREEMENTS. 71 4. All costs and expenses incurred by the said parties on account Peec. IV. of any opposition to the grant of the patent shall be borne by the Costs of oppo- inventor exclusively {(j) . _ sition to grant 5. As soon as the patent shall be granted as aforesaid and to be borne duly scaled the said C. D. shall pay the inventor the balance of ^^^^^l^^^„ the said purchase-money. of patent ° G. The patent and every extension thereof shall be hold and balance of enioved by tlie parties in equal shares as tenants in common sub- purchase- ■I, ,^ e ^■, '- • tj • moncv to bo ject to the tollowmg conditions: — paid. (a) The fees for renewal shall be the annual ones and together Conditions of with any fees paj^able for extension of the times for ownership, renewal respectively shall be borne equally by and be- Renewal fees tween the parties and if either party shall at any time or f^^.'^toX^res. times hereafter make default in or object to continue the ° payment of the said fees the other party shall bo at liberty to pay the same or to continue the payment thereof as for the remainder of the term or any shorter period and may claim from the defaulting or objecting party aforesaid a retm-n of one-half of any payment so made and shall have a charge on his share in the patent and extension (if any) thereof for the sum so returnable together with interest thereon from the time of demand thereof at the rate of 5 per cent, per annum (//). (b) Each party shall be unrestricted in the w^orking of the Unrestricted patent and grant of licences at royalties and shall not ^^°^!'^^f; f^*^*' be liable to account for any profits or royalties receivable licences, at by him thereby or thereunder but no licence except at premiums, royalties shall be granted otherwise than by the parties jointly who shall be entitled to all fines and premiums thereunder in equal shares (/)• (c) The conditions in this clause shall as far as possible apply Same condi- ^ ' . ,,1,'TiJi L- £ • \ ,^ tions to apply to any patent obtained by the parties for any improve- ^^ patents for ment addition or discovery hereinafter mentioned {J). improve- 7. If the inventor shall under the present or any new applica- ^ents, &e. tion fail to obtain the acceptance of a complete specification (A-) he Jf^n^nof '''^" {'/) Opposition can onlj- arise after tho acceptance of tlie complete specifi- cation (sect. 11). ., . . . c t. ■ {h) As to the liability of a co-owner for contribution m respect ot iees m the absence of any agreement on tbo subject, see Chapter on " Assignments," post, p. 122. (i) As to the working of a patent and grant of licences by one co-owner alone, see jjost, pp. 118 (i! secj. Condition (b) may be modified by providmg for the partition of the patent in some respects (see Agreement VIZI., post, and sect. 36 of the now act). For a partition deed, see Assi(jnment XI., post, p. IGd. For further provisions, see Assiijnmads IV. and V., j^ost. (J) See Mr. T. Aston's remarks at p. 2 of his work (notes to sect. 4 of the new act) as to the advisability of co-grantees entering into an agreement defining the conditions of ownership as soon as, if not before, the joint patent is obtained. (A-) As to the time for obtaining the acceptance, seo p. 14, ante, anil sects. 8 and 9 of the new act, and sect. 3 of the Amendment Act, ISSd (Appendix, 2^ost). 72 AGREEMENTS. Teec. IV. accepted, C. 1). may abandon pur- chase and claim return of deposit ■with interest. Improve- ments, &c. to be shared equallj^ in the terms hereof. If patent not obtained, moneys to be returned, sub- ject to any claim for damages. Transmission clause. shall then forthwith give notice in writing to the said C. D. of such failure and the said C. D. may within weeks after the receipt of such notice abandon the said purchase and claim a return forihwith of the said sum of £ together with interest thereon at the rate of per cent, per annum from the date hereof until repayment but if the said C. D. shall within the said period omit to give notice in writing to the inventor of his having abandoned the said purchase he shall be deemed to have elected to take the benefit of another application and in that case the said parties shall thereupon forthwith (if not precluded) (/) jointly (but at the expense of the inventor) make and prosecute a new appli- cation for the said patent (w). 8. Each party shall from time to time after making any im- provement in or addition to the said invention or discovery useful &c. [Form 15, ante, p. 52, hnf at the end sayinfj, "subject to the terms of Clause 6 hereof."] 9. If by reason of opposition to the grant thereof or otherwise the said patent cannot be obtained the said C. D. shall be entitled forthwith (subject to the provisions of Clause 7) to the return of all moneys paid by him as aforesaid but without interest thereon or in default of payment after demand together with interest thereon from the time of demand thereof at the rate of per cent. per annum until repayment but without prejudice to any claim for damages by either party against the other of them on account of any act or default whereby such failure to obtain the patent ensued {n). 10. Except where in any case the context requires a different interpretation the expression " the inventor " or " the said C. D." or other expression referring to either of the said parties where- soever used herein shall extend and be construed to apply also as far as possible to the assigns of the person so designated. In WITNESS &C. (o). (?) As to abandoned applications, see note (c) to Agreement II., ante. {m) The object of the above clause is to ensure care in the preparation of the specification, and also to provide against its non-acceptance, and the delay- thus occasioned. If it be omitted. Clause 9 should be slightly altered, by providing for the grant being obtained by a certain date, and omitting reference to the above clause. (?i) There is no implied warranty of title to the invention in an agreement to sell a patent (or share therein). See chapter on "Assignments," post, p. 112. (o) For a clause as to service of notices, see Sp. CI. 51, post, p. 242. AGREEMENTS. 73 AGEEE^IENT for Sale of Patent (ffer acceptance of Complete Peec. V. Specif cation — VENDnUTOMANUFACTURK FOK PuKCHASER icitJtin District — Exclusive Licence for saine District — Eoyalties on Goods sold to stra)igers — Clauses as to prices, dclivcnj, accounts, and disposition of Goods on determination of Licence. AN AGREEMENT made the day of IS— Between A. B. of &e. of the one part and 0. D. of &c. of the „ . , other part : Whereas the said A. B. as the inventor of a new and jy^gntion improved process &c. [title'] made his application for letters patent Acceptance on the day of last and obtained the acceptance of complete of a complete specification in respect of the said invention on the specification. day of last {a) : And whereas the said A. B. Vendor has established himself at aforesaid in the business f,'[^i^^^ J^ ''' of &c. and is possessed of divers j^lant machinery utensils and other effects necessary or suitable and ready for the manufacture of the said : And whereas the said C. D. is desirous of Desire to purchasing the said invention and the letters patent obtainable in purchase respect thereof and every extension of the said letters patent and 1^ vendor to the exclusive benefit of all improvements in or additions to the manufacture said invention or any new discovery useful for the manufacture ^""^ purchaser. of now (if at all) in the knowledge and possession of or which hereafter may be made by the said A. B. (Jj) and of securing the services of the said A. B. in the manufactm-e of . NOW IT IS HEREBY AGREED as follows :— 1. The said A. B. shall sell and the said C. D. shall piu'chase Sale for sum the said invention patent and rights aforesaid for the sum of ^^almentr" £ of which the sum of £ has now been paid (the (one now receipt whereof is hereby acknowledged) and the sum of £ paid). the remainder thereof shall be paid at or immediately before the execution of the assurance hereinafter mentioned. 2. The said 0. D. shall be entitled to be made an applicant for C D. to be the grant of the said patent jointly with the said A. B. who shall '^"|"^j? ^^°" at his own expense forthwith procure the amendment of his application in this respect {c). 3. All costs and expenses incurred by the said pai-ties on account Costs of op- of any opposition to the grant of the said patent and of obtaining ^"aurbome the grant thereof shall bo borne exclusively by the said A. B. {d). by*A B.™ (a) See notes (a), {h), and (c) of Agreement I., ante. {h) As to improvements, &c. , being included in a piu-chase, and modes of providing for the same, see ante, pp. 33, 34. (c) As to sucli amendment, see ante, p. 29. (d) Or equally between the parties, or otherwise. AGREEMENTS. Prkc. V Assisjnmcnt of 2)atent to C. D. after irraut. If patent not obtained, deposit to be returued ■\vitliout pre- judice to claim for damages (if any). Vendor to manufacture for purchaser at fixed prices for a term. Good manu- facture. Vendor may manufacture and sell goods to others within district. Monthly accounts, in- sj)ection, &c. 4. Tlie said patent shall be obtained with all due s^Dced and immediately after the sealing thereof shall at the expense of the said C. 1). but subject to the payment of the balance of the said purchase-money be assured together with the exclusive benefit of any extension thereof to the said C. D. by the said A. B. so that the entirety thereof shall become vested in the said 0. D. (e). 5. If by reason of opposition to the grant thereof or otherwise the said patent cannot be obtained the said C. D. shall be entitled forthwith to the return of the said sum of <£ without interest or in default of payment &c. [Ciatise 9 of hid Agreement]. G. Subject as aforesaid the said A. B. shall for a term of years from the date hereof within the borough of or other place or places in the said county of approved of by the said C. D. manufactiu-e for and supply to the said C. D. or his nominees all such articles aforesaid which can be manufactured according to the said invention as the said C. D. shall from time to time require not exceeding in number per calendar month and at prices not exceeding the prices mentioned in the Schedule hereto in respect of the class of articles so supplied and shall manufacture the same in a good and workmanlike manner and execute all such orders with due and necessary dispatch. 7. The said A. B. shall at all times during the said term subject as aforesaid be at liberty wathin the said borough or other place or places aforesaid to manufacture the said articles in such numbers as he may think fit and within the said county to sell the same to any person or persons other than the said 0. D. or his nominees at such prices respectively as shall not be less than per cent, over and above the prices for the time being payable by the said C. D. for corresponding articles as aforesaid (/) and so that the said A. B. shall pay to the said C. D. on all such articles when sold by him the royalties mentioned in the schedule hereto according to the class thereof respectively {(j). 8. All accounts between the said parties shall be made up and settled at the end of every calendar month the first whereof com- mencing at the date of the said assurance and accordingly the said A. B. shall keep at the said manufactory or other usual place of (e) For a precedent of siicli assurance, see Assignment VII., p. 158, post. {/) This clause will operate as a licence, which, by Clause 10, is to be exclusive for the county, except that it is implied that C. D. himself may also use the invention within the same district. A licence simply expressed to be exclusive excludes the licensor, apparently {post, p. 182). See, also, p. 24, ante, as to a licence before the grant of a patent. For contents of a licence, see jip. 191 — 203, post, and pp. 223 — 25, post, and also Chapter on " Licences Generally," and " Precedents of Licences," jjosi. The agreement can, of course, be added to by the insertion of other clauses relating to licences. ((/) The royalties become payable as soon as the sale is effected — tbat is, when the legal title of the purchaser to the articles first accrues. Conse- quently, the actual payment for the articles is not necessarily an element in the question of sale or no sale. See Benjamin on Sales (Chapter on " De- livery ") and Williams's Personal Property (Chapter on "^Alienation of Choses in Possession.") AGKEEMENT!?. <0 business of his for tho time being all proper books of account &c. Teec. V. [CkiKse 10 of Agreement I., ante, omitting reference to licences and " ' ot/ter dealings, substituting "month" for "half-year," and omitting reference to i^aying expenses of an accountant and the remaining matter.'] [). All articles so supplied to tho said C. D. or his nominees shall Expenses of if delivered within the said borough {/,) be delivered free of expense ^^^^ ""^ to him or them but otherwise shall be delivered at his or their expense. 10. The said C. D. shall not during the said terra license within Turchaser not the said county any other person or persons than the said A. B. to ^'JiJ^^'^J'^^n manufacture or sell the said articles. vendor 11. The said A. 13. shall from time to time after making any within tho improvement in or addition to tho said invention &c. [Form 10, j^*"^*;^^ ante, p. 52] and every such improvement addition or discovery i^n[°'&c. shall if the said CD. shall not otherwise direct be applied to the manufacture of the said articles to be svipplied to him or his nominees as aforesaid (/). 12. The said A. B. shall not during the continuance of the said J'^^^^^'^J^^J*" patent or any renewal thereof or any other patents for the time iutniXin being comprised herein (except as hereinbefore provided) manu- similar facture or sell any articles aforesaid or such as shall be similar in articles, character to the said articles or be engaged or concerned in or pro- mote any business or company for tho manufacture or sale of any such articles respectively or do any act or thing calculated to depreciate the value to the said C. D. of the said invention. 13. The said C. 1). shall be at liberty to determine the agree- Determina- ment and licence aforesaid relating to tho manufacture supi)ly and ^^^f^^^^^^' sale of the said articles on the said A. B. wilfully neglecting or pioy vendor refusing or for the space of one calendar month becoming unable on default in from any cause whatever to execute any order aforesaid or other- tS!:?"'" wise making default in the performance or observance of any of bankruptcy. his obligations hereunder or on the said A. B. becoming bankrupt or committing any act of bankruptcy whether available for ad- judication or not. 14. In the event of the said agreement and licence as to the Disposition of manufactm-e supply and sale of articles becoming determined by f,7dotermi-' effluxion of time or any other event the said (J. D. shall be at nation of liberty so long as the same shall remain unsold by the said A. B. agreement to call for the supply to him or his nominees at the said prices ''""^ licence, respectively mentioned in the Schedule hereto of all articles (if any) manufactured as aforesaid or any of them then in the possession and ownership of the said A. B. and not subject to any previous orders of the said C. D. or at the option of the said CD. as to any such articles to claim royalties thereon payable on demand of {h) Or the limits -n-ithin which A. 13. will seud his own carrii."rs. In tho absence of agreement iu this respect, a vendor is not obliged to send tho goods. (Benjamin on Sales (;3rd ed.), p. 670.) (/) As to improvements, &c., being comprised in a purchase, see ante, pp. 33, 34. 76 AGREEMENTS. Teec. V. the respective amounts mentioned in tlie Scliediile hereto less per cent, in lieu of any royalties on the sale thereof respectively. Provided always that subject as ahove mentioned the said A. B. shall be at liberty at any time or times after the deter- mination of such agreement and licence to sell any such articles last aforesaid at any prices respectively whatever but shall immediately after any such sale pay to the said C. D. royalties thereon of the respective amounts mentioned in the said Schedule and that after such determination tlie said A. 15. shall give the said C. D. every facility at all reasonable times to ascertain the number and class of such articles and the transactions of the said A. B. in regard thereto respectively. Transmission 25. [ Tr(tN,vnmio)i Clttuse as in last Precedent.'] clause. T- p / • \ In "WITNESS, CCC. [J ). The Schedule. (y) In respect of the licence, this agreement should be executed as a deed, see ante, pp. 16, 24. This agreement should be registered, qua the licence, after the assignment has been registered. As to registration, see ante, pp. 23— 25. For a clause as to service of notices, see Sp. CI. 51 ; ^ws#, p. 242. AGREEMENTS. 77 VI. AGREEMENT for Sale of Foreign and Colonial Patentn {in Peec. VI. course of being obtained) — Special Clause enabling Purchaser to retire from an// Purchase. AN AGREEMENT made &c. Between A. B. of &c. (hereinafter called " the vendor") of the one part and 0. D. of &c. (hereinafter called " the purchaser ") of the other part [^recite the invention and Bedtah. that provisional protection has been obtained at home, as in Agreement IV. ante {a)'\ : And whereas the vendor has lately made or is about to Applications make application for patent or other similar privileges (hereinafter J.^J^'J^V^^ ^^°J called " patents") for the colonies and foreign countries mentioned Jo^^igi ^" in the Schedule hereto in respectof the saidinvention : And wiip:reas patents. the vendor has agreed with the purchaser (by separate contract as Separate to each patent {b) ) to sell to him the said patents at the respective l^^^^^^^ prices mentioned in the said Schedule : And whereas the purchaser ^^ ^^^ has immediately before the execution hereof paid to the vendor ^^^^^^^^i the sura of £ (apportioned between the said patents as in deposit. the said Schedule mentioned) part of the said purchase-money the receipt whereof is hereby acknowledged. NOW IT IS HEREBY AGREED as follows :— 1, The vendor shall at his own expense forthwith commence or Vendor to continue and with all due speed take and prosecute the necessary ^""Jj.^^^jj^g steps and proceedings for obtaining the said several patents. v^oi^qq mgs. 2. The balance of the purchase-money for any patent shall be Balance of payable by instalments in the amounts and at the times respectively purchase- ^^ in the Schedule hereto mentioned and any instalment not paid at or "Jio^n^n/^ ' before the time appointed for payment shall thenceforth bear stalmonts, as interest at the rate of per cent, per annum until actual v^^ Schedule. payment thereof. 8. The purchaser may at any time not later than weeks Retirement before the time fixed in the Schedule for the completion of the fJomauy pur- purchase of any patent retire therefrom by then serving the vendor chase on re- («) Excoi^t (if time admits) as to countries whicli are members of the Inter- national Union {ante, p. 3G), a provisional, not a complete, specification should only be furnished, because publication first takes place on the acceptance of the complete specification (sect. 10 of the Act of 1S83, Appendix, post, p. 310), which would be a bar in many colonies and foreign countries to the obtaining patents there. See the Articles of the International Convention, in tho Appendix, post, p. 365. {b) An entire contract cannot be apportioned (see ante, p. AG). Tho contracts are here to be supposed to be verbal ones, as, if in writing, they should either be fully recited here or be sufficient without tho necessity of this agreement. 78 AGREEMENTS. Peec. VI. linquishment of moneys paid, &c. Purchases completed at times and places as per Schedule. If vendor discontinue, purchaser may (laim return of moneys and interest. Or, with necessary powers, him- self continue proceedings. Expenses of purchaser repaid with interest. If any patent unobtamed through defect in title, moneys re- turned with- out interest, &c. Service of notices. with a written notice for that purpose wherehy also the purchaser shall offer to relinquish all claim to any moneys paid by him m respect of the said purchase and also to pay on demand any moneys then already due in the like respect and remaining unpaid. 4. The purchase of each patent shall be completed at the time and place in respect thereof mentioned in the Schedule (e). 5. If the vendor shall unreasonably make delay in or discontinue the proceedings in respect of his application for any patent and shall for more than days after he shall have been requested in writing by the purchaser to continue the same omit so to do the purchaser may at any time thereafter before the vendor shall (if at all) continue such proceedings either retire from the purchase of that patent and shall then accordingly be entitled to a return of all moneys (if any) paid by him in respect of such purchase together with interest thereon respectively (as for money lent) at the rate of per cent, per annum from the times of payment untd the repayment thereof respectively or if time will so admit may at the expense of the vendor and by means of a power of attorney or other (if any) necessary powers given by him (who shall accordingly confer the same) himself continue or cause to be continued the said appHcation and all proceedings consequent thereon until the said patent shall be granted and vested in the purchaser and all moneys (if any) paid by the purchaser in the due and proper exercise of any such powers shall be repaid by the vendor on demand together with interest thereon respectively at the rate last aforesaid from the time of payment until the repayment thereof respectively notwith- standing that from any cause not attributable to the purchaser the patent shall not finally be obtained. 6. If through any cause attributable to the state of the title to the invention in any country aforesaid the patent in respect thereof cannot be obtained the purchaser shall be entitled on demand to a return of all moneys paid by him for the purchase of such patent but without any interest thereon or (subject as m the last clause provided) any claim for damages or compensation on account of the failure to obtain the patent. 7. [For a clause as to service of notices, use Sp. C/. 51, jyosf, p. 242.] In witness, &c. {d). The Schedule. (c) This can, of course, only be finally effected in each country itself, and according to the laws thereof. (cZ) As to the specific performance of agreements to sell patents, see ante, pp. 42, 43. AGREEMENTS. YII. AGREEMENT /or Sale of Patents to a Trustee /o/- a Limited Peec. Vli. Joint Stock Company [in course of formation) — Pitrcl/ahc- moiieij in Cash and SJtarcH [a). AN AGREEMENT made &c. Between A. B. of &c. (herein- after called " the vendor ") of tlie one part and C. D. of &c. as trustee for the company (hereinafter mentioned and called " the Mccitah. company ") now in course of formation of the other part : Whereas Vendor cn- the vendor is entitled under an assignment dated &c. and made &c. titled ly to the invention and patent in respect thereof mentioned in the "'^■'^'^^'"^nt Schedule hereto : And whekeas the vendor has agreed with the . ^ said C. D. as such trustee for the sale to the company at the price gfii to com- of £ of the said patent and all extensions thereof and the pauy for exclusive benefit of all improvements in or additions to the said ^ *^® invention or any now discovery relating to the manufacture of an equal in- now (if at all) in the knowledge and possession cf or which terest in any hereafter may be made by him (Z*) : And whereas the company is ™P^o^'e- about to be formed under the Companies Acts 18C2 to 188t) with ^ the name of The Company Limited having the object be fLrm^ to (amongst others) of acquiring the said patent : And whereas the purchase memorandum and articles of association of the company have with P'^**^°*- the privity of the vendor been already prepared : And whereas and"a"rtides™ the nominal capital of the company is provided to be £ already jn-e- divided into 15,000 shares of £ each (c). NOW IT IS P^^-ed. HEREBY AGREED as follows :— Capital and 1 . The vendor shall sell and the company shall purchase at the ^ '^'^^,^" (o) This precedent is intended to answer the double purpose of an ordinary agreement for sale to an individual of a jiatent already obtained, and of dealing with tlio case of an inchoate company as the purchaser. For more elaborate or other forms of purchases by companies, see Mr. P. B. Palmer's work on Company Precedents (3rd ed.), 188i. {h) As to improvements, &c., see ante, pp. 33, 34. (c) See Palmer's Company Precedents (pp. 1 — 6) as to the three different kinds of contracts for the purchase of property by a company formed for the purpose. The above agreement is according fo the first plan, and involves the adoption of it by the company when formed. This will be done by an agree- ment between the vendor, the trustee, and the company (see Forms 1 '1 and 13 in Palmer, pp. 30, 31), which is intended for indorsement on the original contract, with or without modifications thereof. The two other kinds of con- tracts are expressed to bo made with the company itself, and not a trustee. The memorandum usually states it to bo ono of the objects of tlic company to acquire the property in question, and the articles generally contain a clause empowering the directors to piit the seal of the company to the contract ag 80 AGREEMENTS. Peec. VII. price of £ the invention and patent mentioned in the Purchase- money in casli and siiarcsM ' Day fixetl for completion and interest payable if purchase not then com- pleted. Improve- ments, J^;^-;" namely the sum of £b on the day of 18— (. rescind this agreement without prejudice to the recovery of any moneys then already due to him in respect of the said sums of £b £c or £d (m) or any interest thereon as aforesaid respectively or to any right of action then already accrued to either party hereunder other than in respect of the said sum of £e. 13. An acknowledgment and undertaking by the said A. B. under sect. 9 of the Conveyancing and Law of Property Act 1881 [71) shall as to every patent for the time being comprised herein until an assignment shall be made thereof as aforesaid be implied herein. 14. \_Transmimon Clause, Form 25, ante, p. 56] (o). In witness, &c. (j)). The Schedule. (A-) The day fixed for the payment of the last instalment but one, namely, £l). This is, of course, a matter of arrangement. ( Z) There "will be no apportionment of any annual sum on determination, as such sums are not in the nature of income. The Apportionment Act, 1870 (33 & 34 Vict. c. 35), sect. 1, only applies to periodical payments in the nature of income. {m) But not, of course, the sum of £e. Instead of rescinding, the vendor can sue for specific ijerformance. (ii) See 2:>ost, p. 373, Appendix, (o) A licence is not assignable unless its terms so j^ermit. {Post, p. 184.) The present agreement being one for ultimate purchase, on which part of the purchase-money is expressed to be paid at once, "will j^robably, ho"wever, be held transmissible, "without the insertion of a transmission clause. ( p) The agreement should be under seal in respect of the licence, and for the purpose of being notified on the register. SeejMst, p. 184, as to the seaKng, and ante, p. 23, as to registration. For a clause as to service of notices, see Sj). CI. 51, post, p. 242. AGREEMENTS. 93 XII. AN AGEEEMENT for Sale on the Hire System of a Patent I'sec. XII. {varying last Precedent) — Exclusive Licence imtil Assign- ment — Premium — Eoyalties half-yearh/ until total fixed Minimum jMid [a). AN AGREEMENT made &c. Between A. B. of &c. of the one part and C. D. of &c. of the other part : Whereas the said Recitals. A. B. claims to be entitled to the patent mentioned together with PJj^™ ^^^^ the invention comprised therein in the first schedule hereto : And ^^^,5^.^ ^f " wnEiiEAs the said C. D. is desirous of purchasing the said invention c. b. to and patent and all improvements or additions to the said invention acquire the or other discoveries useful for the manufacture of now (if at P^^^cut. all) in the knowledge and possession of or which may hereafter he made by the said A. B. and until completion of the purchase of obtaining a sole and exclusive licence in respect of the said invention patent and other premises aforesaid upon the terms hereinafter appearing. NOW IT IS HEREBY AGREED as follows :— 1. In consideration of the sum of £ this day paid by the Grant of said C. D. to the said A. B. (the receipt whereof is hereby acknow- 5'JJ:jJ^JjJ^^j^^ji ledged) and also in consideration of the covenants for payment of completion royalties and otherwise as hereinafter expressed the said C, D. of purchase, shall be entitled from the date hereof &c. [as in Clause 1 of last Precedent.'] 2. The said C. D. shall for each half-year ending on the Royalties day of or day of during the continuance of payable half- this agreement pay to the said A. B. for every manu- manufacture. factured by the said 0. D. or his sub-licensees (if any) under the said licence the royalty mentioned in the second schedule hereto according to the size and description of the said . 3. The said C. D. shall keep at his usual place of business all Accounts 1 1 11 1 p r 7^ 1 •> J. r 1 n Kcpt, inspec- proper books of account and shall make cvc. \_lwnn 16, ante, p. ol.J tiunfumish- ***** in-ofac- \_For Clauses 4 and 5 as to manufacture according to the specification, l?^l^^^^^^ and inspection of factory, use Licence II., post, p. 248; and for Clauses d^^ggg 6 — 10 as to non-assignment 8fc. uithout consent, not disputing the 4—10. (o) See observations on this kind of agreement, ante, pp. 37—39, and note (a) to last Precedent. 94 AGREEMENTS. Prec, XII. validity of the patent^ detection S^r. of infringements, payment of fees (^c, and defence of^mtent 8^"c. use Licence III., j^ost, p. 251] (tj). Improve- ments &c. to be comprised herein. Assignment on payment of royalties up to fixed minimum. Royalties suspended during pro- ceedings, or to cease if patent de- clared void, but final cesser to be in satisfaction of damages. Licensor may rescind this agreement in certain events. 11. The said C. T>. shall he entitled during the continuance of the said licence to the sole and exclusive right &c. [Clause 8 of last Precedent as to Improvements ^c.'] 12. If after taking the accounts for any half-year it shall be found that the total amount of royalties from the date hereof up to the end of such half-year received by or payable to the said A. B. equal or exceed the sum of £ the said C, D. shall then be entitled at his own expense subject to the satisfaction by him of all moneys then due hereunder to an assignment of the said invention and patent absolutely and such assignment shall contain covenants by the said A. B. &c. [As in Clause 9 of last Frecedenf] but until satisfaction of all moneys for the time being due hereunder the said C. D. shall before the execution of the said assignment continue to pay royalties as hereinbefore provided (c) . 13. If the said patent shall before the time when the said C. D. shall first become entitled to an assignment thereof as aforesaid become wholly or as to some material part of the said invention void no royalties not then payable by reason of any ah-eady manufactured by the said C. D. or his sub-licensees (if any) shall become payable either at all and in that case this agreement shall absolutely determine without prejudice &e. &c. and in the event of such an appeal the right of the said A. B. to the payment of the suspended or and continuing royalties shall revive. Provided ALWAYS that the final cesser &c. [Use Clause 2 of Licence VII., post,^. 268]. 14. Provided always that if the said C. D. shall make default for one calendar month in payment of any royalties due here- under or shall commit a breach of any other of his obligations hereunder and (where such breach is capable of being made good) shall for the space of daj^s after he shall have been served by the said A. B. with a notice in writing requiring him to make good the same omit so to do or shall become banki'upt or com- mit an act of bankruptcy whether available for adjudication or not or shall not in any half-year aforesaid manufactiu'e by himself or his sub-licensees (if any) of the said articles at least according to the said invention or any improvement or addition thereto or new discovery as aforesaid then the said A. B. may at any time thereafter before the said C. D. shall become entitled to the assignment of the said invention and patent as aforesaid by notice in writing served on the said C. D. forthwith rescind this agree- ment but such rescission shall operate without prejudice to the (5) As to certain other covenants which, also might be inserted, see note (e) to last Precedent. (c) The interim royalties might be considered as somewhat in the nature of interest on the purchase-money. The ad valorem stamp duty on the assignment should, it is presumed, be calculated on the aggregate of royalties as they should stand when the licensee first became entitled to the assignment. As to the necessity of the assignment, see note {j) to last Precedent. AGREEMENTS. 95 recovery by the said A. B. of any royalties or other moneys due at Peec. XII. the time thereof or to any right of action by either party then ah'eady accrued hereunder (d). [For a Clause as to service of notices use Sp. CI. 51, j^ost, p. 242, Acknowledg- and for Clauses as to achioiv'ledgments S^-c. of the patents, and the ™^''* '^.'^- ^"^^ Transmission Clause, see the last two Clauses of the last Precedent]. ck^^!^^''''' In witness, &c. (e). First Schedule. Second Schedule. {d) As tlie licensee need only stop using the invention, in order to avoid further liabilities, no power is given for him to determine the agreement. _ (e) See notes (o) and ( p) of last Precedent as to the assignability of the licence, and its being under seal, and the registration of it. 96 AGREEMENTS. XIII. Peec. XIII. AGREEMENT forming a Syndicate to purchase a Contract FOR Sale of a Patent, and to sell the Contract or Patent to a Company or otherwise. AN AGREEMENT made &c. Between A. B. of &c. and C. D. of &c. of the one part, and the several persons whose signatures addresses and descriptions are given in the Schedule hereto {a) of the other part : Whereas \_rccite the grant title and oicnership of the imtent'\ : And whereas by a contract in writing dated &c. and made between E. F. (hereinafter called the "vendor") of the one part, and the said A. B. of the other part the vendor hath agreed with the said A. B. for the sale to him at the price of £ of the said patent together with the benefit of improvements or addi- tions thereto and any discovery relating to the manufacture of made or acquired by the vendor as therein mentioned : And whereas on the execution of the said contract the said A. B. paid the vendor the sum of £ part of the said price : And whereas the several persons parties hereto have agreed to unite in purchasing the benefit of the said contract and to form themselves into a syndicate for that purpose. NOW IT IS HEREBY AGREED AND DECLARED as follows :— 1. A syndicate is hereby established between the several persons parties hereto (hereinafter called the " subscribers") for the purpose of acquiring the benefit of the said contract. 2. The capital of the syndicate shall be the sum of £ which shall be considered as divided into shares of £ each and shall be subscribed for by the respective subscribers in the Recitals. Title of present owners. Contract to sell to A. B. A. B. paid deposit. Agreement by parties hereto to unite in pur- chasing con- tract. Syndicate formed. Capital and shares. (a) As a syndicate is a partnership or company {New Homhrero Phosphate Co. V. Erlanger, L. R. 5 Cli. D. 73), notice must be taken here of sect. 4 of the Companies Act, 1862 (25 & 26 Vict. c. 89). That section j^rovides that no company, association, or partnership consisting of more than twenty persons can be formed for the purj)ose of carrying on any business (not being that of banking, as to which ten persons are the limit) that has for its object the acquisition of gain, unless it is registered as a company under that act, or formed by some other act of Parliament, or letters patent, or is engaged in working mines within and subject to the jurisdiction of the Stannaries. See Smith V. Anderson (L. E. 15 Ch. D. 247), as to a trust investment involving dealings with shares subscribed for by the public in answer to a prospectus, not being an illegal association under sect. 4 of the Companies Act. The dis- tinction was there drawn between the case of trustees and that of directors. AGREEMENTS. 97 number of sliares mentioned opposite their respective signatures in Prec. XIII. the Schedule hereto. '3. The said A. 13. and C. D. shall be trustees of the syndicate A. B. and with power to make calls on the subscribers from time to time on twsan shall bo necessary to vest the said contract or his interest there- scribed, under in himself and the said C. D. as such trustees aforesaid. 7. At any time after the said shares shall have been Sale to per- subscribed for the trustees may sell the said contract and the ^^^^ °^' *:?™" benefit thereof or after having acquired the said patent may sell j-lzed with the same in its entirety or for any district or districts to any power for private person or persons or to any firm or joint stock company ?^*Y^tt° with limited liability and may form or promote the formation of any such company and agree to accept as the consideration for any such sale a sum in cash or fully paid-up shares or debentures of the said company or other valuable consideration as they shall think fit subject to any resolution in general meeting which may be passed by the syndicate as hereinafter provided (h). 8. No dealing Avith the said contract or the patent otherwise No dealings than by way of sale as aforesaid shall take place unless the same '^"^^^ contract shall have been authorized by resolution as aforesaid. other than by 9. Three days' notice at least of any meeting shall be given to sale except the other subscribers by the persons convening the same who must ^'}^^ consent be any five at least of the subscribers generally including or ex- Convemn°'of eluding the trustees or either of them and all meetings shall be meetings." held within a radius of miles from &c. 10. Each share shall confer one vote which may be given by Votes, proxy in writing and a bare majority of the votes given at any such meeting shall be sufficient to pass or veto the resolution. 11. This agreement shall become void if shares aforesaid Agree ment shall not be subscribed for at or before the day of shares not next. subscribed by- certain date. (6) As to vendors being also promoters of a company, see New Somhrei'o Co. v. Erlaiuicr, L. E. 8 App. Cas. 1218 ; and British Seamless Paper liox Co., L. E. n'Ch. D. 467; and also Buckley, pp. 3G2, 510, 51<); and Palmer's Company Precedents, pp. 20, 33. M. H 98 AGREEMENTS. Prec. Xlir. 12. Any notice intended to be served Ly tlie trustees on any Notices how Subscriber may be served on liim personally or &c. [Use Sp. CI. served. 51, posf, p. 242.] In -witness, &c. (c). The Schedule. Signatures and Addresses of Subscribers. Number of Shares Subscribed. (r) The agreement slioiilcl be under seal, in order to import a consideration. AGREEMENTS. 99 XIV. DEED OF PARTNERSHIP for working a Patent. Peec. xrv. THIS INDENTURE made tlio day of LS— Betwekn a. B. of &c. of the one part and C. D. of &c. of the other j^^.j^^j^ part : Whereas the said A. B. is the sole and original inventor (r/) i^^entioQ i^^ of certain improvements in the metliod of cleansing wool and of a. B. removing the products : And whereas the said A. B. made his Application application for letters patent in respect of the said invention on ^"^^^^^^^^^ the day of last and has obtained the acceptance of J^JpietT a complete specification in the like respect: And whereas the specification said A. B. is possessed of divers plans drawings models plant accepted, machinery implements and things (hereinafter called "the said ?J|i"^'j,i^^7" implements and effects ") now lying in or about tlie messuage and &j^ owned by premises No. Street aforesaid which he has purchased or A. B. acquired for the pm'pose of exhibiting utilizing or working the said invention whereof an inventory (/>) signed by the said A. B. has been delivered to the said C. D. : And whereas the said parties Agreement to have agreed to enter into a partnership for carrying onthe busi- ^^"^J.5'J"^'"^*j°j n ess of and working the said invention in connection there- ^''^^ "cPMip. with upon the terms hereinafter appearing. NOW THIS IN- Ttstatum. DENTURE WITNESSETH that it is agreed and declared as follows : — 1. The business of the partnership shall be that of Nature of including the using working and vending the said invention and Jj^'^'^^^n"- granting licences in respect thereof and shall be carried on at No. — -R-orking^the Street aforesaid. iuveution. 2. The partnership shall commence from the date hereof and Bai-tncrship shall continue during the term granted by the letters patent (if ;°^;:?;:J'^;7^t. any) to be obtained in respect of the said invention and any euro of patent extension thereof and during the subsistence of any other patent rights if butk or like rights which may become subject hereto. d^Sx^"" 3. The firm shall be styled "A. B. & Co." Xumeof firm. 4. The partnership may be deternnued as from the end of tlie j^^.tcrmina- fifth year lierefroni or any subsequent year by either of the tion by partners subject to the service by him on the other partner of not °°}jfj'j^'jJ;.^°J. less than six calendar months' previous notice in writing for that ^^^^^^^ y^^ar." purpose. (a) C. D. will bo estopped, if he executes the deed, from disputing this. Seepos^, p. 111. {h) The inventory should bear a ten shilling stamp. (Stamp Act, lb(0, "Schedule, Inventory, &c.") h2 100 AGREEMENTS. Prec. XIV. A. B. at own expense to obtain home patent in joint names and at ex- pense of partnership obtain foreign &c. patents. A. B. to receive as after pro- vided a sum for one moiety of patent. After sealing C. D. to pay A. B. part of said sum but balance pay- able out of C. D.'s share in business. Capital. 6. The said A. B. shall with all due speed and at his own expense procure the said letters patent to be granted in the joint names of himself and the said 0. D. and at his own expense apply for and obtain in his own name in trust for the firm patents or like instruments for the colonies and foreign countries mentioned in the Schedule hereto all of which countries are members of the International Union (c) . 6. The said A. B. shall be entitled to receive as hereinafter pro- vided the sum of £1,000 as a consideration for one moiety of the said letters patent and of all other patent or like rights to be obtained in respect of the said invention at home or abroad. 7. The said C. D. shall immediately after the said letters patent shall be obtained as aforesaid pay to the said A. B. the sum of £ part of the said sum of £1,000 but the remainder thereof shall not except as provided by Clause 17 be payable by the said C. D. personally and except as provided by Clause 18 shall be charged on the share of the said C. D. in the capital and profits of the partnership subject to his monthly drawings under Clause 11 and shall from the time of dissolution of the partnership as to any part thereof remaining unpaid bear interest at the rate of 5 per cent, per annum. 8. The capital of the partnership shall be or be considered to be contributed equally by and between the partners and shall subject to Clause 18 consist of the said letters patent and colonial and foreign patents and of all improvements or additions to the said invention and discoveries useful for the manufacture of made by either partner during the partnership and of the said implements and effects and also of a sum of £ cash which shall be contributed as follows namely £ by the said A. B. (he being in addition thereto credited with the sum of £ as the value of the said implements and effects) and £ by the said C. D. who shall not before the said letters patent shall be obtained and sealed be obliged to contribute any part thereof {(f) . (c) The letters patent might, of course, also be taken out in the name of A. Jj, only. In that case, unless the articles provide otherwise, the letters patent will become assets of the firm, so that on a dissolution each partner would have a right to work them. {Kenny's Patent Buttonholing v. Somer- ville mid Lntivyche (1878), 37 L. T. N. S. 878, per Bacon, V.-C.) It was also held in that case that the right existed, notwithstanding the registered owner had assigned the patent to a person having notice of the partnership. In Axmann v. Lund (1874) (L. E. 18 Eq. '3'M), it was held that where the plain- tiff and defendants had worked in partnership a j^atent which was the pro- perty of the defendants, the plaintiff was not debarred from disi:)uting the validity of the patent. See Muntz v. Grenfell, 2 Cooper, 61, n. As to the International Union, andwhat countries are comprised in it, see ante, pp. 36, 37. {d) The cash to be furnished by A. B., added to the sum representing the value of the implements and effects, is, of course, to be equal to the amount of cash to be furnished by CD. As the partnership might become dissolved, under Clause 18, before sealing, C. D. would by that clause be probably unable to recover the full amount of his contribution, as part of it at least might go in the expenses of the jjartnership. As the patents are to be part- nership assets, there seems no reason to provide that licences shall only be granted by the partners jointly. AGREEMENTS. 1"1 9. The bankers of the partnership shall be &c. Peec. xrv. 10. All outo-oino:s of the business includins: the annual sum of — li'iiikci's payable quarterly to the said A. 15. by the partnership Out-'oings, by Avay of rent for the said premises (and which sum sliall be reut &c. deemed to cover all rates taxes and assessments whatsoever but not the insurance of the said premises) shall be payable out of the capital and profits thereof or in case of defieienr-y tlion by the partners equally. 11. After the expiration of six calendar months from the time Monthly when the said letters patent shall have been obtained the said Jrawiugs. partners shall be entitled to draw out from the funds of the partnership sums for their separate use respectively at the end of every ensuing calendar month namely as to the said A. 13. the sum of £ and as to the said C. D. until satisfaction of the said sum of £ (/') the sum of £ only and after satis- faction thereof the sum of £ (/) subject to the liability at the end of each current year for each partner to refund to the partnersliip any excess of his draAvings for that year over and above his moiety of the net profits for that period. 12. All bonds bills notes or other securities given accepted or All securities indorsed on account of the partnership shall be executed accepted giveabyfinn signed or indorsed by both parties in their respective names and ^^ ^^ ^^^ not in the name of the firm unless the use of such name thereto partners, respectively shall be plainly necessary for the benefit of the partnership and all such securities except as aforesaid not bo executed signed or indorsed shall be deemed to have been given only on the account of the partner who alone executed signed or indorsed the same and not of the firm (g). 13. Each partner shall guarantee to the firm the prices due for No goods sold goods sold or work undertaken or done by him or his direction on "q ^Jr?dit^°^*^ behalf of the firm on credit to or for the benefit of any person or ajraiust persons contrary to the wishes of the other partner as expressed by wishes of him in writing and shall on the annual account day next after the °^ tr partner, times when the said goods were sold or work undertaken or done respective]}^ account for the prices thereof accordingly. 14. Any goods ordered or bought by either partner without the Goods boxig-ht written consent thereto of the other partner exceeding the value of "^(.pi-^-iin*^^ £ shall at the option of such other partner be either treated value imless as goods of the firm or as the separate property of the partner who "w.itl' ^°"**^'l'^ ordered or bought them and be paid for accordingly. ners*^or part- 15. Pro]ier and full accounts and valuation ehall be taken and net buying made on the last day of each current year of the partnership of li^ible for the moneys debts liabilities property and effects of the firm and Yctui ac- counts and — " valuation. ((f) The balance of the £1,000. (/) The same as A. B. (fj) A member of an ordinary trading partnership can bind the firm by drawing, accepting, or indorsing bills of exchange, or by making or indorsing promissory notes in its name. See Lindley, p. '2CG, and cases tliere cited. A partner, however, has no power to bind his co-partners by deed, unless by way of release of a demand. {Ibid. 278.) 102 AGKEEMEKTS. Peec. xrv. eliall be recorded iu two books and in each thereof signed by both — partners within calendar months after the end of such year and eacli ^lartner shall retain one of the books and except where any manifest error shall be found therein within six calendar months after the signatures shall have been entered therein as aforesaid shall bo bound by such accounts and valuation. Equal divi- 16. The net profits of the said business shall be divided equally sionof net "between the partners subject as to the moiety therein of the said to balance of C D. to the Said charge in favour of the said A. B. purchase- 17. If the partnership shall be determined by the said C. D. by C°D V^'hare ^°^^^® ^^^^^'^^ Clause 4 the said C. D. shall be liable personally to C D*r bb P^y ^° ^^® ^'^^^ -^' ^' ^^® ^^^^ ^^^ °"^ ^ *^^' ^^^^^ ^^^^^ thereof personaUyto ^s shall then remain unpaid and the same shall together with pay balance interest thercou at the rate of 5 per cent, per annum from the date of purcbase- q£ g^^^,]^ determination be a charge on the share of the said C. D. in determines the capital and profits of the partnership {//). partnersliip. IS. If either partner shall before the letters patent shall bo If either die sealed die or become bankrupt or commit an act of bankruptcy or Income whether available for adjudication or not the partnership shall f ore sealino- of thereupon determine and in that case the interest of the said C. D. patent it shall or his representatives in the said invention letters patent and other Tuttr'^^nA B patents or like instruments aforesaid or the right to obtain and orhisrepre- * hold, the same respectively and all other (if any) inventions and sentatives. patent or like rights then comprised herein and also the said implements and effects or other like implements and effects then belonging to the partnership shall enure for the benefit of the said A. B. or his representatives subject to the satisfaction of all liabilities (if any) of the partnership and of all lawful claims by or on behalf of the said C. I), or his representatives against the assets of the partnership or against the said A. B. or his representatives in respect of any moneys brought by the said C. D. into the partnership or otherwise and accordingly the said C. D. or his representatives shall at the request and cost of the said A. B. or his representatives execute and do all such assurances and things as may be necessary or convenient for vesting the entirety of the said inventions letters patent patents instruments and rights and also the said implements and effects respectively in the said A. B. or his representatives or his or their assigns as by him or them shall be reasonably required (/). (7i) Stould A. B. by misconduct try to force C. D. to dissolve, the latter thould apply to the court for an injunction against tlie acts complained of. It is presumed that a judgment for dissolution in the action, even if prayed for by C. D., -would not involve the infliction of the above personal penalty, as the dissolution would not have been effected by mere notice. In Fairtliorne V. Weston (o Hare, oS7), one of two solicitors, partners, filed a bill for an account and a receiver, -without praying for a dissolution. A demurrer as to the necessity of praying for a dissolution in order to obtain relief was over- ruled. (r) By Clause 8, C. D. is not obliged to bring in any moneys before the sealing of the patent, and, by Clause 7, he is not, before the scaling, to ydj any sum for his share of the various patents. A. B., his executors or ad- ministrators, or his assignees in the banki'uptcy (if so) should therefore, in AGREEMENTS. ^^^ 19. If tho dissolution of the partnership shall take place by Teec. XIV. reason of the death of either partner after the sealing of the said q^^^j^^ ^^ letters patent Lut ^vitllin two years from tho date liereof the other purchase de- partner shall (Lut if he shall he tlio said C. L). then suhject to his ceasel part- satisfaction of the said balance (if any) and interest thereon from p!;J,>„t jj'^ the time of such death) have the option to ho exercised by him in death after writing- within calendar months from the time of such «oalinf,' but death to purchase the interest of tho deceased partner in the said y^'J^Tw inventions letters patent patents instruments and rights and also date hereof, the said implements and effects as then lately comprised in the partnership at tho price of £ . 20. Except and subject as hereinbefore provided if either partner ^j'^^['^^*j^^g^^_ shall die in the first year of the partnership his executors^ or ^-iJJ'j'J^fp^rtner administrators sliall only be entitled to the amount of capital may purchase brought in by him which shall or ought to be standing to his J^.^^^^^^^^^^ credit in the partnership books and not to any further sum by gg^ets,"^ way of profits or otherwise except any sum or sums properly due to such deceased partner in respect of his monthly drawings as aforesaid which sum or sums shall be payable on demand but if either partner shall die in any subsequent year of the partnership his executors or administrators shall be entitled to his share in the partnership assets as they shall be found to have amounted to on the last previous yearly day hereinbefore appointed for taking a valuation of the said assets and also to such sum or sums (if any) as shall since such yearly day have been brought by the deceased partner into the partnership and also (in lieu of profits but subject to deductions as to all intermediate monthly drawings by the deceased partner as aforesaid) to interest up to the date of the death of the deceased partner at the rate of five per cent, per annum on the value of such share as from the same yearly day and also on such sum or sums (if any) last aforesaid as from the time or respective times when the same w\as or were so brought in which interest respectively shall be payable by the surviving partner on demand and the principal sum so found due to the estate of the deceased partner shall be payable by the surviving partner in six equal instalments at half-yearly intervals the first whereof being payable at or before the end of nine calendar months from the date of the death of the deceased partner and each instalment until payment thereof shall bear interest from the same date at the rate of five per cent, per annum and tlio surviving partner shall at his own expense if and when required by the said execu- tors or administrators so to do enter into a bond or deed of cove- nant for payment of the said instalments and interest in manner aforesaid. {Arbitration Clause as in Form 24, ante, p. 05.] In witness, &c. (y ). cither of tho above events, be entitled to tho full benefit of the patents. It is to bo supposed that little business will be done, or liability occurred by tho firm, bcl'oro the sealing. {j) A nuliticationof this partnership, so far as it shows that the patents aro to bo worked by the patentees jointly, can be entered on the register. See ante, p. 24, and sects. 2o and 87 of the Act of ISs;}, App., post, pp. 313, 322. For a clause as to service of notices, use .S/>. '7. .31, ; est, p. 212. 104 AGKEEMENTS. Peec. XV. Recitals. Title of firm to patent. Business of firm. Patents are partnership assets. Desire to employ E. F. as ag-ent. Certain qiian- tity of goods already cou- sigTied. Semxrity given by E. F. XV. AGREEMENT appointing a Sole Agent for the Sale 0/ Patent Articles in the Metropolis. AN AGREEMENT made &c. Between A. B. and C. D. of &c. (liereinafter called "the said firm") of tlie one part and E. F. of &c. of the other part : Whereas the said A. B. and C. D. are joint patentees of an invention termed &c. under letters patent dated &c. and numbered for the United Kingdom and the Isle of Man : And whereas the said A. B. and C. D. are engaged at in the county of in the business of as co- partners under the firm of e^c. : And avhereas the said letters patent form part of the assets of the partnership : And whereas the said A. B. and C. D. are desirous of emplojdng the said E. F. as sole agent in the city of London and the metropolitan districts in selling \the articles'] which can be made by the said firm accord- ing to the said invention upon the terms and conditions hereinafter appearing : And whereas shortly before the execution hereof the said firm have placed in the agency premises hereinafter men- tioned in number of the said articles to be sold by the said E. F. as such agent: And whereas the said E. F. has given or to the said firm a guarantee from the Company to the extent of £ for the fulfilment of his obli- E. F. to be sole agent for two years at ■ least. Determina- tion by notice by either party at end of two years or by the agent any succeeding half-year. afforded Limited gations hereunder. NOW IT IS HEREBY AGREED as follows : — 1. The said E. F. shall act as sole agent in the city of London and the districts and places lying within a radius of twelve miles from Charing Cross for the said firm for the sale of the said articles for the term of two years to be computed from the day of 18 — and for such further period as hereinafter mentioned. 2. The agency may be determined by either party at the end of the said term of two yeors subject to his or their service on the other of them of ■ calendar months' previous notice in writing for that purpose and if not so determined shall continue beyond that period and may be determined by the said E. F. at the end of any succeeding half-year or period of six calendar months sub- ject to his service on the said firm of three calendar months at least previous notice in writing for that purpose and if not deter- mined in either of the said modes shall continue so long as the said E. F. shall duly perform or observe his obligations hereunder. A(iKi:EMENT8. 105 3. The said firm having approved of the premises situate at &c. Peec. XV. in the city of London as being suitable for the said agency and j^ which promises the said E. F. in view of this agreement has just ^j^gg t^ken contracted to take on lease the said agency shall be established at with approval the said premises accordingly and shall continue to be carried on ^^ ^'^"^• thereat until the said E. E. shall with the written consent of the said firm engage other premises for such purpose. 4. The rent and taxes and the cost of all furniture books of ^J;^^^"^^^^^^ account stationery and insurance of premises and the salaries of JS^^by agent clerks messengers and others and all other office and other necessary except as to or proper charges and expenses of and incidental to the said '^.^-^^J^^^q jfj^^ agency except those relating to the carriage of goods sent to him ^'"^ ° '™' by the said firm the charges and expenses for which they shall be solely liable sliall be incurred and borne by the said E. F. alone. [) The said E. E. shall place liis own name with the addition Agency how of the words "Sole Agent in the Metropolis for A. B. and C. D.'s ^"^dlnW patent [name of article'] " and no other name or statement in the ^\ premises most conspicuous part of the front of the agency premises (the and on the words " A. 13. and C. D.'s patent " being painted in much stationery. larger type than the other name and words aforesaid) and shall also keep use and retain his own name with the addition aforesaid upon all invoices heads of account and the stationery generally of the said agency {a). 6. The said firm shall from time to time from and after the Monthly sup- day of next supply to the said E. F. such articles S-';,^Jp*'j;^nfc aforesaid as he sliall require not exceeding (unless the said firm articles, shall be willing to supply any further quantity) ■ in number per calendar month on an average of three calendar months and the said E. F. shall sell the same ai tides and those already supplied to him as aforesaid at the best prices he can obtain for the same but the said firm shall nevertheless be_ at liberty froni time to time in variation of any provision in this respect herein contained to fix the minimum selling prices hereof or to prescribe either generally or in particular the cases in or the longest periods for which respectively credit may be given or refused as to the selling prices thereof \b). 7. Credit shall not be given to any single person firm or Limitation of company for a longer period than calendar mouths nor for H'^l^^ "-"''*' (a) Such a provision will prevent the operation of the reputed ownership clause against the firm on the bankruptcy of the agent. See Bankruptcy Act, l8cS;5, sect. 44, sub-sect. 2, ]iar. 3 (46 & 47 Yict. c. 52); and Kr parte Brif/Jtt, In re Smith, L. E. 10 Ch. 1). .';()() (C. A.). In that case the bankrupt firm (agents) had placed over their prcuiises, and printed on their statioiicry, the words " Merchants and Manufacturers' Agents," and were to be paid as commission the surplus of the proceeds of goods sold above certain prices. They acted for various m.anufacturers. It was held by Jessel, M. E., and James and r.ramwell, L.J J., that the creditors had thereby notice of the agency sufiicient to exclude the operation of the reputed ownership clause. {b) E. 1\ would not bo a mere agent if ho was at liberty to sell the articles at any price he pleased, and pay fixed sums only for thi'in to his principals after the respective sales. {Kx parte Wliite, In reXevill, L. E. U Ch. 397 (Ct. App.); aUirmedin House of Lords, 7wm. Toicle v. White, 21 W. E. 4Go.) 106 AGKEEMENTS. Peec. XV. No actions or proceedings ■without con- seut of fii-rn. Commission to agent on sales. Agent to re- ceive com- mission also on goods sold by fii'in and ordered by persons in district. Del credere commission. any articles the selling prices whereof to any single person firm or company shall be beyond the total amount of £ . 8. The said E. F. shall not unless with the written consent of the said firm first obtained commence or prosecute in the name of the firm any action for the recovery of any moneys due to the agency for goods sold by the said E. F. nor compound nor release the said moneys or any part thereof but may at his own cost and risk commence or prosecute any such action {(■) . 9. The said firm shall as to all orders for purchase sent from any part of the Avorld (including the said district) to the agency pay or allow to.the said E. F. a commission of per cent, upon the prices received for the articles purchased but the said E. F. shall not without the written consent of the said firm procure or attempt to procure orders from any person or persons firm or company not residing or having oflices within the said district. 10. Orders which shall be received by the said firm from any person or persons firms or companies residing or carrying on business within the city of London or any of the districts and places aforesaid for the supply of the said articles may be executed by the said firm if they shall think fit after previous notice in writing shall have been given by them to the said E. F. who shall be entitled (but independently of such notice being given) to receive or be allowed in account a commission calculated upon the prices of the articles so sold as if the same were paid on the days of delivery or within thirty days thereafter respectively namely as to all such orders received up to the end of the year 18 — a commis- g^Q^ of per cent, and as to all such orders received after such date a commission of per cent, {d) or any such orders may be delegated to the said E. F. if he shall be able_ to execute the same but upon the same terms as to commission as if they had been given to him direct. 11. As to all articles sold by the said E. F. other than in respect of orders delegated to him by the said firm as aforesaid the said E. F. shall guarantee to the said firm the payments by the pur- chasers of the respective prices thereof on the days of the delivery after the sale thereof or within thirty days thereafter respectively and in consideration of such guarantee shall be entitled to an extra (c) The agent may sue in his o-n-n name if lie lias a special property in the subject-matter of tlic contract, notwithstanding he contracted for an avowed principal. {Williams y. Mill ington, 1 lien. Blacks. 81, the case of an auc- tioneer. ) The factor and owner may each have actions on a contract. ( Ibid.) _ (d) A higher percentage than the last-mentioned one. These commissions (so called) are, of course, by way of compensation to the agent for the firm dealin"- with purchasers in the district of the agency, and should, it is pre- sumed, be little lower than the commission the agent would get if the orders ■were given direct to him. The change in the percentage after a given date is to be supposed to be owing to the circumstance that the firm have already customers in the district, and will in time, as far as possible, withdraw per- sonally from supplying them with the articles. AGllEEMENTS. 107 commission of per cent, over and above the commission Peec. XV. payable in respect thereof as hereinbefore first provided (r). 12. Tlie said E. F. shall at all times during the continuance Premises and hereof at his own exi)cnso well and sufUoiently insure and keep goods to be , • , o ,1 • 1 11 f 1 !• -1 insured by insured against nre the agency promises and all articles atoresaid agc-Lit. for the time being therein and shall whenever recjuired by the said firm produce the receipts of the current premium or premiums paid by him in respect of such insurance (/). 13. The said E. E. shall at his discretion and expense properly Agent to and sufficiently advertise the said articles at a rate not less than artideHud £ per calendar month for an average of any three con- expend a secutive calendar months. _ minimum 14. All commissions payable to any sub-agents employed in the t^J^eby. said district by the said E. E. for the sale of the said articles shall Con^jJsions be borne b}^ and between the said parties equally who shall together to sub-agents, determine the amounts of such commissions respectively. 15. The said E. E. shall so long as he shall not be indebted to Monthly the said firm be entitled each calendar month to draw from all ^}{J,'^^!|f ^^ moneys received by him for the sale of articles as aforesaid or agent- but other moneys paid to him for the benefit of the said firm a sum balance of not exceeding £ in anticipation of the moneys (if any) ^^^^l^ ^^' payable to him on the half-yearly settlement of accounts to be amounting to efiected as hereinafter provided on the half-yearly day then next £ at ensuing subject to the liability on his part to refund any sums p!^^"^ J'^^^-. jj^ ■which on such settlement shall appear to have been overdrawn but ^f fu.^ at subject to such drawings and any claims by the said E. E. thereout bank. for moneys due to him from the said firm all moneys so received by or paid to the said E. E. as aforesaid shall when amounting to the sum of £ altogether be forthwith paid to the credit of the said firm at the bank of Messrs. at &c. 16. The said E. E. shall keep at the agency premises all proper Accounts to books of account and shall make true and perfect entries therein at ^^\l\ '^^'^ the earliest opportunities of all orders both taken and executed and statc.neuts articles received by him from the said firm and also any such furnished, articles sold by him and the names and addresses of the purchasers thereof on credit or so far as known to the said E. E. and also of all other matters and things in any way relating to the agency and essential or convenient for any of the pm-poses hereof and shall on the day of each calendar month send to the said (e) E. F. thus becomes -n-liat is termed a del credere ageut in respect of this guarantee. See MacJceuzie v. Scott, G Ero. P. C. 291 (Tomlin s edition). A del credere agent is only liable to his principal as a surety for the purchasers. {Morris \. Cleushy, 4 Maule & Selwyn, 5GG ; Jlornhi/ \. Lacij, 6 ibid. IGG; Cummin(j v. Forester, 1 ibid. 494; Balcer x. Lai)gJior)i, 6 Taunt. 519.) (/) A factor is bound to keep the goods with the same care that a prudeiit man would keep his own {Co(j(js v. Bernard, 2 Ld. Eaym. 217 ; and 1 .Smith's L. Cas. ; and Ttre v. Smit/i,'i A'ent. 121), but is not liable in case of robbery, fire, or other accidental damage happening without his default (Co. Litt. S9a ; Anon. 2 Mod. 100; and I'erex. Smith, supra), and must insure the goods if he have elYects in hand enough to cover the expenses of insurance. (See Smith's Mercantile Law, p. 113 (8th cd.), 1871, on the last and other points.) 108 AGKEEMENTS. Tkec. XV. Accounts b:i lanced half-yearly. Slims due to atreut payable half-yearly. Asrent to have lien on g-oods for moneys owing to him. No other agent within the district to be employed. Agent to detect in- fringements and give notice thereof to iinn. No obligation on fimi to maintain patent &c. Agreement to bind succes- sors of firm if possible. firm a full clear and correct statement in writing of all orders and gales aforesaid and particulars thereof respectively for the then previous calendar month and shall at all times during the con- tinuance and for any of the purposes hereof give the said firm or their agents all necessary information and if so required and at the expense of the said firm evidence by statutory declaration or other- wise as to the truth of any particulars appearing in the said books or any of them or any other matter or thing affecting the agency and suffer them or any of them to inspect and make copies or extracts from the said books or any of them as and when reasonably required by them or any of them. 17, The accounts of the said agency shall be balanced by the said E. F. at the end of each half-year ending on the day of or day of or within ten days thereafter. 18, All suras by way of commission or otherwise to which the said E. F. shall as shown by each half-yearly account aforesaid be entitled to receive from the said firm shall be paid to him within one calendar month from the time of delivery of such account, 19, The said E. F. shall subject to the rights (if any) of pur- chasers thereof have a lien on all articles aforesaid for the time being in his possession for any moneys then due to him here- under in). 20, The said firm shall not during the continuance of this agreement within the city of London or any place or district aforesaid employ an}^ other person than the said E. F. as agent for any of the purposes for which the said E. F. shall by virtue of this agreement be entitled to be employed nor shall employ any other person as agent for any piu-poses connected with the sale of the said articles whose place of residence or business shall be within the said district or radius, 21, The said E. F. shall make every endeavour to detect any suspected infringement of any of the patent rights of the said firm with regard to the said invention or any other patent rights for the time being held by them in relation to the manufacture of and inform the said firm of any suspected or ascertained infringe- ment thereof as soon as the same shall be suspected or ascertained by him. 22, The said firm shall be under no obligation to keep up or maintain the said letters patent or any extension thereof or any patent rights for the time relating to the said invention or the manufacture of the said articles or to take or defend any proceed- ings or action legal or otherwise as to any infringement thereof or otherwise. 23, The benefit of this agreement shall as to the said E. F. be made as far as possible binding not only on the said firm and the survivor of them but also on their and his assigns of the business of the said firm. In witness, &c. (//). ((/) The articles will not be in the reputed o-wnershiji of the firm on the bankruptcy of the latter — that is, the lien of the agent will prevail. See Ex jiurte Taylor, Montagu, 240 ; and Greening v. CJark, 4 Barn. & Cress, 316. (//) For a clause as to service of notices, use Sp. Ct. 51, post, p. 242. 109 CHAPTER ON ASSIGNMENTS (And Mortgages). PAGE A patent or share or for distinct part of invention generally assign- able : so also for a district ; a co-oicner may assign his share ; mode of assignment ; should he by deed ; otherwise only a con- tract arises 110-1 Contents of ordinary deed of assignment ; Recitals — title or fact of invention or claim thereto — no implied ivarranty of title to the invention — Recital that assignor represented himself as inventor ; grant of patent ; devolution of title; 'Testatum — assignment of invention as ivell as patent^ also of rights, poicers, &:c. — Covenants— for title and as to validity of patent ; as to improvements, S^-c, and extensions; not to seek leave to amend specif cation tcithout consent 1 1 l-o Contents of an assignment for a district— Covenants — validity o/' patent; as to improvements, S^-c. ; as to extensions; payment o D '^ patent. the invention the first recital in a deed of assignment may be taken to be that of the grant of the patent. Then follow recitals as to Devolution of the devolution (if any) of title and other matters (t). The next part of the deed is the testatum and operative part. Testatum. The covenants implied by the use of the words " beneficial owner " Assignment or "trustee" are noticed later. The invention as well as the asweU^as letters patent is expressed to be assigned. This has always been Patent, the practice, notwithstanding the apparent inseparableness of the invention and the patent. As there is and has been no provision in any act for the grant of any new or substituted patent, in the event of a patent becoming revoked, or, from breach of any con- dition, becoming void, no special advantage seems likely to accrue to an assignee whose assignment purports to include " the inven- tion " as well as the patent. Otherwise, it might be contended that an assignment of the invention would comprise all patents that would be granted in respect of it (»)• The rights powers Also of ri ""lits emoluments and advantages in respect of the patent are usually powers, &c. also assigned although there seems no necessity for doing so, in- asmuch as the expression " assignment of a patent " is a technical one, recognized by the new act and former acts, as embracing all the privileges conferred by the patent, including no doubt the benefits reserved in licences already granted. The mention, in the habendum, of the term for which the premises are to be held seems unnecessary, although the practice varies on this point. [t) Where the parties are agreed, recitals might of course be dispensed with, or a recital might be inserted that the assignor was entitled absolutely to the invention and patent mentioned in the schedule. Where there has been devolution of title the pui'chascr will of course search the register immediately before execution to see that the recitals are not at variance with the record. {u) See sect. 26 of the new act (p. 315, post), and also pp. 20, 21, ante, as to revocation. As to the saving of the prerogative of the Crown, see sect. 116 of the now act, post, p. 328. M. I 114 ASSIGNMENTS. Covenants. For title and as to validity of patent. As to im- provements, &c. and extensions. The covenants for title to the patent will he implied hy the use of the expression " as beneficial owner " or " as trustee " as applied to the assignor when he is expressed to assign (r) . These covenants liowever are as to the ownership and devolution (if any) of the title as distinguished from the validity of the patent, and are practically of little value, mainly on account of the system of registration. A covenant that the patent is valid is not a covenant for the title to the ownership of it. If such a covenant be unqualified {w) it plainly comprises the covenants that were formerly inserted in assignments, namely as to the inventorship and the novelty and utility of the invention and the past proper performance and observance of the conditions in the patent (x). The decisions in the cases of Hall v. Concler and Smith v. Neale cited above (y) as to there being no implied warranty in a contract of assignment as to the validity of the patent, make it now suitable, where there is no agreement to the contrary, to qualify the covenant so as to confine its operation to the acts and omissions of the assignor alone, and also (except as to a trustee or executor) following the usual conveyancing practice in the analogous case of the assignment of a lease, of his testator intestate or donor (if any) [z). Such a qualified covenant would then relate in particular to the past performance and observance of the conditions in the patent, such as the p)^yDi6iit of the renewal fees, and to the defence in any proceedings for revoca- tion («), The implied covenant for fm-ther assurance {b) will not apply to improvements or additions to the invention or extensions of the [v) See sect. 7 of Conveyancing Act, 1881, Appendix, iiost, j). 370. {iv) For such, a covenant, see Mortgage I., post, p. 167. (;c) See Corj'ion, p. 514, and Jarm. & Bj'tli. edition 1841 (form of assign- ment of a patent). {y) Ante, p. 112, note. (z) The qualified covenant as to acts, &c., of the assignor is used in David- son P. C. Vol. II. Part I. ed, 1877, p. 631 ; but, as stated in the note thereto, the earlier editions had incorrectly contained unqualified covenants. See also the editions of Pridcaux from 1870 downwards, and Crabbe's Conv. Prec. ed. 1859, p. 406. In Coryton (1855) and Jarm. & Byth. (1841) the unqualified covenant was inserted; but the decisions in Hall v. Gander, &c., were later. (a) It cannot relate to any defect which was irremediable at or before the grant, and hence will not refer to the novelty or utility of the invention. (h) As to this covenant, see Conveyancing Act, 1881, sect. 7, sub-s. 1 (A), Appendix, i^ost, p. 370. ASSIGNMENTS. 115 patent. Express covenants in these respects should therefore bo inserted (c). In addition to these express covenants, it is recommended by Not to seek some -svi'iters that tliere should also be a covenant binding the amend specifi- assignor not to seek leave to amend the specification or drawings ^u^ consent" "without the written consent of the assignee {'/). This seems advisable in the case of an assignment for a district or of a sliare of the patent or of the entirety of the patent in respect of a dis- tinct part of the invention, but not of the actual entirety of the patent, inasmuch as in the latter case the assignor will have no locNs standi to apply for leave to make the amendment (e). The contents of a deed of assignment for a district up to and Conteutsofan dssi ^niTioxi t inclusive of the covenants for title and the qualified covenant as to for a district. the validity of the patent, may bo taken to be the same as those Covenants. of a deed of assignment comprising the entirety of a patent, with Title and the addition of a reference to the district. patcntf ° The covenant as to improvements or additions to the invention improvc- and new discoveries useful for the manufacture of the patent articles, if intended to be included in the purchase, need hardly provide for any special remuneration to the assignor on account thereof, as the inducement to the assignor to interest himself in improving the existing invention or making any new discovery in the manufacture of the patent article is much greater than if he were selling the whole of the patent (/) . Where the district is an integral part of the United Kingdom such as Scotland, or a very extensive region such as the six northern counties of England, or the purchase-money for the original patent is of considerable amount, it may be advisable for the purchaser to insist that any new patents for improvements, &c., should be applied for and taken out in the joint names of the parties, and afterwards assm-ed so as to vest in him the exclusive benefit thereof for the district {g) . (c) As to qiialified covenants and covenants for title generally, see Elpli. N. & C. Chapter 30. As to improvements, &c., see ante, pp. 33—36, and as to extensions, see sects. 25 and 46 of tlie new act (Appendix, post), and ante, pp. 19, 20. (d) Johns. P. M. 224. (e) See ante, pp. 19, 20, and sects. 18—21 of the now act, post, pp. 312, 313. (/) See p. 34, ante. [g) See pp. 33 — 35, ante, as to improvements, &c., being comprised in a purchase, and the different modes in which this can bo done. i2 116 ASSIGNMENTS. And as to extensions. Payment of renewal fees. This is recommended of course in order to prevent dealings with any new patent adverse to the assignee, which might occur if the assignor obtained the grant in his own name alone (A) . The cove- nant as to improvements, &c. (except as to special remuneration and the obligation of the assignor actually to take out any patent in respect thereof), and the covenant as to extensions (except as to the obligation of the assignor to apply for them), will, but limited to the district, be the same respectively as on an assignment of the entirety of a patent. The assignor of a patent for a district, if he retains the re- mainder of the patent, should covenant to pay the renewal fees well within the prescribed times, and give due notice to his co- owner or co-owners of every such payment when made, or permit him or them to pay the same, and to repay the sums so paid on demand, and until repayment to charge them together with interest on his interest in the patent (/). In consequence of the rule that the law will not create a covenant respecting a personal thing {j ) , and also because of the impossibility with any degree of accuracy of apportioning the amount of the fees between the various co- owners, such a covenant cannot proj)erly be dispensed with {k). As no provision is made by the new act for aj^portionment of the renewal fees in the case of an assignment for a district or otherwise, the assignee, in default of payment by the assignor, must, in order to save the patent, pay the entire amounts, which he would no doubt prefer to be the annual ones (/) . The covenant to pay the renewal fees should however, it is submitted, be modified by a proviso relieving the assignor or his assigns from the liability in case the assignee or his assigns should for a lengthened period cease to work the invention {m) . (7i) See p. 29, ante. (i) "WTiere the district is tlie only one for wliicli tlie patent is held by the assignor, the assignee, if allowed the custody of the j)atent, should covenant to pay the renewal fees, and give an acknowledgment and undertaking as to the production, &c., of the patent for the benefit of the co-owners. {j) Com. Dig. tit. Covenant (A. 4) ; Ilindmarch, 243. This rule is of course modified to some extent by statutory enactments and by the practice of con- veyancers. As to the latter, see post, p. 196 (Chapter on "Licences"). {k) As to the contribution towards the fees when the patent is divided into shares, seeposi, p. 122. {I) See lists of fees, pp. 329, 344, 357, 2>ost. (to) For the covenant and proviso, see Assiynmenf II., p. 140, ;post. ASSIGNMENTS. ^" The next covenant to be inserted is that the assignor or his ^^^^f^J;,!. assigns will not amend or seek leave to amend the si-eeifioation (n) ficatiou with- f 1 • rri • • • ^^^ consent oi without the consent of the assignee or his assigns, ihis is im- assi^meefor portant only probahlj as to the seeking leave to amend, and not as to the actual amendment, which would, it is submitted, not bo affected without the citation or appearance of all the legal owners of the patent. At any rate it seems advisable for the parties to be agreed as to the nature of the amendment (if any). It should be stated, however, that the consent to the amendment shall not be arbitrarily withheld, in order that the assignee shall not be able to make a bargain (o). Lastly, the assignor should give an acknowledgment or under- ^^^^'J^J^^^- taking as to the right of the assignee to the production of the letters patent, letters patent, and to the delivery and right to take copies thereof ( p) . After the owner of a patent has assigned it for a district, he is Comparison '^ . . , I 1 *^^ advantages relieved from the necessity of taking or permitting legal proceed- between ings to be taken in his own name in the event of an infringement aJ'^^uI'sive within the district {q), as no doubt by force of sect. 3G of the new l^^J^S.^''' act the assignee may in his own name undertake such proceedings. Again, by means of an assignment for a district, a partition of a patent can be made by co-owners, by force of which they are relieved from the necessity either of working the patent in co-partnership, or of coming to an arrangement (more or less complicated) as to the working of it by each owner separately (r). Where royalties (,i) As to amendment of specifications, see sect. 18 of tlio new act (Appendix, post, p. 312), and ante, p. 18. (o) See Chapter on " Licences," post, pp. 202, 213. {2>) See sect. 9 of the Conveyancing Act, 1881 (Appendix, p. 373, j^ost). By sect. 40, snb-s. 2, of the new act (Appendix, p. 318, post) the comptroller is to keep on sale copies of complete specifications. {q) See Ecnard v. Lerinstein, 2 Hem. & Mil. G32, as to the right of an exclusive licensee to apply in the name of the owner of the patent for an injunction to restrain infringement on his indemnifying the latter against the costs of the proceedings. (r) As to the powers and obligations of co-owners of a patent inter se, and the difficulties as to, and provisions necessary to be provided for, the working of it by each owner separately, see post, pp. US— 12G. Where the owner of a patent manufactures and sells the patent article in a foreign country as well as in England, the sale of the article in one country implies a licence to use it in the other, but if the owner has assigned his patent in either country the article cannot thereafter be sold or used so as to 118 ASSIGNMENTS. or premiums by instalments or other sums are to bo paid periodi- cally or covenants are to be observed or performed, it will be found advisable for the owner of the patent, in order to protect his interests' more fully, not to make an assignment but to grant an exclusive licence for the district, which may be made determinable by notice of the licensor on default in payment of the sums or breach of the covenants. This is advised on the ground that at law an assign- ment of a chattel or other personal property cannot be limited to a mere interest («), and therefore that a proviso for defeasance or revocation in an assignment on default being made in the pay- ment of the moneys reserved or on breach of any of the covenants, will be inoperative, except as conferring a right to call for a re-assignment in any such event. Powers and Where the terms of a joint patent do not provide otherwise, S-owneTof any one or more of the co-patentees may without the consent or a patent concmTence of the other or others use the invention and not be obliged to account for the profits made thereby, and also may grant licences under the patent. This was decided in Maihen v. Green {t), where the grant in the patent was to the grantees their executors administrators and assigns " that they and every of them by themselves their servants and agents and such others as they may agree with and no others may use the invention." Mathers v. In Ilathen V. Green, Lord Cranworth expressed his opinion to ^^''^"' the effect that the rights of co-patentees were exclusive as to all defeat the rights of the assignee [Belts v. WiUmott, L. E. 6 Ch. 239; Von Heyden v. Neustadt, L. E. 14 Ch. D. 230 ; Beits v. NeiJson, L. E. 5 H. L. 1 ; Societedes Manufactures des Olaces v. Tilghman's Patent Sand Blast Co., L. E. 25 Ch. D. 1 ; NoheVs Explosives v. Jones, L. E. 8 App. Cas. 5). The principle involved in these decisions seems applicable to the case of an assignment for a district as between the district owner, on tbe one band, and the owner or any of tbe owners of tbe remainder of the patent, on the other hand. If tbis be so, it is to be presumed that an exclusive licensee would be on tbe same footing in this respect as an assignee, and that in order that the licensee or assignee should be entitled to protection against tbe sale or use of the patent article witbin the district, his licence or assignment should be regis- tered before the sale of the article, unless tbe purchaser had actual or con- structive notice of tbe licence on assignment before be purchased. Eefer to pp. 182, 183, as to exclusive licences. (s) See Williams, P. P. (Introductory Chapter and Chapter on " Settle- ments"). (i!) L. E. 1 Ch. 29, overruling Lord Eoniilly, M. E., in L. E. 1 Ch. 29, on the above point. ASSIGNMENTS. 119 the world but themselves, and that, in tlie absence of express contract between them, there was no implied contract that a co-patentco should not use the invention without the consent of the others, and that a doctrine to the contrary of this would enable one co-patentee either to prevent the use of the invention altogether, or else to compel the other co-patentees to risk their skill and capital in the use of the invention on the terms of being accountable to him for the profits (if any), without their being able to call upon him for contribution if there should be loss. The question as to the liability of a co-patentee to account for any roj^alties or other sums received by him under licences granted by him was not actually dealt with by the court, as Lord Cranworth considered that no evidence had been furnished that any royalties had become payable. Lord Ilomilly however in the court below had decided that the co-patentee was so liable (ii). As some skill and capital is generally required in order to induce Accounts aa persons to become licensees, it might be thought that the above under^ ^^^ observations of Lord Cranworth on the question of accounts would ^'^'^^'^'^s- equally apply to the granting of licences, and therefore that a co- patentee would not be liable to account for moneys received from licences granted by him. If such a rule obtains, which is doubt- ful, a co-patentee would derive no advantage whatever from the patent unless he took an active part in working it. As there has been no later case on the point. Lord Eomilly's decision cannot be treated as overruled. It may therefore be considered that a co-patentee is a trustee for the others of their shares in the moneys receivable under the licences granted by him alone, and therefore that the licensees will not be concerned to see to the distribution of such moneys (r). The licences cannot of course as against the other co-patentees be exclusive ones. The above decision in Mathers v. Grcoi may no doubt be taken to apply also to the case of co-o^^^lers who or some of whom are not the actual patentees (?r) . («) L. E. 1 Ch. 29. (i') See sect. 36 of the Conv. Act, 1881, as to trustees' receipts. The salient words there seem to be " paj'able . . . under any . . . power." {w) Mr. Lawson (notes to sects. 4 and 87) thinks that the power of the single co-owner to grant licences must depend on the words of the patent itself, and that a valid Ucence can now only be made with the concui'reuco of all the grantees whose names appear on the register. Reference to sect. 120 ASSIGNMENTS. DifBculties of Where a patent has been divided into unequal shares and no ^''orkin^'^^ provisions have heen made for the working of it by all the separately co-owners in partnership or by each separately on his own account, ^ecSl^'provi- it will follow, from what has been before stated, that the owner of ^'°°^' (say) one-third part of the patent will not (except perhaps as to licences) be on a superior footing to the owner of (say) one- hundredth part of the patent. Hence special provisions should be inserted in any deed by which the owner of a patent assigns an unequal share {a) therein, so as to bind (if possible) not only the parties themselves, but all future owners to account to each other for the profits made by them respectively, and to grant or concur with the others in granting licences in the prescribed manner. Such provi- These provisions being in the nature of mere personal covenants peTonal will bind the parties themselves or their legal personal representa- covenants not .■ ^^ ^f^^^, assignments by them respectively, unless it be generally ^ "^ i • i i i binding tlie otherwise provided, but will not as of course bmd the assigns or future owners {h). AVhere the provisions relate to paying moneys out of the profits of a share and rendering accounts in respect of such profits, it seems that the assigns of either party taking their assignment with notice of such provisions would be bound thereby. Thus, in Werdevmann v. Societe Generale d'Ekdricite (c), it was assigns. 87, however, will, it is submitted, show that no attempt is made to define the rights of the proprietors inter se, and that the powers there given to them are to be exercised as against other persons. The decision of Jessel, M. E., in Powell V. Head, L. E. 12 Ch. D. 686 (cited by Mr. Lawson, p. 184, in his notes to sect. 87 as being applicable by way of analogy to the case of designs and inventions), related to the co-ownership of a coppight in a dramatic entertainment. The decision there was that under the act of 3 & 4 Will. 4, c. 15, one part owner could not grant a licence for representation without "the consent " of the other owners. No such consent, however, is mentioned in sect. 87 of the new act (p. 322, post), the salient words there being " subject to any rights appearing from such register to be vested in any other person." Mr. T. Aston (p. 2 of his work) considers that any co-patentee might grant a licence, and, it would seem, on such terms as he might think fit, but that probably he would be compelled to account for royalties, and that no certain answer could be given as to whether such a licence would be a good defence in an action for infringement brought against the licensee by another co-patentee who had not joined in the licence. (a) As to the assignment of a rnoiettj of a patent by the owner of the entirety, see next page. {!)) See 4 Cru. Dig. by White, 472, cited by Davidson, Free. Conv. Vol. I. (Introduction), and also Shep. Touch. 161, as to the nature of personal covenants. (c) L. E. 19 Ch. D. 247. ASSIGNMENTS. 121 decided that, under a covenant by an assignee of a patent on behalf of himself and his assigns to pay the assignor a percentage on the profits and furnish accounts, the assigns of the assignee who had taken with notice of the agreement, were bound to furnish the assignor with accounts and make him the payments (rf) . The assigns of the assignor would as o^Miers for tlie time being of the share of the profits be also entitled to payment and accounts in respect thereof. A mutual covenant between the co-owmers of a patent as to the Covenant as granting of licences in variation of their existing rights in this licences, respect would not it is presumed be binding on the assigns of any co-owner, even if they were mentioned in the deed or whether they took with notice or not. The assigns however would pro- bably be bound to account to each other for the moneys received under licences granted by them respectively, A deed of assignment of a share of a patent usually contains a Covenant by- covenant by the assignee to perform and observe the stipulations perf?^ *° (if any) which bind the assignor and to iudemnify him from future obligations of ^ "^ ' ° "^ assignor, breaches thereof. In the absence of such a covenant the assignee will apparently, as a general rule, be bound to give such an indemnity {c). Further, the acts of the new owners might be such as to imply an adoption of some of the stipulations at least so as to form a new contract in respect of them (/'). In the case of a patent being held by two grantees, or of an Division of assignment of a moiety of a patent by the owner of the entirety, equal nioietles elaborate provisions for the separate workings are often omitted, (*^Pf f'^tc (d) On this case, see post (CliaiDter on "Licences"), pp. 185, 186, tit. "Covenants, how far binding on assigns." The decision semhie is on the ground that the patent and its fruits were virtually charged with the pay- ments. When the royalties are mere gross sums not charged on the patent the assigns would not bo bound semhie. (e) In Waring v. IWird, 7 Yes. Jr. 337, it was held that, independently of contract, a purchaser of an equity of redemption was bound to indemnify the vendor against the mortgage debt. Dart, p. 557, 3rd ed., says, "it may be laid down as a general rule that whenever ho [the vendor] is personally subject to liabilities, either in respect of the estate or for the performance of which the estate stands as a sccuritj', the purchaser taking the estate must undertake the liabilities and covenant to indemnify the vendor against them." (/) See Chitty on Contracts, Sect. II. p. 57 et s(q. (Uth ed.), as to contracts implied from the acts of parties. As to a licensee's covenants binding his assigns, see post, pp. 185, 186, where the observations will also apply to the matter above. 122 ASSIGNMENTS. Division into unequal shares— Sepa - rate workings • — No trustees. Each owner to pay share of fees. as reliance seems to be placed on the circumstance that both parties then start on a footing of equality and have the same chances in dealing with the public in respect of the patent. Thus the conditions of separate worldng of a patent by co-owners of moieties are occasionally made to relate only to the payment of the renewal fees, the joint granting of licences at premiums or other capital sums, and the joint benefit of improvements or addi- tions to the invention or discoveries useful for the manufacture of the patent article made by either party {g) . In all other respects each co-owner is left to deal with his share in the patent as he shall think fit. As these conditions will not provide for the diffi- culties that may arise in the event of there being a sub-division of either moiety, whereby the patent becomes divided into unequal shares, it is advisable to have an arrangement as to the division of a patent into equal shares similar to that which is usually made in the case of a division into unequal shares as mentioned in this and the next few pages. Where a patent is by assignment or agreement divided into unequal shares, and it is intended that each owner may work the patent as to his share separately from the others without the intro- duction of trustees, the covenants and provisions usually inserted may be taken to be such as are now to be mentioned (//). Each owner should covenant to pay his proper proportion of the renewal fees, and should charge his share in the patent with the repayment of any moneys which may be paid by any other owner on his behalf in this respect. In the absence of such a covenant it is presumed that no owner will be bound to contribute with the others towards the payment of any fee, unless he assumes to use the patent for any part of the period for which the fee is paid, or otherwise obtains some benefit from the payment of it by the others (/) . The covenant virtually makes it obligatory on each {(j) See Agreements IV. and VIIL, ante, pp. 70, 82, and Assignment III., post, p. 142. In Agreement VIII., ante, p. 82, the division into equal moieties is varied by providing for a partial partition of the patent, i. e. by the assign- ment of the patent for a certain district to each party absolutely. (h) See Assignment IV., post, p. 144, as to an assignment of a twelfth share of a patent, in which are contained these covenants and provisions. (i) The law will not create a covenant respecting a personal thing (Com. Di"-. tit. " Covenant," A. 4 ; Hindmarch, 243 ; and ante, p. 116, note). The claim to contribution might, perhaps, be supported by applying the maxim, ASSIGNMENTS. 123 owner to contribute to the payment of the fees so long as any other owner is willing to keep up the patent, but a proviso to that effect might, for the sake of clearness, be inserted [k). With regard to the granting of licences, it should be provided Licen^s to be that this should be done only by all the owners jointly, who are to jointlj'. share all benefits therefrom in proportion to their shares (/). The case of a licensee taking his licence from a single co-owner without having notice of such a provision need hardly be considered, as it is assumed that the deed of assignment or arrangement will be registered immediately after execution (iii). "With regard to the manufacture by each co-owner himself of the Each owner patent articles, it should be provided that every article so manu- ties on articles factured shall, when manufactured (or sold), bear a royalty which "^ ^ ^"^' shall be divided amongst the owners generally (including the manu- facturer) in proportion to their shares. The amount of this royalty should generally be such as would be charged to a licensee who paid no premium. Where this royalty is put on the manufacture and not on the sale of the article, it should be fixed lower than the royalty in the latter case, so as to allow for the article remaining unsold for a time. A royalty placed on the manufacture seems, however, the most convenient incidence, as the articles are freed (so to speak) at the earliest opportimities, and no delay in the final settlement of accounts will bo caused by there being unsold articles in the possession of any owner. AVhere the royalty is placed on the sale, it should be provided that unsold articles in hand on the final winding-up shall bear a lesser royalty than that payable on a sale, and in lieu of the latter royalty. " Qm sentit commodiim sontire debet et onus." See Strelhj v. Winson, 1 Yern. 297 ; and Qrcen v. Bn'u'js, 6 Hare, '395, -wliicli are cases as to the obligations, inter se, of co-owners of ships ; and Lindley on Partnership (4th ed.), pp. 63—69 ; as to remedies of co-owners iiitei- se. (A-) Where an owner objects to have the patent renewed, and cannot sell his share, he should agree with the other owners to assign or release the share to them respectively in proportion to their shares, on condition of being released from his covenants. {I) See (ijite, p. 118, as to the grant of licences by co-owners separately. (m) As to registration, see ante, pp. 23 — 25, and ^wjj^, pp. 132, 133. As to constructive notice, see Dart's Vendor and Purchaser (Chap. XV., sect. 5), and cases there cited, especially as to the neglect of a i)urchaser (of land) to investigate the title, relying on the mere assurance of the vendor {Jackson v. Bowe, 1 Ph. 255 ; Neesom v. Clarkson, 2 Hare, 173; West v. Reid, 2 Hare, 260. See also Conveyancing Act, 1882, sect. 3, post, p. 383). 124 ASSIGNMENTS. Other provi- Bions. Assignment to trustees for owners ; nature of. Assigns of owners to Provisions as to the use of the patent mark, the keeping and furnishing of accounts, and allowing inspection of the books, the periodical delivery and settlement of accounts, the inspection of the factories or places of business of the different owners, and the benefit of improvements or additions to the invention or discoveries useful for the manufacture of the patent article (n) and an acknow- ledgment and undertaking by one of the parties as to the custody and production of the letters patent, should be inserted in the deed. A reference as to the non-implication of a partnership between the parties is unnecessary, as no owner will be an agent of the others, and the profits are not to be divided between the owners (o) . Where no partnership is intended, the introduction of trustees on a division of a patent into shares is no doubt the only satisfac- tory method (if any) by which the mutual rights of the owners for the time being can be properly regulated. In the plan now under consideration, the principal object sought to be effected is the re- duction, practically, of the ownership of the shares in the patent itself to that of interests only in the net proceeds of sale or profits to be obtained from it. The share of each owner is thus charged for the benefit of all the owners with the cmTcnt expenses of the arrangement, in priority to his obtaining any benefit for the time being from his share in the patent. Each owner also parts with his right to use the patent except by way of licence from the trustees. A purchaser therefore of any original owner's share takes it according to its nature and subject to the charge. Except as to any licence granted to him, the only active obligations of an owner are made to be those relating to his contribution towards the expenses in case the trust fund for the time being shall be insuffi- cient for that purpose, and the bringing into the trusts all improve- ments, &c. made by him. As a step towards binding the assignee of any share to perform (?i) The benefit is to all the owners of all improvements, &c., made by each one ; and the new inventions and patents in respect thereof are to be subj ect to the provisions of the deed as if part of the premises. See Clause 5 of Assignment IV., p. 145. (o) See Lindley on Partnership (4th ed.) pp. 33 — 54 (" Quasi-Partner- ship "). The Partnership Law Amendment Act, 1865 (Appendix, post, p. 368), does not affect the case. For a provision as to bad debts, see the next paragraph. Por an arbitration clause, see Form 24, p. 55, ante. ASSIGNMENTS. ^^^ obligations in respect of it, it is found advisable to insert in the ^^^^^^^^ deed as parties " every person wlio shall become an assignee of a share in the trust property and execute Ithc deccq or otherwise assent to be bound by it." The execution of the deed by an assignee pro- buUhey vided thereby to be made a party may not be the only evidence of ^^}f^^l his having assented to it, as his acts, apart from the deed, may be sufficient for this purpose {p). This would no doubt be so where the assignee taking the benefits under the deed interferes with or attempts to control, as provided by the deed itself, the trustees in the execution of any trusts, if such action can be only referable to the deed. As the assignee would be bound to indemnify the assignor {q) the former might be forced to do some overt act by which he would be bound to the trustees to conform to the deed should he not execute it. In the precedent carrying out the scheme (r) the definition of owner is inserted, from which it follows that a beneficiary of a share is not to be recognized until he has executed or otherwise assented to be bound by the deed in respect of his share, for, until such assent be given, the last previous bene- ficiary who had so assented is to be deemed to be still the owner. The patent then is to be assigned to trustees w4io, by means of Duties of licences to all or any of the owners for particular districts, and to t^^ant' other persons (if thought fit), or by sale of the patent either in the ^^^^^^^^ entii-ety or for any districts, will from time to time receive moneys ^tj^^f^^^'^^'i which after satisfaction of all current costs and expenses relating request of to the patent and the trusts, will be divisible amongst the owners periodically in the specified proportions. Except by means of a licence from the trustees, no owner is to use the invention. The licence to each owner should be on the same footing as that to a stranger except that no premium should be made payable. The power of sale is to be exercised at the request of a majority in value being (say) one third at least in number of the owners for the time being, and the respective terms of the sale are to be settled or at least approved of by the persons composing the same or another like majority. owners (f) As to a party to a deed who, taking the benefit of it, is bound by it, tbougb bo does not execute it, see Co. Litt. 230 b ; Ilex v. IfougJiton-k-Sjmn*/, 2 Barn. & Aid. 375 ; Burnett v. Lytich, 5 Baru. & Cress. 589; Webh v. SjJicer, 13 a B. 886 ; Witham v. Vane, 44 L. T. N. S. 718 (ISSl, C. A.).'' • [q) Ante,!^. 121. (r) Assiynment V., post, p. 148. 126 ASSIGNMENTS. to pay ex- penses, defend patent, &c. Contribution of owners to expenses. Remunera- tion of trustees. Ap- pointment of new trustees. Assignment of a share by patentee, but he alone to work patent. Nature of reservation. The duties of the trustees beyond the granting of licences and receiving the royalties and doing other acts in relation thereto, will be to pay or provide for the current costs and expenses, and (if thought fit) any approaching or contingent liabilities in respect of the trusts, and to take or defend proceedings in relation to the patent, and to obtain (where necessary) from each owner his contribution towards such costs and expenses, and to deliver and settle the accounts periodically. Where the trust moneys are insufficient for the expenses, the trustees, while having a lien on the patent for the deficiency, are to be entitled to demand the same from the owners generally without regard to the amount of their respective shares (s), but as between the owners themselves the contribution is to be according to the shares. Further, each owner is to have a charge on the share of any other owner in the patent and trust moneys for any sum paid by him in respect of such share in excess of his proper contribu- tion. Provision is also made for the remuneration of the trustees out of the trust funds from time to time, and for any majority in value being (say) one-third at least in number of the owners for the time being, to remove any trustee or to appoint new trustees. If a patentee assigns a share only, and it is agreed that he (say) shall alone work the patent, a licence to use the share can be granted by a separate deed, or the deed of assignment itself can provide for the sole working of the patent. In the latter case, it seems advisable in the operative part of the assign- ment, to reserve to the assignor the right to use the share according to the prescribed conditions. The right thus reserved being a legal one, a notification of it can be made on the register (/). For con- venience of language, however, this right may be treated as being conferred by way of licence, although it is presumed that an assignee cannot by the same deed make a legal disposition of any part of the premises assigned. The assigns of the assignee would then virtually obtain the share subject to the licence, which they could not revoke, except as prescribed by the deed. The obliga- (s) This is necessary for the convenience or protection of the trustees in case of the absence from the kingdom, or the default or bankruptcy of any owner. {t) See sect. 85 of the new act as to the non-registration of trusts. ASSIGNMENTS. 1 27 tion, however, of the assigns of the assignor to perform and observe the conditions as before stated with regard to the assignment of shares generally {a) is not so certain, but breaches in this respect would, on the exercise of the power of revocation mentioned later, involve the revocation of the licence. The assignee, moreover, would rely on the expressed or implied obligation of the assigns to their assignor to perform and observe the conditions and indemnify him against them (x) . These conditions can be made of a simple nature (//). Let the Conditions duration of the licence be made co-extensive with that of the °" patent and any extension of it. It will be suitable to give the assignor alone power to grant licences at fair royalties only, but not at premiums. The assignor should, of course, covenant to pay to the assignee his share of the royalties, and also a like share of some fixed royalty on every patent article manufactured by the assignor personally. In order to enable the assignee to have a voice in any assignment by the assignor of any part of his interest in the patent or licence, there should be a condition that, except by way of granting licences as above mentioned, the assignor shall not without the consent of the assignee dispose or attempt to dis- pose of his interest or any part of it. The breach of this condition will by force of the proviso as to revocation enable the assignee to rescind the licence. Provisions relating to accounts, the inspection of the factory, the payment of renewal fees, and the bringing in of improvements, &c. will of course be inserted. The power of revocation should be made exerciseable on default being made in the payment of the assignee's share of any royalties for a certain period after they shall have become due respectively, or on the bankruptcy of the assignor, or the breach by him of any of the conditions other than as to the payment of moneys, and, where such breach is remediable, on his failure after due notice to make the breach good (~) . The effect of the revocation, unless the assignee had pm'chased the larger or an equal share of the patent will, as before mentioned, place him at a great advantage over the (w) Ante, p. 120. (x) As to tlie implied obligation, seo Waring v. Ward, 7 Yes. Jr. 337, and ante, p. 121. {y) See Assignment VI., jwst, p. 154. {z) Perhaps also add tte event of the assignee not receiving anj' half-year some minimum sum as his share of the profits. 128 ASSIGNMENTS. Assignment of a licence. Where licensor not a party. Where licensor is a party. Mortgage of a patent. Recitals and absolute covenants for title and validity. assignor as to the future working of the patent by the parties separately (a) . Two precedents of assignments of licences are given in this work in the respective cases of the licensor not being a party and of the reverse {b). The object of making the licensor a party is of course to enable him to obtain direct covenants from the assignee, and also (where necessary) to testify his consent to the assignment. The question as to how far the covenants by a licensee are binding on his assigns are considered in the Chapter on " Licences," post, pp. 185, 186. Where the licensor is not made a party the assignment of the licence is of a simple nature. There is a qualified covenant by the assignor that the licence is valid and that the covenants and condi- tions have been performed up to date. As the licensee's (assignor's) covenants are personal to him and binding throughout the term notwithstanding the assignment, the purchaser covenants to per- form and observe them for the future and to indemnify the assignor against the breach of them. Where the consent of the licensor is necessary to the assignment, he should be made a party to testify his consent and confirm the licence, and also enter into a qualified covenant that the licence is valid and that he has full power to confirm it. In consideration of the consent confirmation and covenants by the licensor, the pur- chaser should covenant with him as well as with the assignor to pay all future royalties and other sums reserved, and thenceforth perform and observe the licensee's covenants. The presence of these covenants by the purchaser will not probably have the effect of absolving the licensee (assignor) from his liability under the same covenants, but a proviso that such liability shall still continue had better be inserted. A mortgage of a patent is usually made to contain or have implied in it all such recitals and covenants for title, and as to the validity of the patent, as would be inserted or are to be implied in an assignment of a patent, but in absolute terms (c). As to the covenants this practice is in accordance with the principle generally (a) Ante, p. 120. (6) Assignments IX. and X., post, pp. 161, 163. (c) Compare the recitals and covenants in Assignment I. and Mortgage I., MORTGAGES. ^^^ observed in mortgages of land and other kinds of property, whicli is to give a wan-anty of title against all the world (d). If there- fore recitals are used at all in a mortgage deed, the first is generally that the grantee of the patent was the true and first inventor (f). The covenants for title from the beneficial owner are to be implied from the use of the expression " as beneficial owner " in the assign- ment to the mortgagee (/). Beyond the covenants for the pay- ment of principal and interest, the first express covenant is as to the absolute validity of the patent. Other covenants by the C°™t^^°«j morto-agor are to pay the renewal fees well within the prescribed fees and times and otherwise to keep up the patent, and also to furnish the ^/patenr^^ mortgagee with the receipts for all payments. The mortgagee is of course to be at liberty to prevent the lapse of the patent, if necessary, by himself making any payments or doing other things for that purpose. In the absence of contract the mortgagee would be able to charge the mortgagor with the expenses incurred by the mortjrac^ee in maintaining the patent {rj). The mortgagor is to do To detect in oo '^ ,.„. ifj.! frmgemcnts his best to detect every suspected or actual mtrmgement ot tne and take pn patent rights and to speedily inform the mortgagee thereof, and (if pemSort- ••• "jjI . L i.»i-»IwA rr*t rtaa cr\ ^Ti f\n required) to take proceedings or permit the mortgagee to take ^'^^^^^''^''• proceedings in respect of the infringement. Expenses incurred by ^"^^^^ ^f the mortgagee in respect of the premises are charged on them, and ^^^^^^^ other together with interest are made either repayable on demand, or, if the deed provides for further advances, sometimes treated as actual advances. A power of sale and other powers will be implied by force of the Conveyancing and Law of Property Act, 1881 (//). As to the g-rant of licences by a mortgagor, it must bo noticed Grant of 1 llCGDCGS DV that he is in a similar position to a mortgagor of land before the mortgagor. {(l) Seo Davidson, Vol. I. (Introduction). It is there said, that as the mortgage deed always contains separate covenants for payment of principal and interest, there is no good reason why the covenants for title should not be restricted in mortgage deeds the same as in conveyances on sales. (e) See ante, pp. 111—113, as to recitals in assignments. (/) Sect. 7 of the Conveyancing Act, 1881, sub-s. C (Appendix, post, p. 371). If a trustee assigns he only covenants against his own acts and omissions (sub-s. F). ((/) See Coote on Mortgages (by Mackeson, 1880), p. 795, as to a mort- gagee's claims for expenses incurred in maintaining the property. {h) See sects. 19—24, 2wst, pp. 375—377, as to implied powers in a mortgage deed. M. K 130 ASSIGNMENTS. last-mentioned act came into operation (/), and can only grant licences which are voidable at the instance of the mortgagee as not taking effect ont of the legal estate (A-). Besides, such a licence cannot apparently he registered (/), although it may he good by estoppel as between the mortgagor and his licensee (;;/) . So licences by the mortgagee alone are liable to repudiation by the mortgagor after he has redeemed {n) . Provit^iou that It is Suitable then (if not usual) to provide in a deed of mortgage inuy grant of a patent (o) that, until the mortgagee shall become entitled to exer- Jimvcr o?"aio ^^^c the implied power of sale {p), the mortgagor may use the inven- exerdscablc^ tion, and may, in the joint names of himself and tlie mortgagee (as the attorney of the latter so far as necessary but without involving him in any personal liability), grant licences {q) to use it at the highest rent or royalties but not at premiums, and that each licence shall contain provisions enabling the licensors to determine it on default in payment of any sum reserved or the breach of any of the covenants, and that the licensee shall execute a counterpart. Licences thus granted may as between the mortgagor and mortgagee continue valid beyond the time when the power of sale first becomes exorciscable, and even after sale or foreclosure. The mortgagee is thus relieved from the necessity of seeing to the working of the patent and the grant of the licences so long as he is content to let his money remain on the security. The licensees will be deemed to have had notice of the terms of the power if the mortgage is {() By sect. 18 a mortgagor of land while in possession has certain powers of leasing. (/>;) Sec Cidhlcrtson v. Irving, 4 Hurls. & Norm. 742 ; affirmed on appeal, in 6 Ibid. 135, as to the analogous case of a lease of land by a mortgagor. (?) See ante, pp. 23, 24, and post ("Licences "), p. 184, as to registration. (7?j.) Cuthhcrtson v. Irving, siqyra. (;;) Coote on Mortgages (by Mackeson, ed. 1880), p. 740. Whore tlioro is an absolute necessity for a mortgagee alone to grant a lease (if any at all is to be granted), it seems that be may grant one binding on the mortgagor {Ibid. citing Ilungcrford v. Clay, 9 Mod. 1). (o) See a form of such a proviso in Key and ElpMnstono, Vol. II., p. 365 (" Mortgage of a Patent"). (^>) See sect. 20 of the Conveyancing Act, 1881 (Appendix, ^wsi, p. 376), as to wbcn this power becomes exerciscablc. The conditions in that section may, by sect. 19, sub-sect. 2, be varied or annulled. [(j) Exclusive, and partially exclusive, licences are, as a rule, to be ex- cepted, unless where the mortgagee actually assents. MOirRiAOKS. 131 notified on the register. As the power is a legal right being in the nature of licence from the mortgagee (the legal owner) it is presumed that it can Le specially notified on the register (/•)• Par- ticulars in writing of the grant of any such licence are then to be furnished the mortgagee within a few days after the grant. The time when the power of sale first becomes exerciscablo will Provision as to licences by conveniently bo the earliest time when the mortgagee can bo held mortgagee, entitled to use the patent rights (.s). It is therefore provided that ""^^^^^ '^ from and after that time he may alone use the invention and grant licences, but no restriction whatever is placed on the nature or extent of such licences, and it is usual expressly to give the mort- gagee power to grant licences exclusive, non-exclusive, or other- wise, at any royalties or premiums or for such terms of years and other conditions as he may think fit. This provision should then be followed by a proviso protecting the licensee from inquiries as to whether the mortgagee was entitled or not to grant a licence bind- ing on the mortgagee. Finally, there should be a covenant by the mortgagor to bring Improve- 1 T • J ji • i- nicuts, &c. to into the security all improvements or additions to the invention or form part of any new discoveries made by him useful for the manufacture of the security, patent articles and also any extension of the patent. The form of a mortgage of a licence where the licensor is not Mortgage of n licGUCG made a party, is somewhat similar to that of a mortgage by assign- ^^j^^^^ ment of a lease if). In addition to the covenants for payment of licensor not a principal and interest, there is an absolute covenant by the mort- gagor as to the validity of the licence and the performance and observance of the licensee's covenants up to date; and for the future performance and observance of them during the continuance of the security. Where the licensee (mortgagor) is by the terms of the licence at liberty to grant sub-licences, provisions similar to those mentioned above {u) as to the use of the invention by the mortgagor of a patent and the grant of licences by the mortgagor and mortgagee, should be inserted. Where there is no such power (r) As to registration, soo sects. 23, %o, and 87 of the Act of 1883, Appendix, •post, pp. 313, 321, 322, and ante, pp. 23—25. As to constructive notice, seo sect. 3 of the Conveyancing Act, 1882, Appendix, ^>os^, p. 383. (a) Seo sect. 20 of tlio Conveyancing Act, 1881, as to tho timo wliGU tlio power of sale is first excrciseable. (<) Seo Mortyage III., iwst, p. 175. (n) Soo last two pages. k2 132 ASSIGNMENTS. "Where lii'cnsor is a party. Registration of assign- ments and mortgages. Not compul- sory except as to grant sub-licences, a proviso merely for quiet enjoyment by the mortgagor until the day fixed for redemption may perhaps be inserted (.r). A covenant for quiet enjoyment by the mortgagee after that date will be implied from the use of the words " as beneficial owner" (//). Where the consent of the licensor to the mortgage is necessary, he should make himself a party in order to obtain a covenant from the mortgagee that, so long as he or his assigns shall be in posses- sion of the premises or in the receipt of the profits under it, whether during the continuance of the security or after foreclosure or (as regards the assigns) the sale of the licence, he or they will perfonn and observe the licensee's covenants (;:) . This obligation of the mortgagee should be made to cease as to the future performance &c. of the covenants, if on his transfer of the mortgage or sale of the licence (with the consent of the licensor), he procures for the licensor a substituted like covenant (so far as applicable) from the transferee or purchaser. The licensor in fact consents to the mortgage on the condition that such a covenant shall be entered into («). The insertion of this covenant will not of course absolve the licensee (mortgagor) from his obligations under the licence, but a proviso that such obligations shall still continue may conveniently be given. As the licensor is made to confirm the licence, it is only reasonable that he should give a qualified covenant as to the validity of the patent and his power to confirm the licence. The registration of an assignment is apparently intended merely for the benefit of the assignee as against third persons and is not compulsory, so that the omission to register will not affect the validity of the assignment as between the parties (b) . Such a rule (x) lu Davidson's Precedents, Vol. II. Part II. (Introductory Chapter), it is stated to be tlie modern practice to omit such a proviso, where the redemp- tion day fixed is only six calendar months off, as the protection of the mortgagor for so short a period is of little or no account. {tj) Sect. 7, sub-s. 1 (C), of Conveyancing Act, 1881 (Appendix, posf, p. 370). (z) As to covenants in a licence binding the assigns of the licensee, see Chapter on "Licences," ^osf, pp. 185 et sap, and also an^e, pp. 120, 128. Mortgage IV., post, p. 177, is a precedent of a mortgage of a licence to which the licensor is a party. (a) See Chapter on " Licences," post, pp. 213, 214, as to the consent of the licensor being given upon terms. (h) See sects. 23 and 87 of the Act of 1883, post, pp. 313, 322, and P. E. 1883, Eule 65 {post, p. 342). A mortgage is notified as an absolute assignment. ASSIGNMENTS. 133 obtains in the case of registration of assurances of land and is no ^J^JP*^ ^^^^ doubt in accordance witli tlio principles of equity (c). Moreover the new act allows for the existence of equitable rights and interests notwithstanding the record on the register (<'/). In ILmall v. Wright {o), Malins, V.-C. held that under the Act of 1852 an unregistered assignment was good as between assignor and assignee. An assignee could not however have maintained an action for infringement against a tliird party until liis assignment was registered (/). If such an action can now bo maintained, then, as the new act {g) provides that before such registration the existing registered proprietor shall have power absolutely to deal with the patent, a defendant will be liable to be sued at one and the same time by the assignor and assignee (A). In Ilamill v. Wright, it was decided that an assignor might also maintain an action against licensees from the assignor who had taken their licences subsequent to and with notice of the unregistered assign- ment. This decision is probably applicable also to cases under the new act. It has not been decided if the registration of an assignment will Ecsistratiou ° ^ 111 '^^ relate relate back to the date of the assignment, so as to enable the back to date assignee to maintain an action to restrain infringements committed ^semhk!^^^ ' after the date of the assignment but before the registration. In IlassaU V. Wright, it seems to have been the Vice-Chancellor's opinion that such relation occurred, but it was not necessary for him to decide the point. It is submitted that this oi^inion was correct, and that such relation also occurs under the new act, but that protection would be given to persons taking licences from the assio-nor between the dates of the assignment and registration without notice of the assignment (/) . (c) In La-^son, p. 224 (note to P. E. 18S3, Rule Go) the opinion is cxprcssocl that tlie registration of assignments is compulsory in order to their validity, not merely as against third persons, but also as between the parties them- selves. "Under the old law, registration was not compulsory. {IlassaU v. Wright, see text above) as between the parties themselves. (tZ) Sect. 87. (e) L. R. 10 Eq. 510. (/) Chollett v. Ilojfmann, 7 Ell. & Black. 6SG ; and see registration generally under the old practice, ante, pp. 8, 9. See EUwood v. Christie, 10 Jiu-. N. S. 1079, as to registration of probate by executors after theii- assignment of the patent. ((/) Sect. 87. (/*) CholMt v. Hoffmann, snpra. (j) As to registration under the old and present practices, and the rectifica- tion of the register, see Introductory Chapter, ante, pp. 8, 9, 23 — 25. 134 ASSIGN JIENTS ASSIGNMENTS AND MOETGAGES. LIST OP PRECEDENTS. PAGE I. ASSIGNMENT of a Patent icith benefit of Improvements, &c. ( Ordinanj Form) 136 II. ASSIGNMENT of a Patext/o?- a District 139 III. ASSIGNMENT of a Moiety of a Patent — Conditions of separate Working 142 IV. ASSIGNMENT o/ One-twelftu Share of a Patent— Special Provisions as to each Co-orcner working the Patent separately 144 V. ASSIGNMENT of a Patent to Trustees for Co-oicners in UNEQUAL Shares — Exclusive Licence for a particular District to be granted to each Co-oivner at Eoyalties — Power of Sale and general Powers of Licensing /n the Trustees — Trust Moneys divisible Half-yearly — Eemunera- TiON to the Trustees 148 YI. ASSIGNMENT by a Patentee of a Share of a Patent— The Assignor alone to tcork the Patent 154 VII. ASSIGNMENT rtHf/EELEASE o/« Prti'e»i by One Co-grantee to the other in jnirsuance of an Agreement for Sale of the entirety by the Inventor entered into before the Grant \_Agreement V. carried out'] 158 VIII. ASSIGNMENT of a Patent to the Inventor (« Foreigner resident Abroad) by his Agent, the Patentee 160 IX. ASSIGNMENT of a Licence — the Licensor not being a Party 161 X. ASSIGNMENT of a Licence— Me Licensor being a Party 163 XI. DEED of Partition of a Patent 165 MORTGAGES. 135 MOETGAGES. PAGE I. MOETGAGE of a Patent, loith Provisions for futuke Ad- vances, and REDUCTION of Interest — Jlonet/s to remain for a Term certain 167 II. MOETGAGE of a Patent hj One Co-patentee {the Inventor) to THE OTHEii for past and present Advances in purstiance of Agreement made pouting Application for Patent — The Agreement having crmiG'EJ) the Patent rights ivith repayment, and the joint Gr^vnt having been obtained as jVdditional Security — Interest at fixed Eate, and also according to Profits — On Redemption the Entirety to he assigned to Inventor [Agreement I. carried out'] 172 III. MOETGAGE of a Licence — The Licensor 7iot being a Party. . 175 IV. MOETGAGE of a Licence— TV^e Licensor being a Party 177 136 ASSIGNMENTS. Peec. I. Itccitals. Claim to bo inventor. Grant. I. ASSIGNMENT of a Patent with benefit of Improvements, &c. {Ordinary Form) [a). THIS INDENTUEE made tlie clay of 18— Between A. B. of &c. (hereinafter called " the assignor") of the one part and C. D. of &c. (hereinafter called "the assignee") of the other part : Whereas the assignor claims to have been the inventor of a process for &c. [title of the invention {b)] : And WHEREAS by letters patent dated &c. and numbered &c. [recite the grant of the patent and derolution {if an;/) of title (c)] : And whereas Devolution of the assignor has agreed with the assignee for the sale to him at *^*^®- the price of £ of the said invention and letters patent and the exclusive benefit thereof and of all extensions (r/) of the said letters patent and also (subject as hereinafter provided) of all improve- ments or additions to the said invention or discoveries useful for the manuf actm-e of now already (if at all) in the know- ledge and possession of or which may hereafter be made by the Testatum, assignor (.)! NOW THIS INDENTUEE WITNESSETH that in pursuance of the said agreement in this behalf and in consideration of the sum of £ this day paid to the assignor by the • assignee (the receiiot whereof is hereby acknowledged) he (a) As to the contents of an assignment, see ante, pp.lll— 115. [h] Wliero the assignor is not the original grantee, omit this recital. As to the reason and effect of the recital, see ante, pp. Ill et seq. For this recital, and those of the grant and devolution (if any) of title, insert, if thought fit, one recital only, namely, that the assignor is entitled absolutely to the letters patent mentioned in the schedule. As to recitals generally in an assignment of the entirety of a patent, see pp. 111—113, ante; and as to estoppel by recital, see pp. 40, 41, ante. (c) For recitals of grants, see Common Forms, ante, pp. 49, 50. Dis- tinguish between the grants of patents under the two procedures. Id ) The right of application for extensions seems to be, as formerly, in the legal owner for the time being of the patent. See definition of " patentee " in sect. 36 of the new act [jiost, p. 317), and, as to extensions, sect. 25 [post, p. 314), and p. 19, ante. Both sections apply, apparently, to old patents. (e) As to improvements, «S:c., being included in a pm-chase, and how pro- vided for, see pp. 33—35, ante. ASSIGNMENTS. 137 tlie assignor as beneficial owner (/) doth hereby assign unto tho ^^^^- ^- assignee All those the said invention and letters patent^^ and the sole and exclusive benefit thereof and of all extensions thereof and also all rights powers emoluments and advantages whatsoever under or in respect of the said letters patent {(/) : To hold use exercise and enjoy tho said invention letters patent and premises unto and by the assignee and his assigns absolutely {/t) : And the assignor Covcumis. doth hereby covenant with the assignee and his assigns that not- Validity of witlistanding anything by him tho assignor done omitted or know- patent, ingly suffered the said letters patent are now valid and subsisting and not void or voidable (/) : And also that he the assignor will Improve- from time to time after making any improvement in or addition to m^nts. the said invention or any discovery useful in the manufacture of (including any improvement addition or discovery afore- said now (if so) in his knowledge and possession) forthwitli give notice thereof in writing to the assignee or his assigns who sliall be entitled to the solo and exclusive benefit thereof [except as to the personal use thereof by the assignor] : And as and when reasonably required by the assignee or his assigns but at his or their expense as to actual costs (if any) occasioned thereby communicate and explain to him or them or his or their agents such improvement addition or discovery (J ) : And will at the expense (not exceeding however the sum of £ ) of the assignee or his assigns if he or they shall require the same apply for and obtain or (if he or they shall so think fit) join with him or them in applying for and obtaining letters patent in respect of such improvement addition or discovery and execute and do all such assurances and things as shall be ne- cessary or convenient for vesting the same letters patent and the sole and exclusive benefit thereof in the assignee or his assigns [subject to the personal use by the assignor of the invention com- prised therein] as by the assignee or his assigns shall be reasonably required (/.•) : And lastly that the assignor will at the expense of Extensions, the assignee or his assigns execute and do all assurances and things necessary or convenient for enabling him or them to obtain and exclusively to hold and enjoy the benefit of any extension of the terms comprised in the letters patent hereinbefore expressed to be (/) Tho term " beneficial owner " is to import the covenants for title, as to -which see sect. 7 of tho Conveyancing? Act, 1881 (Appendix, jiosf, p. 370). ('/) See note [d ) as to extensions. There are covenants (see later) as to both extensions and improvements, &c. (/<) Tho word " assijjns " includes "executors and administrators," who are assigns at law ("Williams on Executors, 792, 8th edition). The word, however, is not strictly necessary in tlie grant or habendum. (/) There is no provision in the Conveyancing Act, 1881 (44 & 4j Vict. c. 41), for the implication of this covenant. See sect. 7 of that act (Appendix, post, p. 370). As to covenants in assignments generally, see ante, pp. 11 J — 117. {j) As to instructing workmen and others in the employ of the assignee, see Form IG, ante, p. b'2. (A-) To the above add (if thought fit) tho last provision in Form 16, ante, p. 53, as to improvements, &c., made by the assignor in conjunction with any other person. Seo also Form 15, ante, p. o2, and ."?/'• C*/. 44 and 45, 2'>ost, p. 240, 138 ASSIGNMENTS. Trec. I. assigned or as far as practicable of any term which may be com- prised in any letters patent which may become vested in him or them according to the covenant in this behalf hereinbefore con- tained as shall be reasonably required (/). In witness, &c. [m). (?) As to foreign and colonial patents being assigned, see Mortgage /., note (fZ), post, p. 167. [m) The assignment should be executed as a deed {ante, p. Ill), and should also be registered {ante, p. 132, and sects. 23 and 87 of the new act). »"^ «* ^ ASSIGNMENTS. 1^9 II. ASSIGNMENT of a Patent >• a District («). ^°^°- ^^- THIS INDENTURE made &c. Between A. B. of &c. (lierein- after called " the assignor ") of the one part and C. D. of &c. (hereinafter called " the assignee") of the other part {j-ecitc as in lad Recitals, jjrcccdoit] : And whereas the assignor has agreed with the assignee Claim to bo for the absolute sale to him at the price of £ of the said inventor. letters patent and every extension thereof for the county of Grant. and also the exclusive benefit for the same county of all improve- Devolution of ments or additions to the said invention or any discovery useful ^ ^" for the manufacture of now already (if at all) in the A^eementto knowledge and possession of or which hereafter may be made by the assignor (i). NOW THIS INDENTURE WITNESSETH that Testatum. in consideration &g. (the receipt &c.) he the assignor as beneficial owner (f) doth hereby assign unto the assignee : All those the said invention and letters patent and the sole and exclusive benefit thereof and of every extension thereof (c/) and all rights powers emoluments and advantages whatsoever under or in respect of the said letters patent for the coimty of but not elsewhere : To HOLD use exercise and enjoy the said premises unto and by the assignee and his assigns absolutely : And the assignor doth Covenants. hereby covenant with the assignee and his assigns that notwith- VaUdity of standing anything by him the assignor done omitted or knowingly P^^tent. suffered the said letters patent are now valid and subsisting and not void or voidable (e) : And also that he the assignor will from As to im- time to time &c. [covenant as to improvements ^-c. as in last precedent P^o^emen s, excluding the jjrovision for taking out a ixdent, and making the exclusive benefit to he ^[for the count)/ of aforesaid" and omitting reference to the personal use by the assignor'] : And that in case he the assignor shall obtain letters patent in respect of any (a) It is presumed that an assignment for a district can bo made of an old patent, notwithstanding that in sect. 3G of the new act the Channel Islands are not mentioned. (Seep. 311, post.) As to the comparative advantages of assignments and exclusive licences for districts, sco jip. 117, 118, ante; and as to the contents of such assignments, see pp. llo — 117, ante. {h) As to improvements, additions, &c., being included in a purchase, seo pp. 33 — 35. (c) See note (/) to last precedent. (rf) See note {d) to last precedent. There is a covenant (seo later) as to improvements, &c. (e) See note (?) to last precedent. 140 ASSIGNMENTS. Peec. II. As to cxten- sions. Assignor to pay renewal fees. In default assignee may pay and be repaid with interest. Charge on interest of assignor in patent until repayment. Assignor not bound to pay fees if assignee discontinue use of invention. such Improvement addition or discovery lie will at the expense of the assignee or his assigns (if and when requiring him to do so) execute and do all such assurances and things as shall be necessary or convenient for vesting the same letters patent and the exclusive benefit thereof for the said county in the assignee or his assigns as shall be reasonably required by him or them (_/') : And also that the assignor will at the expense of the assignee or his assigns execute and do all assurances and things necessary or convenient for enabling him or them to obtain and exclusively hold and enjoy the benefit within the said county of any extension of the terms comprised in the said letters patent hereinbefore expressed to be assigned or in any letters patent intended to be comprised in the covenant in this behalf hereinbefore contained as shall be reasonably required (//) : And also that the assignor or his assigns (/) will pay all fees necessary for the renewal of the said letters patent respectively during the respective terms comprised therein one calendar month at least before the latest times when the same can properly be paid respectively (/) and will give the assignee or his assigns written notice of every such payment imme- diately after the same shall have been made but in case of non- payment thereof as aforesaid will if required by the assignee or his assigns permit him or them to pay the same and any sum if so paid by him or them shall be repayable on demand together with interest thereon at the rate of 5 per cent, per annum from the time of payment thereof and until repayment shall together with interest aforesaid be a charge on the interest of the assignor and his assigns (/«•) in the said letters patent respectively : Provided ALWAYS that neither the assignor nor his assigns shall be bound to pay any fee for renewal of any letters patent aforesaid if the assignee or his assigns shall for the space of calendar months within the current year of the term comprised in such (/) Tlie obligation to take out any new patent is not imposed. If the dis- trict is very large or important the assignor should be bound to take the patent out in the joint names of himself and the assignee, and then a par- tition should be effected so as to vest the patent rights for the district, and the remainder of the area comprised in the patent in the assignee and assignor respectively. See ante, p. 115, {h) The assignor does not covenant actually to apply for an extension. (?) This, like each preceding covenant, is, of course, only a personal cove- nant of the assignor, not binding on the assigns. "Where the assignor finally parts with all interest in the patent, he would probably obtain a covenant from the assigns to perform his covenants herein, and indemnify him against them. See ante, pp. 120, 121, and also post, pp. 185, 186 (Chapter on " Licences,") as to how far covenants are binding on assigns. (y) In the absence of this stipulation neither party will be bound to make any payments, as, except by statute, no covenants are to be implied in general in assurances of personal property {ante, p. 122). The implied covenant for further assui-ance (sect. 7 of Conveyancing Act, 1881, post, p. 371) relates only to matters of conveyance (p. 114, ante). The assignor need, of course, only pay the lowest necessary fees. See Lists of Fees, pp. 329, 344, 357, post. (i-) The assigns will be bound by this charge if they j)urchase, as presum- ably would be the case with notice of it. See Werdermann v. Societe cVEledri- cite, L. E. 19 Ch. D. 246, and ante, pp. 32, 33, 120, and pwst, pp. 185, 186. ASSIGNMENTS. 141 letter3 patent at the end of which year any annual fee for renewal ruEc. ir. would become payable (not including- however any extension of the time of payment tliereof which might be granted on application at the Patent Office) liave practically or in fact ceased within the said county to w(n-k by himself or themselves or his or their licensees (if any) the patented invention in respect of which such fee would have become payable : And furiher that neither the assignor nor AssigTior not his assigns will without the written consent of the assignee or his *° ^™*^°'^. assigns amend or seelc leave to amend tfie specitication in lorce ior without the time being of any patented invention then comprised herein consent, but such consent shall not be arbitrarily withheld (/) : And the Acknowledg- ASsiGNOR hereby acknowledges the right of the assignee and his "^'^"^ ^"^ assigns respectively to production of the said letters patent herein- as'toVrodli^- before exjiressed to be assigned or otherwise mentioned and to tioD.\c.oftho delivery and the right to make copies thereof and hereby undertakes Patents, for the safe custody thereof {iit). Ix WITNESS, &c. {ll). (/) As to amendments of specifications, see sects. 18 — 21 of the new act, pp. 312, 313, pnsf, and see pp. 18, 19, coite. As to tfie consent not being arbitrarily "witlilield, see p. 202, 2^ost, in the Chapter on " Licences," where the observation will also apply to an assignment for a district. {m) As to this acknowledgment and undertaking, see Conveyancing Act, 1881, sect. 9 {pO!>t, p. 373). See also notes to this section in the works on the Conveyancing Acts of Messrs. Wolstenholme and Turner, Clerke and Brett, and Hood and Challis. By sect. 40, sub-s. 2, of the new act ( post, p. 318) the comptrolfer is to keep on sale copies of all complete spccificatiins in force. If a patent is lost or destroyed, or its non-prodnction is accounted for to the satisfaction of the comi)troller, he may cause a duplicate thereof to be sealed (sect. 37, })Ost, p. 318). (;«) The assignment should be executed as a deed {ante, p. Ill), and be also registered {(inte, j). 132, and sects. 23 and 87 of the new act). 142 ASSIGNMENTS. III. Peec. III. ASSIGNMENT of a Moiety of a Patent— Gomniio^^ of SEPARATE Working (r/). jRecitals. Grant and title. Agreement to sell moiety of patent. Testatum. Assignment of moiety. Covenant as to validity. Miitual cove- nant as to payment of fees equally. THIS INDENTUEE made the day of 18— Betv/een a. B. of &c, (hereinafter called " the assignor ") of the one part and 0. D. of &c. (hereinafter called " the assignee ") of the other part \_t'ccite as in Assignment I. as to claim grant and devolution of title'] {b) : And whereas the assignor has agreed with the assignee for the sale to him at the price of £ of one moiety of the said invention and letters patent and all exten- sions thereof upon the terms hereinafter appearing. NOW THIS INDENTURE WITNESSETH that in pursuance &c. [as in Assignment /.] he the assignor as beneficial owner doth hereby assign unto the assignee One equal moiety of and in the said invention and letters patent and all extensions thereof and of and in all rights powers emoluments and advantages whatsoever under or in respect of the said letters patent (c) : To hold the said premises unto the assignee and his assigns subject to the conditions hereinafter appearing : And the assignor doth hereby covenant with the assignee &c. \_as to the ralidifi/ of patent as in Assiqnment I., ante] (d). AND IT IS HEREBY AGREED AND DECLARED that the amounts of the respective fees for the renewal of the said letters patent and any letters patent for the time being subject hereto shall be borne equally by and between the parties hereto or their respective assigns (e) and that all sums paid by either party (a) Compare this witli tlie next three precedents, any one of wliich. might be made to ajiply to an assignment of a moiety of a patent. As to rights of co-owners 'inter se working separatelj^ and as to assignments of shares in j)atents, see Chapter on "Assignments," ante, pj). 118 — 127. (J) See notes (a) and (6) to Assignment I, (c) See note {d) of Assigtmient I. \d) A covenant as to extensions is not inserted, as there seems no reason why one party should be bound more than the other to apply for an extension. See sects. 25 and 46 of the new act, and Re Pettit Smith's Patent, 1 Moo. P. C. C. 133; Soutlnvorth' s Patent, 1 Webs. 487, as to who should aj^ply. (e) The co-owners will be bound (during the time, at least, they respectively are willing to keep up the patent) to contribute in projiortion to their shares. See ante, pp. 122, 123, and Mathers v. Green, L. E. 1 Ch. 29. See also Lindley as to the presumed obligations of co-owners of property generally and letters patent, and other chattels in particular, to contribute to expenses, &c., of the common property, pp. 67—69. ASSIGNMENTS. 143 or his assigns in excess of his one moiety of the said fees re- ^^^c. III. spectively sliall be repayable by the other party or his assigns on ;^xcessof demand and together with interest tliereon at the rate of 5 per i);i3-ment3 cent, per annum from the time of demand thereof shall be a charge yliargtni with on the moiety of him or them of the said letters patent re- ^hc^party'a spectively : And also that &c. [^For of Iter conditions use os thoucjht share. jit Clauses 6 {h and c) and 8 of Agreement IV. ^ ante, pp. 71, 72, or Other Agreement VIII., ante, p. 82, or the more elaborate and extensice covenants. prorisions given hy the next precedent'^ (/) : And the assignor Acknowledg- hereby acknowledges the right of the assignee &c. \_Acknou-kdgmcnt \q\^(^^^^' ^ a)id undertaking i^-c. as in last precedent^. patent. In witness, &c. (g). (/) As to the working of a patent and grant of licences by one co-ownor alone, and the right to accounts between co-owners, see aitte, pp. 118 tt seq. As to assignments of shares, see ante, pp. 121 — 128. An elaborate precedent of an assignment of an uneven share of a patent is given in Hayes's Concise Conveyancing, p. 137 (ed. 1883, by Coltman). Where the parties are to work together there should be a partnership deed. See a precedent of such a deed, Ac/rccmerd XIV., ante, p. 99. (r/) The assignment should be executed as a deed and registered. See last note to Assignment /., ante. For a clause as to service of notices, use Sp, CI. 51, post, p. 242. 144 ASSIGNMENTS. Prec. IV. Itccitals. Absolute title of assignor. Agreement to sell one- twelfth sluare. \st Testatum. Assignment of one-twelfth share of patent. 2nd Testatum. Agreement and declara- tion. Renewal fees paid accord- ing to shares and excess paid by any owner to be charged on shares of the others. lY. ASSIGNMENT o/One-twelfth Share of a Palcnt— Special Pro- visions as to each Co-oicner n-orlcinrj the Patent separately {a). THIS INDENTUEE made &c. Between A. B. of &c. (herein- after called " the assignor ") of the one part and C. D. of &c. (hereinafter called " the assignee") of the other part : Whereas (i) the assignor is entitled to the invention and letters patent men- tioned in the First Schedule hereto : And whereas the assignor has ao-reed with the assignee for the sale to him at the price of £ of one-twelfth part or share of and in the said invention and letters patent and all extensions thereof snbiect as hereinafter expressed : NOAV THIS INDENTURE WITNESSETH that in pursuance &c. [Assignment I., ante'] he the assignor as beneficial owner doth hereby assign unto the assignee One-twelfth part or share of and in the said invention &c. [use last precedent to end of cove- nant as to the validity of the patenf] : And this Indenture also WITNESSETH that in pursuance of the said agreement in this behalf and in consideration of the premises IT IS AGREED AND DECLARED (c) as follows :— 1. The amounts of the respective fees for the renewal of the said letters patent and any other letters patent for the time being subject hereto respectively shall be borne by and between the parties hereto or other the owners for the time being thereof (hereinafter called "the owners") in the proportion _of_ their respective shares therein respectively and any moneys paid in this respect by any owner which are properly payable hj any other owner shall be repaid on demand and together with interest there- on at the rate of 5 per cent, per annum from the time of demand shall be a charge on the share of such other owner and if any owner shall at any time or times object to continue the payment of the said fees any other owner or owners shall nevertheless be at («) Eefer to pp.122 — 124, ante, and compare this with the last and also the next precedents. As to the working of a patent and grant of licences by one co-owner alone, and the disadvantages of separate working without the intervention of trustees, see ante, pp. 118 et seq. The next precedent is an assignment to trustees. (h) See Assignment /..however, as to other recitals, and ante, pp. 111—113. (c) See ante, pp. 120, 121, as to how far these stipulations will be binding on future owners. ASSIGNMENTS. 145 liberty to continue the payment thereof as for the remainder of Peec. rv. the term for wliich the same shall be payable or any shorter period and may claim from the objecting party aforesaid repayment of his proper proportion of any moneys so paid by him or them with interest thereon at the rate aforesaid from the time of demand until payment thereof and the amount so repayable shall together witli interest thereon be a charge on his share aforesaid accord- ingly ((/). 2. No licence for the use of any invention for the time being No licences to subject hereto shall be granted except by all the owners jointly be granted who shall be entitled to all benefits thereunder in the proportion of o'^^^ers ^ ^ their respective shares in the letters patent relating thereto (r). jointly. 3. In taking any lialf -yearly accounts hereinafter provided to Roj-alties for be taken there shall be debited to each owner for the benefit of i^enefit of all the other owners for the time being in respect of each patent paii*^on ® article manufactured by him in the half-year then ended (/) a articles manu- royalty of shillings less his proportion thereof according to f^K'tui-cd by his share in the letters patent Avhich royalty less as aforesaid shall bo divisible in the said accounts between the other owners in the respective proportions of tlieir shares. 4. Each owner shall affix on every patent article as and when Patent mark manufactured by him the patent mark now in use and shall not part ^ii artkl^*^^ with any such article without such mark being affixed thereto and each owner not being the assignor shall buy all such patent marks from the assignor so long as he shall be able and willing to supply the same at the rate of &c. and shall be debited half-yearly in the accounts hereinafter provided to be taken for such as shall be so bought by him (ry) . 5. Each o-^Tier shall from time to time after making any Improve- improvement in or addition to the said invention or discovery '^^^ o\,^er' ^^^ useful in the manufacture of (including any improvement be'broughtin. addition or discover}^ aforesaid now (if so) in the possession and {(I) As to the payment of renewal fees in the case of co-owners, see ante, p. 122. (e) On the question of constructive notice by an intended licensee of any single owner of the provisions in the above assignment, see Dart's Tend, and Purch. (Chap. XV. sect, o) and cases there cited on constructive notice, especially as to the neglect of a purchaser to investigate the title, who relied on the mere assurance of the vendor {Jackson v. lioice, 1 Ph. 255 ; Xeesom v. Clarkson, 2 Hare, 173; and West v. Rcid, 2 Ilare, 260). The licensee should search the register. See also ante, pp. 122—126, as to assignments of luiequal shares of patents, and Conveyancing Act, 1882, s. 3 (Appendix, post, p. 383). Where unreasonable objections are raised bj' a co-owner to the grant of a licence advantage may be taken of sect. 22 {post, p. 313) of the new act as to compulsory licences ordered by the Board of Trade. (,/■) Or say (if so intended) "manufactured and in the half-year then ended sold by him." It may be more convenient to fix the royalty on the manufacture, so as to avoid the provisions in Clause 8a as to articles in hand at end of the term. The royalty in either case may, for convenience at least, be taken to be of the amount which a licensee would have to pay where uo premium has been charged him. {(j) 8oe other forms as to the use and supply of the patent mark in the Precedents of Licences and " Special Clauses as to Licences," post, \>^. 234, 235. M. L 146 ASSIGNMENTS. Peec. IV. Books of account kept by each owner and inspection allowed and verification made. Accounts delivered and settled half- yearly. knowledge of any party hereto) forthwith give notice thereof in writing to the other owner or owners and as and when reasonably required by and at the expense of him or them respectively as to actual costs (if any) out of pocket occasioned thereby communicate and explain to him or them respectively or his or their respective agents such improvement addition or discovery and the same shall be considered and treated as being part of or comprised in the said invention but in case the communicating owner shall intend to apply for letters patent in respect thereof the other owner or owners shall jointly with him contril)ute in the proportion or pro- portions aforesaid to the payment of the cm-rent costs and expenses of and attending the application for and obtaining the said letters patent (such costs and expenses however being taken not to exceed altogether the sum of £ and the excess whereof being borne by such communicating owner) and shall be entitled to be made a co-applicant or co-applicants respectively therefor and the said letters patent or patent rights in respect thereof when obtained shall be held by the owners in the proportions aforesaid subject as far as possible to the like terms and conditions as are herein contained in respect of the letters patent hereinbefore ex- pressed to be assigned [And further the foregoing provisions in this clause including as to the limit of contribution shall as far as possible apply to the interest of any owner in every such improve- ment addition or discovery aforesaid which he may in conjunction with any other person or persons now have in his knowledge and possession or hereafter make] {h). 6. Each owner shall keep at his usual or chief place of business all proper books of account and shall make true and perfect entries therein at the earliest opportunities of all particulars necessary or convenient for any of the purposes hereof of all transactions relating to the manufacture or sale (/) of the said articles manufactured by him and shall at the same place produce the said books to the other ow^ner or owners respectively for inspection thereof and taking copies or extracts therefrom and at his own expense obtain and give to him or them respectively all information necessary or con- venient for any of the purposes hereof as to any item or matter comprised therein or relating thereto and at the expense of any party recjuiring it verify such information by statutory declaration or otherwise as shall be reasonably required. 7. Each owner shall within twenty-one days after the end of each half-year ending on the day of or day of deliver or send to each of the other owners a statement of account in respect of the transactions and matters aforesaid on the part of the accounting owner for the half-year then ended and shall if required by but at the expense of the owner requiring the (A) Compare the above clause witli Forms 15 and 16, ante, pj). 52, 53, and 8p. CI. 44 and 45, post, p. 240. (/) Particulars of sale should apj)ear, notwithstanding that royalties are only payable on the manufacture, as thereby a check will be furnished, to some extent, on the entries as to the articles manufactui'ed. ASSIGNMENTS. 147 same verify or procure some fitting person in his own employ to Peec. IV. verify the said statement or any part thereof by statutory declara- tion : Am) shall as soon as statements of account respectively for any lialf-ycar shall have been delivered by him as aforesaid and the balance (where an}') due from him to the other owner or owners respectively shall bo ascertained shall pay the same to hira or them respectively then forthwith accordingly but if the said balance or any part thereof shall from any cause whatever remain unpaid for one calendar month from the end of the said half-year it shall bear interest from the end of such calendar month at the rate of 5 per cent, per annum and together with such interest be a charge on the share in the said letters patent respectively of the person liable to pay the same. 8. Each owner or his agents shall be at liberty at all reasonable Liberty for times during the continuance of any letters patent subject hereto P'^cli owrier to and afterwards for such period as shall be necessary or convenient toi-Ls^ &c.°of to him for any of the purposes hereof to enter any factory or other owners, place of business of any other owner to ascertain the state and extent of the manufacture or sale of the said articles or for other the purposes hereof. 8a (/). [In taking the final accounts between the respective RoJueed owners each shall be debited as to each article aforesaid then in his iwalties on possession and remaining unsold with the reduced roj-alty of sold^o'nd^t" shillings less his proportion thereof according to his share in the mimitionof letters patent in lieu of the royalty less as aforesaid in respect of patents, the sale by him of such article as hereinbefore provided which reduced royalty less as aforesaid shall accordingly be divisible in the said accounts in respect thereof between the other owners in the proportion of their respective shares aforesaid.] 9. The assignor hereby acknowledges the right of the assignee, Acknowledg- &c. [_AcIiiioickdgi/iC)it, i^r., as in Assiynment II., ante]. ment, icas In WITNESS, &c.(./). ;:J:^- First Schedule. Second Schedule. (r) Tills clause is, of course, to be inserted only if royalties are made pay- able on sales. Sec note (/), ante. (./) The deed should be registered. For a clause as to service of notices, use (S^). CL 51, xtost, p. 242. l2 148 ASSIGNMENTS. y. Peec. V. Recitals. Claim, grant, &c. Further agreement to assign to the trustees. Assignment of patent to the trustees. ASSIGNMENT of a Patent to Trustees /or Co-oicners in unequal Shares — Exclusive Licence for a particular District to he granted to each Co-owner at Eoyalties — Power of Sale and general Powers of Licensing in, the Trustees — Trust Moneys divisihle Ilalf-ycarhj — Remuneration to the Trustees {a). THIS INDENTURE made &c. Between A. B. of &c. (herein- after called " the vendor ") of the first part C. D. of &c. E. E. of &c. and Gr. H. of &c. (hereinafter called " the purchasers ") of the second part H. K. of &c. and L. M. of &c. [trustees'] of the third part and every person who as mentioned in Clause 1 hereof shall execute these presents or otherwise hind himself hereto of the foiu'thpart {b) [Peeitals as to the claim, grant, ^c. (e) ] : And whereas the vendor has agreed with the purchasers for the sale to them respectively of shares in the said letters patent and every extension thereof namely to the said C. J), one-fifth share at the price of £ and to the said E. E. one two-fifths share at the price of £ and to the said Gr. H. one-tenth share at the price of £ : And whereas the vendor and purchasers have agreed that the said letters patent shall be assigned to the said H. K. and L. M. upon the trusts and otherwise subject as hereinafter expressed. NOW THIS INDENTURE WITNESSETH that in pursuance of the said agreement in this behalf and in consideration as to the said C. D. of the sum of £ and as to the said E. F. of the sum of £ and as to the said Gr. H. of the sum of £ now paid to the vendor by the purchasers respectively (the receipt of which several sums the vendor doth hereby acknowledge) and otherwise in considera- tion of the premises he the vendor as beneficial owner subject to the said agreement for sale cloth hereby assign : And each of them the purchasers as beneficial owner in respect of his share under the said agreement as aforesaid doth hereby assign unto the the said II. K. and L. M. All those the said invention and letters patent and the sole and exclusive benefit thereof and of all exten- sions thereof and all rights powers emoluments and advantages («) As to this kind of assignment, see ante, pp. 124 — 126. In the last pre- cedent no trustees are introduced. {b) As to the parties of the fourth part, see ante, p. 124. (c) As to recitals, see notes {b) and (o) to Assignment I. ASSIGNMENTS. 149 whatsoever under or in respect of the said letters patent To hold P^^*^- ^- the said premises unto tlie said II. Tv. and L. M. and their assigns upon trust for the vendor and purchasers respectively as tenants in common in the follo\nng shares namely as to the vendor three- tenths as to the said C. D. one-fifth as to the said E. h\ two-fifths and as to the said Gr. H. one-tenth but nevertheless subject to the covenants and conditions hereinafter contained : And the vendor Covenant as doth hereby covenant with the said II. K. and L. M. jointly {d) ^^^^^^'^^ "^ and also witli each of the pm-cliasers separate!}' that notwitlistand- ^^^ ing anything by the vendor done omitted or knowingly suffered the said letters patent are now valid and subsisting and not void or voidable. AND THIS INDENTURE ALSO WITNESS- "'"^ ^'"'^'""^ ETIT that in pursuance of the said agreement in this behalf and f^^Xdara in consideration of the premises IT IS IIEEEBY AGREED tion. AND DECLARED as follows :— 1. The term "the trustees" shall mean the said 11. K. and Definition of L. M. or the survivor of them or other the trustees or trustee uo'^e^r^^" hereof for the time being and the term "owner" shall mean and "shares." either the actual beneficial owTier for the time being of any share in the trust premises or in case such beneficial owner shall not then already as a party hereto of the first second or fourth part liave executed these presents or otherwise have bound himself to perform and observe the obligations herein contained and in respect of such share to be performed and observed then the beneficial owner or last of the beneficial owners through whom he shall have derived the title to such share who shall have bound himself as aforesaid and the term " sliares " shall mean the shares into which the trust premises shall for the time being be divisible between the owners. 2. The said H. K. and L. M. shall immediately after the execu- Trustees to tion hereof grant to each of them the vendor and purchasers at his &}"-^t^^. e^clu- expense (including as to the counterpart {e) )_ an exclusive licence of fo/ccSr the said invention and any other patented invention for the time districts to the being subject hereto for the district mentioned opposite his name ^'^^"l^j'JJ^g^^ in the Schedule hereto and in the form given therein. _ respectively 3. Except according to the terms of any such licence aforesaid as per or any other or fui-ther licence granted to him by the trustees Schedule. under the power in this behalf hereinafter contained no o^\^ler ^^'J.^JTjJ^'' shall be entitled to use any patented invention aforesaid. Smcc of tho 4. The trustees shall at any time during the continuance hereof trustees to at tlie request in writing of a majority in value being one-third at "J^^^^"^" least in number of the owners sell the said letters patent or any !f^ ^^^"" other letters patent then comprised herein either as to the entirety ou'rlque^st^of^ thereof or for any district or districts subject to the respective majority, licences aforesaid and all other licences (if any) granted under the {d) By sect. 60 of tlio Conveyancing Act, 1881 {iwst, p. 381), tliis covenant will go to the survivor of the trustees. (e) In tho absence of agreement, it is presumed that a licensee should pay tho expenses of tho licence, though not of the counterpart. In the case of a lease, tho parties are under like obligations {Jenninfjs v. Major, 8 Carr. & Payne, 61). 150 ASSIGNMENTS. Peec. V. General power in trustees to grant licences But prior notice to be given to owners thereof. No licensee bound to ascertain if owners object to grant. Net trust moneys to be divisible ac- cording to the shares. provision in tliis belialf hereinafter contained or with the consent and concurrence of the owner or owners of any such licence freed and discharged from the same at such prices for cash or if to a limited joint stock company for cash shares or debentures payable or issuable at such times and subject to such conditions as the persons comprising such or any other majority in value of the owners being one-third at least in number thereof shall direct or in default of any such direction then as the trustees shall think fit with power for them without the concurrence of any owner except as to his licence as aforesaid to assign to the purchaser or purchasers thereof the premises so sold and to give complete discharges for the purchase-moneys thereof and so that such purchaser or purchasers shall not be obliged to inquire into the title to any of the shares or otherwise as to the propriety or regularity of the sale (/), 5. Subject to any such sale and licences aforesaid the trustees shall from time to time on the requisition in writing of any owner or owners grant licences to any owners or other persons or com- panies respectively (but as to any owner at his expense including as to the counterpart of his licence) of any patented invention aforesaid according to the form given in the Schedule hereto or such other form as the owners may unanimously prescribe for this purpose : Provided always that the trustees shall prior to any such grant give to each owner who may be unaware of their in- tention to make the same or ignorant of the particulars thereof or send to him by post to his last usual or known place of abode or business a written notice of days at least of their intention BO to do and of the particulars aforesaid and shall not grant any such licence in case a majority in value being one-third at least in number of the owners shall either together or separately serve the trustees with an objection in writing to the grant thereof but in default of the service of such objection or objections within or at the end of the said period may effectually grant the said licence : Provided also that it shall not be incumbent on any person or persons treating for the grant of any such licence to ascertain if any such objections whatever have been or might be made or to require the concurrence of any owner thereto. 6. All royalties and other sums receivable by the trustees under any of the said licences or from sales of any letters patent or other- wise as aforesaid and all other moneys receivable by them here- under shall form part of the trust estate and subject to the pay- ment thereout of all costs and expenses herein provided to be (/) See sects. 35 and 3G of the Conveyancing Act, 1881, as to powers of sale, and giving receipts. Trustees, with power of sale and giving receipts, can alone assign {Biuks v. Lord Rolnehy, 2 Madd. 227) ; but it is usual for the purchaser to require the concurrence of the beneficiaries (where practicable), in order to obtain covenants for title {Re London Bridge Acts, 13 Sim. 176). See Lewin on Trusts (8th ed. 1885), ]}. 447. As the owners (if all sui juris) would be entitled, notwithstanding the power or trust for sale, to elect to take the property in its actual state [Davies v. Ashford, 15 Sim. 44 ; Brovni V. Brown, 33 Beav. 3!)9 ; Sisson v. Giles, 3 De G. Jo. & Sm. 614), the above provision seems necessary, in order to avoid the execution by numerous parties. ASSIGNMENTS. 1'51 made sliall be held by the trustees in trust for the owners in the ^^^°- ^- proportions of their rGspGctivo shares. 7. The trustees shall from time to time out of any trust moneys Disposition of in tlieu- hands pay and discharge and (if they shall think fit) also ^^^^^g"*^ set apart any sum in order to provide for the satisfaction of all or any renewal fees or other costs expenses or liabilities then already due or incurred or which might thereafter become due or be incurred by them in respect of the said trusts or any of them and shall pay or divide tlie balance (if any) of tlie said moneys to or amongst the owners in the proportions of their respective shares : Provided always that all costs expenses or liabilities aforesaid Expenses not paid discharged or otherwise provided for as aforesaid shall as '^^^^^^^^ between the trustees and the owners in respect of whose shares ont^st^" respectively the same shall be payable or incurred by the trustees property be borne by such owners or any one or more of them and in such ^.'jf^^^^^^^'^.f^j.. proportions (if any) as the trustees shall think fit without reference ^^^^^ to shares to tlie interest of any such owner in the trust premises and shall or change of notwithstanding any change of ownership in any of the shares be o^^^rship, a first charge on the trust premises generally but shall as between ^"^^^'J^ tiie owners themselves in respect of whose shares respectively the cxceTs^tlThave said costs expenses or liabilities shall be so payable or incuiTcd be charge on borne by them respectively in the proportions of their respective other shares, shares and so that every sum paid by any owner as demanded by the trustees in respect of any such costs expenses or liabilities which shall be properly payable by any other owner shall together with interest thereon at the rate of 5 per cent, per annum from the time of demand thereof by the owner so paying the same be payable by the other owner aforesaid on demand and shall together with such interest bo a charge on the share of the latter in the trust premises. 8. All proceedings necessary or suitable for the support pro- Legal pro- tection or defence of any letters patent aforesaid (but in respect of ^he'^fcnts.**' any place or district subject to any provisions contained in any licence aforesaid as to infringements within the same (g)) shall be taken and prosecuted by the trustees whenever a majority in value of the owners shall in writing require them so to do. 9. Accounts between the trustees and the respective owners Accounts shall be delivered and settled half-yearly on every day of "^^^^Jf^^^^"" a^inl Jay of commencing with the day of next but the trustees shall bo at liberty at any time to requh-e payment by any owner of any sum found or properly claimed by them to be due to them hereunder whether under any half-yearly account aforesaid or otherwise and in case any owner shall for days after the trustees shall in writing have required him to pay to them any such sum make^ default in the payment of the same or any part thereof the said sum or part ((/) A licence might provide that tlie licensee should luidertake all actions, &c., i'or iufringomont within his district. 152 ASSIGNMENTS. Peec. V. thereof shall thenceforth bear interest at the rate of 5 per cent, per annum until payment or satisfaction thereof. Improve- 10. Each owner shall from time to time &c. \_Part of Clause 5 of !°!f°*flf r,: ^-^^ lr(st precedent] forthwith ffive notice thereof in writing to the any owner to / t j i j i ° i • i n i i be brought in. trustces and the other owners respectively and as and when reasonably required by any owner and at his expense as to actual costs (if any) out of pocket occasioned thereby communicate and explain to him or his agents such improvement addition or discovery and the same shall be considered &c. [«"&.] but in case the communicating owner shall intend to apply for letters patent in respect thereof the trustees shall out of the trust estate or by contribution of the owners generally in the proportions respectively aforesaid pay all the current costs &c. \_Confinue to end of words ^^ communicating oicner" in hracJicts and then as follows'] B.n(\. the trustees shall be entitled to be made co-applicants therefor and the said letters patent or patent rights in respect thereof when obtained shall at the expense of the trust estate or by contribution as aforesaid be vested in the trustees and be held by them as far as possible upon the like trusts and subject to the like terms and conditions as are herein declared and contained in respect of the letters patent hereinbefore expressed to be assigned. Proceedings n. The vendor shall at the expense of the trust estate or the sions^ ^^" owners generally in the proportions aforesaid when required by the trustees so to do as authorized by a majority of the owners being one-third at least in value of whom the vendor may be one execute and do all assurances and things necessary or convenient for enabling the trustees to obtain and as such exclusively hold and enjoy any extension of the said letters patent as shall be reasonably required (/?). Eemuneration 12, Each trustee shall be entitled half-yearly and so proportion- out of\rust ately for any shorter period during his trusteeship to a sum of £ moneys sub- for his services hereunder payable however as to each half-year out ject to other of the trust moneys (if any) at the end thereof available for such expenses. purpose after satisfaction of or making due provision for all fees and other costs expenses and liabilities (if any) then due from or incurred by the trustees in respect of the trust premises with power to make up to himself during the period of his trusteeship the defi- ciency (if any) for any half-year in respect of the said sum out of the trust moneys properly available for the purpose as aforesaid which shall be in or come to the hands of the trustees in any sub- sequent half-3^ear or half-years but such sum shall not be a debt due from any of the owners personally. Power of ap- 13, The power of removing any trustee and also of appointing a new trustees^ new trustee or new trustees hereof shall vest in the majority in value being one-third at least in number of the owners (?). (A) As to extensions, see ante, p. 19. (/) As to appointments of new trustees, see tlie Conveyancing Act, 1881, sects. 31 — 34, and tlie Conveyancing Act, 1882. ASSIGNMENTS. 153 14. If any differonce shall arise between &c. [Arbitration Clause, ^^^^- ^- ante, p. 55, Fonn 24]. Arbitration In witness, &C. {j ). clause. The Schedule. (./) The deed should 1)0 ropjistercd, bxit the trusts ■will not bo noticed. Sec sect. 83 of the Act of 18.S.'} (Appendix, jx/si, p. 321); and as to registration generally, see sects. 2.3 and 87 of the same act, and ante, pp. 23 — 25. For a clause as to service of notices, use Sp. CI. 51, j'ost, p. 242. 154 ASSIGNMENTS. Peec. VI. 1st Testatian. Grant of share. Covenants. Validity of patent. Eenefit of extension. 2nd Tcstalum. Agreement and declara- tion. Assignor to have exclusiv use of the YI. ASSIGNMENT hy a Patentee of a Share of a Patent— tJw Assignor alone to icork the Patent {a). THIS INDENTUEE made &c. Between A. B. of &c. (herein- after called "the assignor") of the one part and C. D. of &c. (hereinafter called " the assignee ") of the other part [recite as in Assignment IV., ante). NOW THIS INDENTURE WIT- NESSETH that in consideration &c. he the assignor as bene- ficial owner doth hereby assign unto the assignee one-twelfth share of and in All those the said invention and letters patent and all extensions thereof and of and in all rights powers emoluments and advantages whatsoever under or in respect of the said letters patent : Except and reserving unto the assignor and his assigns to the extent and according to the conditions hereinafter appearing a right of user of the said x^remises {h) : To hold the said premises unto the assignee and his assigns subject as hereinafter expressed : And the assignor doth hereby covenant with the assignee &c. [as to the ralidity of the j)atent as in Assignment I., ante] : And that the assignor or his assigns will at the expense of the assignee or his assigns execute and do all such assurances and things neces- sary or convenient for enabling him or them to obtain and exclu- sively hold and enjoy subject to the conditions in this behalf herein- after appearing the sole and exclusive benefit of one-twelfth share of and in every extension of the said letters patent as shall be reasonably required by him or them {c). AND THIS INDEN- TUEE ALSO WITNESSETH that in pm^suance of the said agreement in this behalf and in consideration of the premises IT IS HEEEBY AGEEED AND DECLAEED as follows :— 1. The right of user hereinbefore excepted and reserved to the ' assignor ancl his assigns (hereinafter termed "the licence") shall {a) As to assignment of shares generally, see pp. 121—127, ante, and the nature of the above kind of assignment, p. 126, ante. (h) The object of inserting this exception and reservation is to obtain a recognition on the register of the legal rights of the assignor in respect of the share, as otherwise the technical question might be raised that the assignee obtaining a legal interest could not by the same deed grant to the assignor another legal interest (a licence) out of it. Eegistration -will only be of legal rights or interests (sect. 85 of the new act, and ante, pp. 23, 24). (c) The assignor is under no obligation to apply for any extension. ASSIGNMENTS. 155 be the solo and exclusive right to use the said one-twelfth share Teeo. VI. hereinbefore assigned of the said invention and letters patent and gh^re subject of a like share of any other invention and the letters patent to conditions, (if any) in respect thereof for the time being during the sub- sistence of every such letters patent and extension (if any) thereof but subject as hereinafter provided. 2. During the continuance of the licence until any breach (d) by During the assignor of any covenant or condition herein contained and on J"^*;"^,*^ "^^ his part to be performed or observed the assignor shall bo un- sig-normay restricted in the grant of licences at royalties (but not at any grant licences premiums) in respect of the said letters patent respectively except <^f entirety at that the said licences shall be as to the entirety and not any mere ' ^ ^ ' share in the same respectively : Provided always that the assignor —and pay shall within days of the receipt by him of any royalties U^^'S^of ^ imder any of the said licences and notwithstanding the determina- royalties, tion (if so) of the licence aforesaid pay to the assignee one-twelfth part thereof respectively. 3. Except as aforesaid all licences in respect of the said letters Other licences patent respectively whetlior at premiums or royalties or otherwise jl^hf^Trties and whether during the continuance of the licence or after the jointly, revocation thereof (if any) shall only be granted by the said parties jointly and tlie premiums royalties or other sums payable there- under shall be divisible between them in the shares in which they shall be entitled to the said letters patent respectively. 4. The assignor shall half-yearly on every • day of Royalties to and dav of durino: the continuance of the licence ^° V^^'^ ^^ pay to the assignee in respect of each patent article manufactured patent by him according to any invention subject hereto and in the lialf- articles sold year then ended sold by him one-twelfth part of a royalty of ^^ assigiior. shillings (r) : PiiovinKD always (./') tliat every sum not Bad debts, &c. being less than £ which may be owing to the assignor from P^o'^i^lcd for. any single person firm or company or persons jointly as the price of articles sold by him in any half-year aforesaid shall be treated in the accounts therefor as having been then actually paid to the assignor and every sum of whatever amount which at the end of some half-year aforesaid during the continuance of the licence shall have been owing to the assignor as aforesaid for calendar months or more shall unless the assignor shall show to {d) This must be apparently a broacli that the assignee may choose to avail himself of, as the above restriction is plainly inserted for his benefit only. In a lease a proviso that the term sluiU cease on a breach by the lessee will operate only at the election of the lessor. See AVoodfall on Land- lord and Tenant as to voidable leases and forfeiture, pp. 178 and 285 (11th edition). {(') The royalty might bo put on the manufacture onlj-, so as to avoid tho provisions as to bad debts and articles in assignor's possession at the end ot tho licence. See Sp. CI. 2, 4, p. 228, ^ws^, for provisions as to royalties both on manufacture and sale, or with an option to the licensee as to variation of royalties. (/) Omit this proviso, if tho royalties are only to be on tho mamifactures. See Sp. CI. 17 {i>ost, p. 232), for a proviso in similar language; and see tho notes thereto. 156 ASSIGNMENTS. Peec. VI. Eestrictions on assign- ment, &c. by assignor of any part of patent or licence. Payment of renewal fees. Accounts kept, &c. by Half-yearly statement and settlement of accounts. Mutual im- provements, &c. to be brought in. Inspection of factory. the satisfaction of fhe assignee that he had taken all reasonable means to recover the said sum he treated in the accounts for that half-year as having been actually paid to the assignor but except as aforesaid and subject to his accounting for any moneys as and when received by him (if at all) in respect of any debts owing to him as aforesaid no debts at the end of any half-year aforesaid remaining owing to the assignor for articles sold by him as afore- said shall be treated in such accounts as moneys actually received by him. 5. Except by way of granting any licence as aforesaid the assignor shall not without the written consent or concurrence of the assignee assign charge mortgage or in any way dispose of or attempt to dispose of the said licence or any part share or other interest of or in the said letters patent respectively (g) . 6. The amounts of the respective fees for the renewal of the said letters patent respectively shall be borne by and between the said parties in the proportion of their respective shares aforesaid and any moneys paid in this respect by either party which are properly payable by the other party shall be repaid on demand and together with interest thereon at the rate of 5 per cent, per annum from the time of demand shall be a charge on the interest oi the latter in the letters patent and premises then comprised herein. 7. The assignor shall cluring the continuance of the licence keep at his usual or chief place of business all proper books of account &c. [Claxse 6 of Assignment IV., ante, icith the necessary mnations.'] 8. The assignor shall at the end of each half-year aforesaid deliver or send to the assignee a statement of account for the pur- poses of the payments to be made to the assignee for the half-year then ended as aforesaid and shall if required by the assignee but at the expense of the assignor verify or procure some fitting person in his employ to verify the said statement or any part thereof by statutory declaration and subject to such verification pay the sum due on such account to the assignee forthwith. 9. Each party shall from time to time after making any im- provement in or addition to the said invention &c. \_Clause 5 of Assignment IV., ante, icith the necessary variations (//).] 10. The assignee by himself or his agents shall be at_ liberty at all reasonable times during the continuance of the said licence and afterwards for such period as shall be necessary or convenient to him to enter any factory or place of business of the assignor to ascertain the state and extent of the manufacture or sale of the said articles or for other the purposes hereof (?). {(j) This clause is inserted to enable the assignee in the above instrument to have a voice (if possible) in any arrangements by the assignor with the new purchasers, &c., as to the future working of the patents. A breach of the clause will, as provided later, enable the assignee to rescind the licence granted by him. (/i) Or the above might be made a covenant by the assignor alone to bring in any improvements, &c., made by him. For other clauses as to improve- ments, &c., see Forms 15 and 16, ante, pp. 52, 53, and 8p. CI. 44, 45, ]post, p. 240. (?') As to such a clause, see post, Chapter on "Licences," p. 212. For a variation of the above, see >Sip. Gl. 35, post, p. 238. ASSIGNMENTS. 157 11. (J) In taking the final accounts between the said parties at P^ec. VI. the end or sooner determination of the licence tbe assigrnor shall be debited as to each article aforesaid then in his possession and royalties on remaining unsold witli onc-twolfth part of the reduced royalty of articles un- shillings in lieu of the like share of any royalty in respect ^,^'1,51^°*^ ""^ of the sale by him of such article as aforesaid. 12. If the assignor shall become bankrupt or commit any act of Betermina- baukruptcy whether available for adjudication or not or shall onb:mk-'^^"°° make default for the space of twenty-one days in the payment of ruptcy or any moneys duo from him to the assignee hereunder or sliall Iroaches. commit or suffer any breach of his obligations hereunder other than as to the payment of moneys and as to any such breach or obligation (if capable of being repaired or performed) sliall for the space of fourteen days after he shall have been served by the assignee with a written notice requiring him to repair or perform the same shall omit so to do the assignor shall be at liberty at any time thereafter to determine the said licence by serving the assignor or his assignee in bankruptcy (if any) with a written notice for that purpose but such determination shall be without prejudice to the recovery by the assignee of any moneys then already due to him hereunder or to any licence aforesaid granted by the assignor or by the assignor and assignee jointly. I'j. Except where in any case the context requires a different Transmission interpretation or the term " assigns " is already used these presents ^^'^^<^- shall extend and be construed to apply also as far as possible to the assigns of either party in substitution for him. Ix WITNESS, e^C. (/•). (./) Omit this clause if the royalties arc originally only to be on the manufactures. See note (e). (/.•) The deed should be registered. For a clause as to service of notices, use 6^). CI. 51, post, p. 241'. 158 ASSIGNMENTS. Peec. VII. Hecitals. Invention by- assignor. Agreement before grant for purchase of patent. Patent ob- tained in joint names. Assignor to execute this assignment and release. Testatum. VIT. ASSIGNMENT and Eelease of a Patent hij One Co-grantee to the other in pursuance of an Agreement for Sale of the En- tirety l))j the Inventor entered into before the Grant [a). THIS INDENTTJEE made &c. Between A. B. of &c. (herein- after called " the assignor ") of the one part and C. D. of &c. of the other part : Whereas the assignor as the inventor of a new and improved process &e. obtained the acceptance of a complete specification in respect of the said invention on the day of 18 — : And whereas by an agreement dated &c. and made between the assignor of the one part and the assignee of the other part {h) it was agreed amongst other things that the assignee should purchase the said invention and the patent in respect thereof and the benefit as therein provided of all improvements or additions (if any) to the said invention made by the inventor for the sum of £a and that the assignee should be entitled to be made an applicant for the grant of the said patent jointly with the assignor and that the said patent should be assured to the assignee by the assignor so that the entirety thereof should become vested in the assignee : And ^^stiereas the said patent was duly obtained in the joint names of the assignor and assignee and is numbered bearing date the day of &c. (c) and was duly sealed on the ■ day of &c. : And whereas the said sum of £a has been duly paid as the assignor doth hereby acknowledge {d) : And whereas the assignor hath consented to execute the assign- ment of the said patent hereinafter contained. NOW THIS INDENTUEE WITNESSETH that in pursuance of the said agreement in this behalf and in consideration of the sum of £a so (a) THs is to be the kind of assurance mentioned in Agreement V., ante, p. 73. {h) It seems desirable to notice this agreement here specially, not only fully to explain the relative positions of the parties, but also to give, indirectly at least, additional notice of its contents. (c) The day of application. See sect. 13 of the new act {ixist). {d) By sect. 70 of the Stamp Act, 1870 (33 & 34 Vict. c. 97), the term "Conveyance on sale" is to apply to an equitable transfer on which ad valorem duty is payable. The agreement above recited might thus be chargeable, but in practice it seems that the duty is generally put on the deed, which seems an incorrect proceeding. ASSIGNMENTS. 159 paid to the assignor by tlio assignee as aforesaid (the receipt P^ec- VII. whereof is hereby ackuo-wiedged) he the assignor as beneficial owner {e) to the extent only of his estate and interest as herein- before appears in the invention letters patent and premises hereby assured doth hereby assign and release unto the assignee All THOSE the said invention and letters patent and the sole and exclusive benefit thereof and of all extensions thereof and all rights powers emoluments and advantages whatsoever under or in respect of the said letters patent To hold the premises unto the assignee and his assigns absolutely : And the assignor doth hereby cove- Covemnis. nant with the assignee that notwithstanding anything by him the Validity of assignor done omitted or knowingly suffered the said letters patent patent. are now valid and subsisting and not void or voidable (,/) : And Improve- TiiAT the assignor will from time to time after making any im- ^^^^^> -^c. provement in or addition to the said invention &c. [Form 16, ante, p. 52] : And that the assignor will at tlie expense of the assignee Extension. or his assigns &c. [Covenant as to Extensions as in Assignment /., ante, p. 1-37.] In witness, &c. {g). (e) According to Wall v. Brujld (1 Jac. & "W. 494) and LyscKjld v. Edwards (L. R. 2 Ch. D. 499) (Jessel, M. R.), the assignor will have become a trustee for the assignee ; but lie covenants as leneficial owner, because ho was such at the date of the contract. (/) See note (/) to Assignment I., p. 137. [g) The deed should be registered. See last note to Assignment /. 160 ASSIGNMENTS. YIII. Peec.VIII. assignment of a Paicnt to the Iiircnfor {a Foreigner r^s7- dent Abroad) hy Ins Agent, the Patentee. THIS ASSIGNMENT made &c. Between A. B. of &c. (here- inafter called " the assignor ") of the one part and 0. D. of &e. (hereinafter called " the assignee") of the other part : Whereas the assignee is the sole and original inventor of improvements &c. \titk of inrcntio)}'] : And whereas the assignee being a foreigner resident abroad and desirous of obtaining letters patent for the United Kingdom and Isle of Man employed the assignor to obtain the same for the sole and exclusive benefit of the assignee («) : And whereas the assignor accordingly and at the entire expense of the assignee duly made application on the day of &c. for the said letters patent and obtained the grant thereof in his own name : And whereas the said letters patent are numbered : And whereas the assignee hath requested tlie assignor to assign to him the said letters patent. NOW THIS IN- DENTURE WITNESSETH that in consideration of the pre- mises he the assignor as trustee doth hereby assign unto the assignee All those the said invention and letters patent and the sole and exclusive benefit thereof and of all extensions thereof and all rights powers emoluments and advantages whatsoever under or in respect of the said letters patent To hoi-d the premises unto the assignee and his assigns absolutely : And the assignor doth hereby covenant &c. [As in Assignment I., ante, as to validity of XKitent and extensions.'] In witness, &c. Hec'Uals. Assignee real inventor. And being resident abroad em- ployed as- signor. Assignor obtained patent in own name. Number of patent. Request to assign. Testatum. Grant. Covenant as to validity and exten- sions. (rt) The Patent Office will not grant a patent to any importer, or agent of inventor, resident abroad. See ante, p. 13, and Form of Aj'plication Al, post, p. 359. The inventor himself though resident abroad can apply under Form A., post, p. 358. ASSIGNMENTS. 1^1 IX. ASSIGNMENT of a Licence— //«' Licensor not hcing a Far/// (a). Peec. IX. THIS INDENTURE made &c. Between A. B. of &c. (herein- after called " the vendor ") of the one part and C. D. of &c. (here- inafter called " the purchaser ") of the other part : Whereas by a licence under seal dated &c. and made between E. F. of the one part and the vendor of the other part the said E. F. granted unto the vendor and his assigns the sole and exclusive right within the town of &c. to manufacture articles according to the invention mentioned (together with the letters patent in respect thereof) in the Schedule hereto for the residue of the term of fourteen years comprised in the said letters patent at royalties payable half-yearly on every day of and day of and subject to the covenants and conditions therein contained : And ■WHEREAS the vendor hath from the date of the said licence up to this present time worked the said invention in the said town in accordance with the terms thereof : And whereas the veiidor lately agreed with the purchaser for the sale to him of his business in the said town of manufacturing and selling the said articles and other the business of a as from the said day of last {b) : And whereas it was part of the said agreement that the purchaser should purchase the said licence for the sum of £a. now THIS INDENTUEE WITNESSETH that in consideration &c. he the vendor as beneficial owner doth hereby assign unto the purchaser All that the said licence dated &c. and the full benefit thereof To hold the same unto the pui-chaser and his assigns subject to the covenants and conditions therein con- tained and henceforth on the part of the licensee to be performed or observed : And the vendor doth hereby covenant witli the purchaser that notwithstanding anything by him done omitted or knowingly suffered the said licence is now valid and subsisting and not void or voidable and that all the royalties reserved by the said licence have been paid up to the day of last and tliat all the covenants and conditions therein contained and on the (a) See next precedent as to the licensor being a i)arty. As to tlio covenants in a licence binding the assigns of the licensee, see x>ost, Chapter on "Licences," pp. 185, 18G. {h) Omit reference to tkis or any other day if the assignment is dated on a half-yearly day. Eccito also (if so arranged) that "the vendor has duly paid all royalties and other sums reserved by the said licence owing up to tho date hereof." M. M 162 ASSIGNMENTS. Pkec. IX. part of tlie licensee to be observed and performed bave been ' observed and performed up to this present time : And the ruR- CHASER dotb bereby covenant witb the vendor tbat be will as from the said day of last (c) pay the royalties and other sums by the said licence reserved and also will perform and observe all the covenants and conditions therein contained and on the part of the licensee henceforth to be performed and observed and keep the vendor indemnified against all actions claims and expenses in respect of the same royalties sums covenants and conditions or any of them respectively (d). In witness, &c. (e). The Schedule. (c) If the assignment is dated on a half-yearly day, say "henceforth" only. Or if so arranged the vendor can satisfy royalties np to date, and the covenant can be made to apply only to future royalties. ((/) The covenants by the licensee are personal to him and binding through the term, unless otherwise expressed. See ante, p. 128. (e) The deed should be registered, see on^e, pp. 23, 24. ASSIGNMENTS. 103 X. ASSIGNMENT of a Licence — the Licensor hciny a Parti/ (a). Peec. X. THIS INDENTURE made &c. Between A. B. of &c. (hereinafter called " the vendor " ) of the first part E. F. of &c. (hereinafter called "the licensor") of the second part and C. D. of ) that he the purchaser will as from the said day of last (c) pay the royalties and other sums by the said licence reserved and also ^^■ill perform and observe all («) See last precedent as to the licensor not being a party. As to the covenants in a liccnco binding the assigns of the licensee, see post. Chapter on "Licences," pp. 185, 18G. {l>) The benefit of these covenants as choses in action can be assigned by the licensor both at law and in cquitj'. Soo now the Judicature Act, 1873 (36 & 37 Vict. c. 66), s. 2j, sub-s. 6. {c) Or " from henceforth," as arranged. m2 164 ASSIGNMENTS. Peec. X. Proviso that vendor be not released from his obliga- tions vmder the licence. the covenants and conditions therein contained and on the part of the licensee henceforth to be performed and observed and doth hereby also covenant with the vendor that he the purchaser will henceforth keep the vendor indemnified against all actions claims demands and expenses in respect of the said royalties covenants and conditions or any of them respectively : Provided always that nothing herein contained shall be construed or operate so as to absolve the vendor as against the licensor or his assigns from any of his obligations under the said licence. In witness, &c. The Schedule. ASSIGNMENTS. 165 XI. DEED OF Partition of a Patent. Peec. XI. THIS INDENTURE made &c. Between A. B. of &c. of the first part C. D. of &c. of the second part and E, E. of &c. of the third part \_Recite grant of 2)atcnt to tlie parties jointly'] : And Mccitah. ■NVHEKivAS the said parties have agreed to make such partition of Grant of their rights under the said letters patent as hereinafter expressed : patent to all And whereas it has also been agreed that for equality of partition ■" ' ' the said A. B. shall pay to the said E. E. tlie sum of £a and the f^^ partition said 0. D. shall pay to the said E. E. the sum of £b. NOW s,„ns to be ' THIS INDENTURE WITNESSETH that in pursuance of paid for the said agreement in this behalf and in consideration of the sum equality- of £a this day paid by the said A. B. to the said E. F. and of the Testatum. sum of £'h this day paid by the said 0. D. to the said E. F. I^cleaseby (the receipt of which sums of £a and £]? respectively the said the^iird°on° E. F. doth hereby acknowledge) and also in consideration of the of the rights loremises every two of them the said A. B. C. D. and E. F. as ^y^"" ^li'^.f *^" beneficial owners respectively according to the terms of the said to him. letters patent do and each of them doth hereby assign and release unto the third of them All those the said invention and letters patent and the sole and exclusive benefit thereof and of every extension thereof and all rights powers emoluments and advantages whatsoever under or in respect of the said letters patent for the districts or places mentioned opposite the name of such third person in the Schedule hereto but not for any other district or place To hold use exercise and enjoy the said premises Tinto and by such third person aforesaid and his assigns abso- lutely (r?). AND IT IS HEREBY AGREED AND DE- ^^-^^""^ GLARED that the amounts of the respective fees for the renewal ^"''""' *• . of the said letters patent and any oilier letters patent for the time certain pro- being subject hereto respectively shall be borne by and between portions, the said parties in the following proportions namely as to the said A. B. ths as to the said C. D. ths and as to the said E. F. ths and that any moneys paid in this respect &c. [r/.s in Assignment IV. ^ ante, p. Jji^kxji^'H'IU^J'^ ''^'^^L," ^^^^JP-Hl^ "i(^i'>U Application for Patent— The Acjreement having charged the Patent rights with repai/ment, and the Joint Grant having been obtained as Additional Security — Interest at Fixed Eate, and also according to Profits— 0;* Piedenption the Entirety to be assigned to Inventor— IA.gw.'ey.- IMENT I. carried out {a).'] THIS INDENTURE made &c. Between A. B. of &c. (herein- after called "the mortgagor") of the one part and C. D. of &c. (hereinafter called " the mortgagee ") of the other jjart : Whereas the mortgagor as inventor of a new and improved process &c. made his application for letters patent on the_ day of 18 — and obtained provisional protection in respect of the said invention on the day of &c. : And whereas by an agreement [b) dated &c, and made between the mortgagor of the one part and the mortgagee of the other part it was agreed (amongst other things) that on the respective events therein mentioned the mortgagee should advance moneys to the mort- gagor by instalments amounting altogether to the sum of £a to enable him to obtain the patent for and establish himself at in the business of working the said invention : And that as soon as the mortgagee should have advanced the mortgagor the sum of £b he should be entitled to be made an applicant for the grant of the patent jointly with the mortgagor: And that immediately after the grant thereof the mortgagor should execute a mortgage thereof or of all his interest therein so that the entirety thereof should be vested in the mortgagee to secure the repayment of all advances under the said agreement together with interest as therein provided and so that on redemption the entirety of the said patent should be assigned to the mortgagor: And that until the said mortgage should be executed the patent rights for the time being comprised in the said agreement should stand charged with the repayment of the principal moneys and (a) See tliis agreement, p. 59, ante. \h) Agreement /., ante. MORTGAGES. 173 interest as aforesaid and the mortgagor should hold the same in ^i^^c. II. trust for the mortgagee to enable him more effectually to enforce the said charge (where necessary): And avukiikas ad valorem Full stamp stamp duty as on a mortgage namely £ has Lecn paid on 3^^.^^^^^° the said agreement to the full extent of the said sum of £.\ (c) : And whereas the said patent Avas duly sealed on the day Joint patent of last and granted to the said parties in then: joint names : ^^" ^ ' And whereas in pursuance of the said agreement the mortgagee Sums ad- advanced to the mortgagor the sum of £n on the day of JJ^^J^^^J^.'^^'^ last and the sum of £c on the day of ^ — last: n,ent° AxD AVHKREAS all intcrcst as aforesaid has been duly paid to the interest paid morto-agee on the said sums of £b and £c up to the date hereof {d) : up to date. Ani)°aviiereas the mortgagor hath established himself at '^.^rbrh'^d- aforesaid in the business of working and hath for some time worked business of "' the said invention : And whereas these presents are intended to lurking be the said mortgage with certain modifications (e). NOW THIS patent. INDENTURE WITNESSETH that in pursuance of the said i*< Testatum. agreement in this behalf and in consideration of the said sums of £b J/^^^^X"^^^„';{ and £c so advanced by the mortgagee to the mortgagor as afore- final advjince said and of the sum of £d now paid (/) by the mortgagee to the now made, mortgagor making together with the said sums of £b and £c the said sum of £a (the receipt of which said sums of £b £c and £d respectively the mortgagor doth hereby acknowledge) he the mort- gagor doth hereby covenant with the mortgagee that he the mort- pay'^'rincip^'al gagor will pay to the mortgagee on the day of and interest next {(j) the sum of £a together with interest thereon from the on fixed day. date hereof firstly at the rate of per cent, per annum and J'^^JJ^jJ^g^^^^ secondly to the extent of one-third share of the net profits (if any) ^{^^ accordhig of the said business for the half-year then ending or such part of to profits. the said one-third share as shall be equal to per cent. (//) of the said sum of £a. AND THIS INDENTURE ALSO 2«'^7''^'«'«-- AVITNESSETH that for the consideration aforesaid the_ mort- f^d fTw of gagor as beneficial owner to the extent hereinbefore appearing (/). patent. doth hereby assign and release unto the mortgagee the said invention and letters patent and the sole and exclusive benefit thereof and of all extensions thereof and all rights powers emolu- ments and advantages whatsoever under or in respect of the said letters patent To hold the said invention letters patent and pre- (c) See Stamp Act, 1870, tit. "Mortgage," &c. Tho stamp duty ou tlie above mortgages will be sixpence per 100/. {ibid.). {(l) This will bo found convenient, and can bo deducted from tbo final advance about to bo made. The covenants for payment of principal can thus be simplified, althougb in variance of the agreement in this respect. (e) Those will, in particular, bo as to tho times for repajTuent. (/) Before advancing this sum tho mortgagee should, of course, see that the register discloses no mesne incumbrances. (g) At the end of six calendar months. (/t) In fixing this percentage it should be noticed that the period is half-a- year only. As to this kind of interest, see pp. 29, 30, ante. (/) This saves tho full statement of tho mortgagor's interest. lie virtually covenants as beneficial owner of the entire patent subject to the agreement and charge, and any acts of the mortgagee in respect thereof. 174 MORTGAGES. Peec. II. Proviso for redemption. Further like interest after day of re- demption. raises unto the mortgagee subject to the proviso for redemption hereinafter contained : PpvOviuel) always that if the mortgagor shall on the day of next pay to the mortgagee the sum of £a with interest for the same in the meantime firstly at the rate of per cent, per annum and secondly to the extent of one-third share of the not profits (if any) of the said business for the half-year then ending or such part of the said share as shall be equal to per cent, of the said sum of £a then the mortgagee will at any time thereafter at the request and cost of the mortgagor assign to him the entirety of the said invention letters patent and premises : And the mortgagor doth hereby covenant with the mortgagee that if the said sum of £k or any part thereof shall remain unpaid after the said day of next he will pay to tlie mortgagee half-yearly on every day of and day of interest {j ) thereon or on such part aforesaid firstly at the rate of_ Moneys to remain for term certain if interest punctually jiaid. Covenants. Validity of patent. Other clauses. (See Mort- gage I., ante.) Charge kept on foot. per cent, per annum and secondly to the extent of one-third share of the said net profits (if any) for''the time being or such part of the said one-third share as shall be equal to per cent, of the principal sum for the time being remaining unpaid hereunder: Provided however that if the mortgagor shall on every day of and day of until the day of 18— (/.•) or withm thirty days after each of the said days respectively pay to the mortgagee interest for the said sum of £a at the rate first men- tioned in this behalf and also further interest in respect of one- thii'd share of net i^rofits as aforesaid up to the same half-yearly days respectively and shall perform and observe &c. [liemaiiider and foUoicuifj proviso as at -p. 169 in last pvecedenf] : And the mort- gagor doth hereby covenant with the mortgagee that the said letters patent are now valid and subsisting and not void or void- able and that the mortgagor will &c. &c. {Continue as in last prece- dent to the end thereof hut inserting Form 13, p. 51, ante {mth the neeessary rariations as to expenses and otherwise) as to half-j/earhj accounts inspection See. immediateli/ before the covenant as to improve- ments or additions]. AND IT IS HEEEBY DECLAEED that for the purpose (if necessary) of protecting the mortgagee against any mesne incumbrances the charge effected by the herein- before recited agreement dated &c. as aforesaid shall be kept on foot (/). AND IT IS HEEEBY DECLAEED that &c. [_Transmission Clause as in last precedcnf]. In witness, &c. {m). {j) The same two kinds or rates of interest as before. (A-) The end of the fixed term. . {I) This is to prevent, if possible, merger of secnrities, m case the agree- ment should not have been executed as a deed, or registered. {m) The deed should, of course, be registered. For a clause as to service of notices, use Sp. CI. 51, j^osf, p. 242. MORTGAGE!?. 175 III. MORTGrAGE of a Licence {the Licensor not hoinrj a Party) {a). Peec. III. THIS INDENTURE made &c. Between A. B. of &c. (herein- after called " the mortgagor ") of the one part and C. D. of &c. (hereinafter called " the mortgagee ") of the other part : Whereas by a licence under seal dated &c. \_recite licence as in Assign- Recitals, ment IX., a)itc~\ : And whereas the mortgagor hath requested Licence. the mortgagee to advance him the sum of £ to be secured Intended together with interest thereon by mortgage of the said licence in manner hereinafter appearing. NOW THIS INDENT UEE ^*< Testa/um. WITNESSETH that in consideration &c. he the mortgagor Covenant to doth hereby covenant &c. [first testation in Mortqaqe /., ]3. 107, SSteTeT^ ante, except as to future admnces']. AND THIS INDENTEEE on redemption ALSO WITNESSETH that for the consideration aforesaid he ^^3^- the mortgagor as beneficial owner doth hereby assign [tj) &c. \_as in ~"'^ Tisiatmn. Assignment IX., ante, p. IGl, to the end of the habendum'] and ;f/STe"* also subject to the proviso for redemption hereinafter contained: subject to Provided always that if &c. [proviso for redemption as in Jlort- proviso for gage I, ante, p. 168, except as to future advances'] : And the mort- ^''^*l^™Ption- GAGOR doth hereby covenant Avith the mortgagee, &c. [covenant for ledL^I'ptiou payment of interest after redemption day, as in Mortgage I, ante. Covenant for p. 168, excejyt as to future advances and reduction of interest, c^r.] : further in- And the mortgagor doth hereby also covenant with the mort- t^'^'^st. gagee that the said licence is now valid and subsisting and that all Covenants as the royalties reserved by the said licence have been paid up to the licence.' ^^ day of last (c) and that all the covenants and con- ditions therein contained and on the part of the licensee to bo observed and performed have been observed and performed up to this present time : And that the mortgagor wiU dm-ing the con- For payment tinuance of this security duly pay all royalties and other sums (if of roj-aitics, any) duo under the said licence and observe and perform all the covenants and conditions in the said licence contained and on the (o) If the licensor is made a partj', see next precedent. {b) There is no need of assuring the licence by way of demise, as covenants relating to personalty (not being Icasoliolds) do not run with the property. See Sj'iencer's Case, o Coke, IG, and 1 Smith's L. Cas., and notes thereto. The mere assignment does not fix the mortgagee with Liability. (c) The last half-yearly or other date for payment of royalties. 176 MORTGAGES. Peec. III. Quiet enjoy- ment by mortgagor until redemp- tion day. Transmission clause. part of the licensee to be observed and performed. HEREBY DECLAEED {d) that until the said AND IT IS day of next the mortgagor shall be at liberty alone without inter- ruption from the mortgagee to exercise and enjoy all or any of the powers and rights conferred by the said licence. AND IT IS HEREBY ALSO DECLARED &c. [Transmission Clause as in Mortgage I., ante']. Ix WITNESS, &c. {e) . (d) If the licensee (mortgagor) has power to grant sub-licences, provisoes similar to those in Mortgage I., ante, as to tte use of the invention and granting of licences by the mortgagor and mortgagee respectively, should be inserted in substitution of the above declaration. (e) The mortgage should be registered. For a clause as to service of notices, use Sp, CL 51, post, "p, 242. MORTGAGES. ^'^^ IV. MORTG-AGE of a Licence {the Licensor hcinfj a Parf//) {a). Phec. IV. THIS INDENTURE made &c. Between A. 13. of &c. (herein- after called " the mortgagor ") of the first part E. F. of &c. (here- inafter called " the licensor ") of the second part and C. D. of &c. (hereinafter called " the mortgagee ") of the third part : Whereas Jiecitah. by a licence under seal dated &c. [recite licence as in Assignment IX., Licence. ante, but mth mention of the renf]: And whereas in the said mich is not licence it is provided that the licensee shall not assign mortgage *°^|^^XS or incumber the same without the consent in writing of the consent of licensor {h) : And whereas the mortgagee hath agreed to advance licensor. the mortgagor the sum of £ to he secured together with A-recment interest thereon by mortgage of the said licence : And whereas fo^ advance, the sum of £a is now owing to the licensor in respect of rent due to ^^^^^^^ him under the said licence on the day of last : And licensor for whereas except as aforesaid all payments of rent and royalties rent. and other sums under the said licence have been duly made up to other sums the said day of last: And whereas the licensor ^^"^erjkence hath af^reed to join in these presents m order to testify his consent ' - to the assignment of the said licence to the mortgagee upon the Jj^^e^to join terms that the sum of £a part of the said sum of £ shall on payment of be paid to him the licensor in satisfaction of the said sum of £.^ so arrears a^ owing to him as aforesaid (c) and also that the mortgagee shall ^„;,„,^i' enter into the covenant hereinafter expressed to be entered into by from mort- him NOW THIS INDENTURE WITNESSETH that in gagee. pm-suanco of the said agreement in this behalf and in considera- ut Testatum. tion of the sum of £a this day paid to the licensor by the mort- Cove^antj to gagee at the request of the mortgagor (the receipt whereof the i^;,-^ 1^,^,, Jt licensor doth hereby acknowledge) and of the sum of £n this day onredemp- paid to the mortgagor by the mortgagee (the payment and receipt tion day. of which sums of £a and £n making together the said sum of £ the mortgagor doth hereby admit and acknowledge) he the mortgagor doth hereby covenant &c. [covenant to paij principal {a\ If the licensor is not to be a party use last precedent. (6) As to the effect of tliis covenant, see Chapter on " Licences, i^o&t, pp. 213,214. ^. „, (c) See note (0 to p. 213, ^os,t (Chapter on " Licences ). M. ^ 178 MORTGAGES. Peec. IV. 2nd Testatum. Assignment of licence. Subject to covenants &c. in licence and covenant by mortgagee and proviso for redemp- tion. Proviso for redemption. Covenant for further in- terest. And as to validity of licence, pay- ment of future rent &c. Quiet enjoy- ment by mort- gagor until redemption day. Covenants by licensor with, mortgagee. As to validity of licence and power to confirm the mortgage. Covenant by mortgagee with licensor to perform covenants in licence during possession. Proviso for obhgation to cease on mortgagee procuring a substituted covenant from assigns. and iiiferesf, as in the first testatum hi Moi'tcjage /., ante, except as to future advances-]. AND THIS INDENTURE ALSO WIT- NESSETH that in pursuance of the said agreement in this behalf and for the considerations aforesaid he the mortgagor as_ beneficial owner doth hereby assign and he the licensor by the direction of the mortgagor as such beneficial owner doth hereby confirm unto the mortgagee All that the said licence dated &c. and the full benefit thereof : To hold the same unto the mortgagee and his assigns subject to the covenants and conditions in the said licence contained and on the part of the licensee to be performed and observed and to the covenant by the mortgagee and the proviso for redemption hereinafter contained : Provided always that if &c. [proviso for redemption, as in Mortgage I., ante, p. 168, excejjt as to future advances'] : And the mortgagor doth hereby covenant with 'the mortgagee, &c. [covenant for payment of interest after the re- dem2)tion day, as in Mortgage L, ante, p. 168, except as to future advances] : And the mortgagor doth hereby also covenant with the mortgagee that &c. [covenants as to validity of the licence, payment of the rent and royalties, and observance, 8fc. of the covenants in the iicence, as in last Precedent]. AND IT IS HEREBY DE- CLARED by the mortgagor and mortgagee that until the said day of next the mortgagor shall &c. [declaration as to quiet enjoyment, as in last Precedent] : And the licensor doth hereby covenant with the mortgagee that notwithstanding &c. [covenants {qualified) as to the validity of the patent, as in Assignment I., ante, and that " ithe licensor hath now full power to confirm the said licence in manner aforesaid" (^/)] : And the mortgagee cloth hereby covenant with the licensor that he the. mortgagee or his assigns so long as he or they respectively shall have possession of the premises or be in the receipt of the profits thereunder whether during the continuance of this secmity or after the foreclosure of the equity of redemption in the premises or (as to the assigns last aforesaid) after the sale (if any) of the premises under the statu- tory power to be implied herein will perform and observe the cove- nants and conditions in the said licence contained and on the part of the licensee to be performed and observed for the time being (e)^ : Provided always that the obligation of the mortgagee under this covenant shall on the assignment by him (with the consent of the licensor) of the premises whether by way of transfer of his mort- gage hereunder or on sale by him of the premises or otherwise entirely cease as to the performance and observance by him of the covenants and conditions last aforesaid then remaining to be per- formed and observed and as to which no right of action shall then already have accrued if he the mortgagee shall procure from the transferee or assignee a substituted covenant by him Avith the licensor or his assigns to the like purport and effect as this present [d) These covenants may be regarded as a set-off against the covenant by the mortgagee (see later). (e) This covenant, coupled with the provisoes -which follow, will place the mortgagee on a similar footing to that of an assignee of a lease. MORTGAGES. 179 covenant so far as tlie same shall be appKcable : I'kovided also Peec. rv. that nothing herein eontainod shall be eonstrued or operate so as to But no release absolve the niortgag-cjr from any of his obligations under the said to mortfjagor licence. AND IT IS HEREBY DECLAKED &c. [trcnmmmon l^Zts^'^"''"" chime, as in MortycKje I., ante]. Ucencc. In witness, &c. (/). (/) The mortgage should bo registered. Per a provision as to service of itices, see Sp. VI. 51, post, p. 242. notices n2 180 LICENCES. CHAPTER ON LICENCES. FAQE Definition of licence; Exclusive licence — effect of later licence to another person ; partially exclusive licence ; Licence may amount to an assignment; should be under hand and seal; but, if not ^ might be good as between parties, though it cannot be registered^ nor enable licensee to take proceedings for infringement^ and no estoppel from the recitals 182-4 Assignmeyit of a licence — Covenatits how far binding on assigns of licensee ; Werdermann v. Societe Generale d'Electricite ; ivhat covenatits to pay bifid assigns, and lohat do not, semble ; passive covenants as to user of invention probably bind assigns 184-7 Sub-lice7ices 187 Estoppel of Licettsee during licence from disputing validity of patent — even if licence be exclusive; and ivhether licence be by deed or not ; but not so after patent set aside atid iise of invention discontinued or licence determined ; how licensee should relieve himself from obligations if patent void ; tnoney paid not return- able, unless total failure of consideration, or apportioned part thereof, or where fraud 1 87-91 Estoppel by recitals, Sfc. in licence; What recitals should be in licences 191-2 " Give'''' and " Grant'''' do not imply covenants; implied covenants by use of words " as beneficial owner '^ or '^ as trustee''^ ; Con- sideration — fines, premiutns, royalties, rent; Average clause; use '■'■assigns" if licence assignable {with consent or not); To '■' selV or '^manifacture and sell" the patent articles — hut right to manufacture includes right to sell ; Reddendum 192-4 Preliminary remarks on covenants atid provisoes in licences — The following remarks are subject to some mod'ifications where the licences are only to " sell " 194-5 What covenants in licence xohere only open contract to grant one; practice of conveyancers ; covenants for title and as to validity of patent — where premium or rent; ivhere no premium or rent; in licences generally ; usually imimportant, as prior searches and investigation of title are relied on 195-7 LICENCES. 181 PAGE Other ordinanj covenants hy licensor — in licences at royalties only ; in licences at premiions or rents; 1. I'o pay reneical fees and perform &^'c. the otlier conditions of patent ; 2. To defend patent ; 3. To take proceedings for infringement or permit, Sfc; 4. Not to amend specif cation ; 5. As to improvements; G. {In exclusive licence) No other subsisting licences; 7. (/n exclusive licence) Not to use Sfc. invention tvithin district; 8. Poicer for licensee to determine licence, if patent void, or breach of covenants ; 9. Production ^'c. of the letters pictent ; No remedy if licensor not agree to pay fees ; Non-exclusive licensee cannot sue for infringetnents, hut an exclusive licensee may, in name of licensor, or, semhle, in oivn name, if licensor he co-plaintiff or defendant ; and licensor may sue alone, for special damage, notwithstanding exclusive licence — Consent to amendment of specification not to he arbitrarily icithheld . .198-202 Ordinary covenants by licensee ; No clause for distress since Bills of Sale Acts 202-3 Special covenants in connection ivith ordinary covenants now to be noticed 203 Covenant to pay royalties, rent ^'c. ; royalties on manufacture, sale or both ; reduced royalties on articles in hand at end of licence ; option of licensee to pay royalties on sale instead of manufacture or vice versa &j-c. or on both ; remission of royalties in the case of bad debts; suspension of rent and royalties tchile licensor omits to take proceedings for infringements ; royalties and rent j)aid to trustees during proceedings for revocation of patent ; cesser of rent tchile liceiisor fails to supply material according to his covenant ; commutation of royalties 203-7 Covenant not to grant licences at lower royalties or for reduction to same amoimt as in other licences ; royalties in ascending or descendi^ig scale 207-8 Exclusive licence for district on sale o« hire system — covenants in such a licence 208 Different kinds of royalties 209 Covenant to keep and furnish accounts and allow inspection &,'c. ; covenant to use the patent mark on articles ; supply of dies pilates ^'c. ; use of patent mark by sub-licensees; covenant to manifacture only according to specification ; covenant by licensor to assist licensee in ajyplication of invention ; covenant as to liberty for licensor to inspect factory 210-3 Covenant 7iot to assign or charge licence or grant sub-licences without consent — consent given upon terms; consent not to be arbi- trarily icithheld; consequence of breach of such a covenant; express power to grant sub-licences; terms of such a power ; royalties to liceiisor from licensee t7i respect of sub-licences . . . .213-6 Covenant not to dispute the validity of the pateyit ; covenant to detect itfringements, and assist licensor in proceedings 216-7 Covenants as to improvements ^'c. made by either party 218 lievocation of a licence — notice to repair breach before potver exer- cised ; breach not cause forfeiture if no power of revocation ; Detennination of the licence by the licensee — Neilson v. Fotliergill ; power to determine 07i breach by licensor ; Return of part of premium on patent becoming void 218-21 182 LICENCES. Definition of licence. Exclusive licence. PAGE Licence nierchj to sell the patent articles— contents of such a licence . 221 Arbitration clatisc ; other special covenants to he found in the pre- cedents ; Registration of licences ; Fees a7id Stamps 221-2 List of Ordinary Covenants in licences 223-5 A LICENCE as to a patented invention may be defined to be the grant by tlie owner of the patent of an authority or right to use the invention («). Where this right is to be exercised to the exclusion of all persons, including (generaUy) the owner himself and persons claiming under him, it is termed an exclusive licence for the district within which it is to be exercised. As ambiguous words in a deed will be taken most strongly against the grantor and in favour of the grantee (^), it is generally understood, and would no doubt be held, that, by the grant of " the full sole and exclusive licence " to use an invention within a district, the licensor and his assigns of the patent would be excluded from the use of it and be prevented from granting licences to other persons within the district (c). It is, however, a common practice to insert in an (a) A licence to use an invention comprised in a patent is in fact a grant of a right by tlie patentee to the licensee (see, respecting the difference between a licence and grant, 15 Yin. Abr. tit. Licence (A) ), and during the time it is in force it exempts the licensee either from the whole or some portion of the prohibition contained in the patent, and enables him to exercise the whole or some particular part of the privilege granted by the patent (Webs. 239). The only right which a licensee can acquii-e under the letters patent is a right of user (per Lord Eldon in George \. Beaumont, 1 Carp. P. 0. 295, qua right of a licensee to sue for infringement, as to which see infra, pp. 200, 201). (i) "Verba fortius accipiuntur contra in-oferentem " (Co. Litt. 36a; Bac. Max. Eeg. 3 ; 2 Bl. Com. 380). (c) Hindmarch, p. 240, says :—" Unless then the licensor retains a right to use the invention himself, an exclusive licence for the entire term shows that the parties intended the licensee to have the sole right to exercise the whole or some particular portion of the privilege comprised in the patent, and also that the licensor should not have the power to grant any other licence, &c." Coryton, p. 120, says to the effect that a licence of the exclusive use of an invention amounts to an assignment, in the same way that a demise by a lessee for the whole term amounts to an assignment of the premises to the underlessee. It is submitted, however, that the analogy in such case is not complete, as, in the case of the demise, unlike that of the licence, the right (if any) claimed by the grantor to the premises is entirely inconsistent with his grant. LICENCES. 183 exclusive licence a covenant bj the licensor that he and his assigns will not, during the continuance of the licence, use the invention or grant other licences in respect of it within the district (d). If Effect of later the licensor sliould in derogation of tlie exclusive licence grant a ^^q"^*' ^"^ licence to another person, the question of priority l^etween the two person. licences will depend on the respective times of registration of them, suhject to the equitable doctrine as to notice (c). A licence may, of course, be only partially exclusive or non- Partially exclusive, c.r/. where the licensor has already granted non-exclusive UcellSs^" licences for the same district, or covenants not to grant more than a limited number of other licences in the district, or where the effect of the operative part of the grant expressing the exclusive- ness is modified by a proviso that, in certain events, such as a breach of certain covenants or the failure of the licensee to work the invention profitably (/), the licence shall become non-exclusive or the licensor may grant other licences to a limited extent. As no particular form seems needed for an assignment of a Licence may patent, it may happen that the grant of a licence substantially a^r^ment*" amounts to the grant of all the rights covered by the patent. In such a case, the licence will be construed as an assignment of the patent {(/). {d) See Sp. CI. 29, p. 23G, j^osf. In Ilindmarch, p. 240, it is stated that an exclusive licence usually contains a covenant by the patentee that he -will not grant any other licence to interfere with the licensee's privilege, but that it is doubtful -whether such a licence or covenant divests the patentee of all power to grant a licence contrary to his covenant, although he would clearly render himself liable to an action if he were to grant a licence contrarj' to his covenant. This statement, however, appeared in 1S46, before the establishment of any register of patents or licences, and must now be modified by taking into account the protection given by the late Act of 1S52 (15 & IG Yict. c. 83), sect. 35, and the Act of 1883, sect. 87 (Ajipendix, j^osf, p. 322), to register licences. (e) As to registration generally, see sects. 23, 85, and 87 of the Act of 1883 (Appendix, _^os^, pp. 313, 321, 322); and see also pp. 23—25, c'mte. (/) For a proviso as to unprofitable working, see Sp. CI. 50, post, p. 242. (g) As to a licence amounting to an assignment, see Ilindmarch, 241 ct seq. The opinion seems to bo there expressed that any reservation to the patentee [owner of patent] or any condition to avoid the licence, will prevent the licence from being construed as an assignment. An exclusive licence operating as an assignment is there treated as on a similar footing to that of a demise by a lessee of all the term {Palmer v. Edwards, 1 Doug. 187, n. ; Parmenter v. Wehher, 8 Taunt. 593; see also Beaumont v. Marquis of Sah's- hurij, 19 Beav. 198; and Beardmore v. Wihon, L. E. 4 C. P. 57). The reservation, however, must, it is submitted, be that of the patent rights on 184 LICENCES. Should be under hand and seal. But if not, might be good as between parties ; tho\igh it can- not be regis- tered nor enablehcensee to take pro- ceedings for infringement ; and no estop- pel from the recitals. Assignment of a licence. A patent usually provides that licences should be under the liand and seal of the patentee or his assigns {/i) ; but delivery also is not required in order to constitute the licence a deed (/) . As between the licensor and licensee, however, a licence by parol, whether expressed in writing or not, may be good, if acted upon by the parties for a time, especially where royalties have been paid on the patent articles manufactured by the licensee in accord- ance with the licence (J). Such a licence could not, it is pre- sumed, be registered at the Patent Office, nor would the licensee as such, in the name of the licensor or otherwise, be enabled success- fully to prosecute any action for infringement of his alleged rights (/.•). Further, no estoppel would arise from any recital or statement in such a licence (/) . A licence is not assignable if the grant of it is not expressed to some contingency, as the mere reservation of rent or royalties, without power of resumption on default, will not give the licensor any interest in the patent itself. On the same point, see also ante, p. 1 1 1 , n. (/i) See the form of a patent under the present practice as to the grant of licences, Form I., ante, p. 48. For the contents of a patent under the late acts, see ante, pp. 5, G. {{) See Chanter v. Johnson (1845), 14 Mees. & "Wels. 411, where it was held that no stamp was necessary, as a licence rather resembled a warrant or award, which, though under seal, was not a deed. There the licence did not purport to "be sealed and delivered. In Evans v. (rrey, 9 L. E. (Ir.) 539, it was decided that an attestation clause " signed, sealed, and delivered," &c., is jirimd facie evidence of delivery, and that leaving the deed on a table " for a few seconds" is a sufficient delivery (per Sullivan, M.E., as cited in Elph. N. & C. in the Addenda). (,/) CrossUy v. Dixon, 10 H. L. Cas. 293. In Chanter v. Deivhurst (12 ISIees. & Wels. 823), it was decided that a person having obtained a licence not under seal, for which he had bargained, was bound to pay for it, and that although the patent required the licence to be under hand and seal, the licence was not void. Alderson, B., said : — " To grant a licence not under seal is a contempt of the Crown, but does not exempt the man to whom it is granted, and who derives a benefit from it, from pajdng the price of it." It was not decided, however, that the licensor had an absolute power to grant licences not under seal. Further, the licence was to make the patent machine for use on the premises ; and the same judge considered the licensee was, for such a purpose, only an agent of the licensor, and that he was not thereby holding himself out as the inventor contrary to the terms of the patent. As to estoppel by judg- ment, see Goucher v. Clayton, 11 Jur. N. S. 107 and 462. {k) See post, p. 200, as to actions for infringement by a licensee. (1) See 2^cst, p. 191, as to estoppel by recitals in a deed. It does not seem to have been decided that estoppel can arise as to recitals, &c., in instruments under seal merely, and not delivered as deeds. LICENCES. 185 extend to assigns. A licence merely grants a power or dispenses with a right or remedy, and therefore confers a mere personal right upon the licensee which cannot Lo conferred on any other person, unless the grantor in the instrument itself makes the privilege which ho grants assignable {i/i). It has been stated, however, that a licence is not in strictness assignable, even if the assigns of the licensee are mentioned in the licence as grantees, but that, in the latter case, the assigns become licensees at least by estoppel between them and the licensee, and also by vu-tue of the grant to the assigns (;/). As all the covenants in a more licence are personal only, the Covenants assigns of the licensee will not at Common Law be bound by his iug on assigns covenants, notwithstanding that the latter are expressed to extend to assigns {o) . In Equity, however, the assigns of a licensee, taking with notice (p) of his covenants (as would generally be the case either in fact or constructively), would be bound by the covenants to pay royalties, where they are to consist of a share of the net profits to be obtained by the use of the invention. On this see the ease of IFcrdcnuaini v. Sociefe Generalc cV Elect ricite {q), irirdermann in which a covenant by an assignee of a patent that he and his Ci'iicra/e assigns would pay the assignor a percentage on the net profits, '^ ^^'<^'>''c*^^- was held to bo binding on the assigns who took with notice of the covenant, and they were ordered to furnish accoimts accordingly. (m) Ilindmarcli, 242. (?j) "A licence is not really assignable, but the assignment acts only as an estoppel between the parties" (per Jervis, C.J., in Bower v. Ilochjes, 22 L. J. C. V. 194). "Licensing a person and his assigns is licensing him and all whom he shall licence. You cannot say there is any particular form for passing a licence" (per Maulo, J., ibid.). From the latter observation it would appear that in general, unless the context clearly requires another interpretation, the word " assigns" includes sub-licensees. {(>) See Chajjter on "Assignments," anie, pp. 120, 121, as being applicable to licences also. The covenants by a licensee and a proviso avoiding the licence on the breach thereof, are absolutely necessary for the security of the licensor where any payments are reserved (Hiudmarch, 244). If the licence is assignable, the licensee might after assigning become insolvent or quit the country, so that the patentee could not have any remedy against him for non-payment of the sums reserved {ibid.). And as the assignee would not bo bound by the covenants of the licensee, the patentee would have no remedy against him in a court of law, and would bo driven to have recourse to a suit in Equity [ibid.). ip) A.S to notice, see sect. 3 of the Conveyancing Act, 1S82, Appendix, post, p. 383. (2) L. E. 19 Ch. D. 247 (Ct. App.), and ante, p. 120. 186 LICENCES. What cove- One general rule to be deduced from that decision seems to be bind assigTis tliat the assignee of an owner of patent rights will be bound by ^ilmbk.'' f^e covenants of the latter to pay the sums reserved, where they are to form part of the fruits of the thing granted, i.e. the patent or licence, or to be virtually a charge on it (>■). According, there- fore, to the last-mentioned rule, a covenant to pay a percentage of or a part of the selling price of each patent article manufactured or sold would also bind the assigns of the licensee (s). Not so, however, scmble, would be a covenant to pay rent or a premium by instalments or royalties at a fixed sum upon the articles manu- factured or sold, unless the sums were charged on the patent rights of the licensee. Passive cove- Jt is submitted, nevertheless, that the assigns of a licensee taking Sser of inven- with uotice of the covcuauts by the latter to observe (not perform) W assijn? certain conditions in the licence, will in Equity be themselves bound to observe them, on the ground that, or so far as, such con- ditions help to define the nature or extent of user of the invention authorized by the licence. Except then as to covenants to pay royalties coming under the above rules and as to passive covenants, it seems that a licensor if he cannot obtain direct covenants from the assignee of the licensee to perform and observe the covenants in the licence, must rely on the liability of the licensee and the power of revocation (if any) contained in the licence, and also on the liability of the assignee, either under a covenant with the licensee or by construction of law (;') to perform and observe the covenants in the licence and indemnify the licensee against them. An implied contract between the licensor and the assignee can hardly arise by reason of the acts of the latter in using the invention, as such acts would be clearly referable to the original (r) In his judgment, Jessel, M.E., saj's that " it is tolerably plain that the parties intended certain liabilities to attach to the patent itself " (p. 251), and comes to his decision, -whether the question was as to a partnership or a charge on the patent, or the payment of a royalty (p. 252). Lindley, L. J., puts the case as almost the same as that of partners on a dissolution assigning the assets charged with an annuity to the outgoing partner, where the purchaser of such assets taking with notice would be bound (p. 257). (s) This would be a payment in specie, so to speak. The purchaser of an equity of redemption (even of land) is not, as such, personally bound to the morto-agee to pay the debt, but he holds the property subject to the debt, and to the liability of sale or foreclosure, if he omits to pay it. {t) See p. 121, ante (Chapter on " Assignments"). LICENCES. 187 contract under the licence which would still be subsisting. It is, therefore, generally necessary in the interests of a licensor for the licensee to covenant not to assign the licence without his con- sent (u). A power to grant sub-licences being in the nature of a power to Sub-Hccnces. assign must also bo expressly (if at all) conferred by the licensor (r). The power may, therefore, it is presumed, be confcn-ed by the use of the word " assigns " in the operative part of the grant {ic), or it may bo separately conferred, or be necessarily implied on the con- struction of the terms of the licence generally (.r) . In general, in the absence of fraud or an agreement to the con- Estoppel of trary, the mere relationship of licensor and licensee, while subsist- inf licence^' ing, whether originally constituted by licence under seal or a mere f*"""^ ^'fP"'" " _ o ./ J ^ iiig validity writing, or even verbally, estops the latter from disputing the of patent; novelty or utility of the invention or, in any other particular, the validity of the patent (y) . Until the patent has been declared void in legal proceedings between the licensor and third parties, the licensee cannot successfully resist the performance of any of his obligations if entered into by deed {z) , or, if not so, then unless he can show either the total failure of the consideration for such obligations (a), or, where such consideration is apportionable, a partial failure thereof (a) . (u) See post, pp. 213, 214, as to this covenant. The licensor should join in the assignment, in order to obtain direct covenants from the assignee. See Assi(jnment X., ante, p. 163, which is a jirecedent of an assignment of a licence to which the licensor is a party. (i>) See ante, p. 184, as to a licence being assignable. {w) See observations of Jervis, C.J., and Maule, J., in Boiccr v. Hodges, ante, p. 185, note. {x) Such an implication would, it is submitted, arise if the licence or counterpart thereof contained a covenant by the licensee to send particulars to the licensor of sub-licences when granted, or if there were a proviso iu the licence that no sub-licences should bo granted at premiums, or for less royalties than those payable by the licensee. As to the contents of sub-licences, sgo post, p. 215 (Express power to grant sub-licences). {y) See the cases of Smilh v. Scott, Lawes v. rurstr, Crosslei/ v. Dixon, and others mentioned later on these points. If the licensee disputes the validity of the patent during the continuance of the licence he may bo restrained from using the invention {Grover (C- Baker Sewing Machine Co. v. Millard, S Jur.N. S. 714). (z) Smith V. Scott, G C. B. N. S. 771. (a) Chanter \. Lees, 4 Mees. &Wels. 295, affirmed on aj^peal in 5 ibid. G98. In that case the licence was not under seal, and one of the six patents being 188 LICENCES. The doctrine also applies in the ease of a deed, even if the licensor covenants for quiet enjoyment or as to the validity of the patent, and whether absolutely or limited to his own acts or omissions. Thus, in SiiiifhY. Scott (h), the licensor covenanted that the licensee should be entitled to the exclusive right to the invention in manner and subject to the conditions therein mentioned, which covenant was plainly an absolute one for quiet enjoyment. The licensee was held to be estopped in an action for the payment of the royal- ties from disputing the validity of the title. Again, in Cutler v. Bower {c), a licensor had sold half the patent to the licensee, and, in consequence, had assigned the patent to a trustee for himself and the licensee. In the assignment, the licensor had given the qualified covenant as to the validity of the patent and for quiet enjoyment. It was held in the action which was brouo-ht by the licensor to obtain payment of an instalment of the purchase-money according to the covenant in this behalf, that the consideration had not wholly failed, as no eviction was alleged to have taken place, and that under the licence the licensee was bound by estoppel to pay the royalties, and that the covenant to pay the purchase-money was independent of the covenants for title, even if This rule of estoppel obtains even where the licence is expressed ScWe^; to be exclusive, whereby it might be contended that warranty of title to the invention as against all the world, including the licensor, was implied (r/). The rule also holds notwithstanding found void, it was held that the whole consideration, namely, the exclusive right to use all the patents, had imder the circumstances totally failed; especially as there was no averment that the licensee had used any of the five patents, and as neither the consideration nor the annuity agreed to be paid was apportionable. See also Knowles v. Bovill, 22 L. T. N. S. 70. As to the rescission and apportionment of contracts, see ante, pp. 44—46. {h) 6 C. B. 771. (c) 11 Q. B. 973. {d) See Noton v. BrooJces, 7 Huid. & Norm. 499, in which that argument was used to no eifect although the licence was not under seal. In the previous case of Btsseman v. WrigJit, 6 W. E. 719, the licence, which was apparently not under seal, was a non-exclusive one and was granted in con- sideration only of the payment of a sum of money. In an action for pay- ment of the sum the plea that the patent was void from want of utiHty and novelty was disallowed. Erie, J., treated the licence as amounting to a contract by the licensor not to bring an action against the Hcensee for infringement. Crompton, J., said that " in Chanter v. Lees (4 Mees. & Wels. 295, affirmed 5 ibid. G98) the bargain was for an exclusive right which could not be given, but here the plaintiff says, as against me you may use this LICENCES. 189 that the patent has been declared void in proceedings "between the licensor and third parties (r). The case of SinitJt v. Scott (/) is an illustration of the rule when and whether the licence is by deed. It was there held also that a plea in an action jeed or not.^ for royalties that the licensor knew at the date of the licence that patent was invalid was not sufficient as a plea of fraud. In Latces V. Purticr {(j) the licence was not under seal, and it was held that notwithstanding the plea of invalidity of the patent at the date of the licence and the then consequent absence of consideration, a consideration became executed by the use of the invention by the licensee and that the plea was bad {It). In Crossky v. Dixon (/}, the licence was by parol and had been acted upon by the parties for some time, and it was held in an action for royalties that the licensee was estopped from denying the validity of the patent. AVhere, however, the patent is set aside in an action between But not so tlie licensor or persons claiming under him and third parties, and scrasFde and the licensee discontinues the use of the invention, he is released use of inven- tion discon- from his future obligations under the licence (./), unless, on the tinned or construction of the terms, it can be lield that the obligations were mined. intended to be binding without reference to the validity or duration of tlie patent or the use by the licensee of the invention (/«•) ; as patent, but he .says nothing as against the rest of the world." In Chanter v. Lees, however, the decision was based on the total failure of the consideration, which the licensee was not estopped from showing, as the licence was not under seal. See this case as stated at pp. 44, 187, ante. This remark of Crompton, J., if it can be reconciled with the decision in Noton v. Brookes, must then be treated only as a statement that the decision in Chanter v. Lees was inapplicable to the point in Besseman v. IVriyht. The cases of Xofon v. Brookes, and later cases cited above on the rule laid down in the text, make no distinction between exclusive and non-exclusive licences. (e) The Or over & Baker Sewing Machine Co. v. Millard, 8 Jui\ X. S. 713, where it was held that the licensee must continue to pay the royalties so long as he used the invention during the prescribed term. (/) Supra. (g) 6 Ell. & B. 930. (/<) See also Chanter v. Deichurst, 12 M. & W. 823; Troiman v. Wood, lU C. B. N. S. 479; Noton v. Brookes, 7 Hurl. & Norm. 499; Clark v. Adie (2nd Ai>peal), L. E. 2 App. Cas. 423 ; but the reports of these cases do not disclose the nature of the respective instruments, although the terms of the judgments seem sufficient to include licences whether under seal or not. (i) 10 H. L. Cas. 293. [J) See Neilson v. Fothergill, 1 Webs. 290, which is stated in the text above in the next page. {k) See Cutler v. Bower and Smith v. Scott (both supra). 190 LICENCES. How licensee should relieve himself from obligations if patent void. Money paid not return- able, unless such a construction would show that the revocation of the patent did not amount to an entire failure of the consideration (/). The failure of consideration, however, will, in default of such a con- struction, be considered immaterial if the. licence or counterpart is by deed executed by the licensee (;«). A licensee, therefore, who wishes to be relieved from his obliga- tions under a licence and is not prevented from so doing by its terms, should cease to use the invention and give immediate notice in writing to the licensor of his intention so to do (n). In JSfeilson V. Father gill [p) , Lord Cottenham held to the effect that, notwith- standing the relationship of licensor and licensee had once been established, a licensee, after the patent had been declared void between the licensor and third parties and he had ceased to use the invention, could successfully resist an action for rent i. e. a fixed minimum sum payable for royalties claimed for the period after such cesser ( ;j) . When the relationship of licensor and licensee has been dissolved by notice as provided by the licence or the latter has otherwise become properly determined, the licensee, in the absence of any covenant to the contrary, is not estopj)ed from disputing the validity of the patent {q). Where there has been a total failure of the consideration to the licensee any money paid by him may be recovered (r). This rule {1) Smith V. Scott, ubi supra, in wHch is recited Hall v. Conder, 2 C. B. N. S. 22. (m) Ihid. (?i) If the obligations are to be more than as to the payment of mere royalties, or doing other acts proportionate to or during his use of the inven- tion, an intending licensee should see that the licence provides for his being at liberty to determine the licence, or his obligations thereunder, in the event of the patent becoming void. As to such a provision, soepos^, pp. 219, 220. (o) 1 Webs. 290. There the decision in Hayne v. MaJthj (cited in 3 T. E. 438) was explained, which was ajjparently a case of fraud by the licensor, although not noticed as such by Lord Cottenham, who held that a licensee, notwithstanding his covenants under seal not to use other than the patent machines, was not estoppel, in an action for breach, from pleading the invalidity of the patent. {p) As to such a rent, seo post, j). 193. {q) BancjerfieJd v. Jones, 13 L. T. N. S. 142; Axmann v. Lund, L. E. 18 Eq. 330, and Neilson v. Fothergill, supra. In Pidding v. Franks (1 Mac. & G. 56), the equitable assignees of an exclusive licence, who had used and afterwards disclaimed the use of the invention, were held not estopped in an action to restrain their selling the articles from disputing the validity of the patent. (r) Knowlea v. Bovill, 22 L. T. N. S. 70 (cited ante, pp. 44, 188), where the LICENCES. 191 equally applies where the consideration is apportionable, so that on total failure of the total failure of any apioortioned part of the consideration the or apportioned moneys paid for such part will be returnable (.s). Where the J^ whero"^^' failure is only partial and the consideration cannot be appor- fraud. tioned — c. ). In the case of an open contract, such a covenant (or consequently a recital having the same effect) cannot apparently be insisted on (c) . It seems, therefore, advisable not to insert any recital stating who was the inventor, but to rely on the covenant (if any) by the licensee that he will not dispute the validity of the patent at any time whatever. In the absence of or subject to such a covenant or recital, the licensee will be estopped only during the subsistence of the licence from disputing the validity of the patent (c*'). Other recitals where necessary according to the peculiar circumstances of the case, including the agreement to grant the licence, should follow the recitals of the grant and devolution (if any) of the title. The word " grant " is the usual expression for conferring a licence, but neither this word nor the word " give " will import any covenant that the licensor had good right to make the grant, for the law will not create a covenant respecting a personal thing (^0- The expressions " as beneficial owner " or " as trustee," which by the Conveyancing and Law of Property Act, 1S81 (/), would imply certain covenants, should, from what is said later on as to covenants, be in general omitted from licences {g). The consideration for a licence is expressed to be the sum of money (if any) paid, and the rent or royalties or other sums (if any) thereinafter reserved, and the obligations of the licensee (z) Post, p. 196. (a) See ante, p. 112 (Chapter on "Assignments"). (6) Post, p. 216. (c) Post, p. 195. \d) Ante, pp. 187—189. (e) Hindmarch, 243, citing Com. Dig. tit. " Covenant " (A. 4), as to such, non-creation of a covenant. See ante (Chapter on "Assignments"), pp. 116, 122. (/) Sect. 7 (1), A. and F. (Appendix, post, pp. 370, 372). \g) Post, pp. 195—197. LICENCES. 193 thereinafter contained. A fine or premium is a capital sum payable by the licensee at the date of the licence or at any time or times afterwards, either in one sum or by instalments. Where, however, the instalments are annual ones tlirough the whole term, they may be said to constitute an annuity or rent (//). Royalties are sums of money payable by the licensee according to the extent of the use by him of the invention, and tlie amount of them is regulated by the number size or weight of the articles or material manufactured according to, or to which (not being the subject of the patent) ho may apply, the invention, and (or in the alternative) sold by him, or they might be some share of the net profits or selling prices or other returns. A minimum amount of royalties payable periodically is often fixed. This is also called a rent and is the only kind of rent under such name mentioned later. A rent, then, is intended to represent royalties to the same amount, whether the licensee, for the period for which it is payable, shall have used the invention to an extent sufficient to render actual royalties to the same amount payable or not (/) . It is usual however to provide that the licensee may in any Average cllLUS6 subsequent half-year or half-years (or other prescribed period or periods), subject to his payment of the full rent therefor re- spectively, make up to himself for any excess of payment made by him in any previous half-year, by reason of his not having manufactured, &c. to the full amount of the rent. Such a proviso is called an average clause (/). From what has been said above as to the power of a licensee to Use "as- assign the licence, the word " assigns " should be inserted in the licence assign- operative part of the grant, if the licence is intended to be assign- couseuVor able {J) whether with or without the consent of the licensor {Ic). ^o*)- (/i) Premiums are not generally made payable in non-exclusive licences, unless the licensors are to covenant not to grant more than a limited number of other licences within the districts. The term " rent " is used in this work, in the other sense next stated in the text above. (i) Mining leases usually contain such a provision. (y) Ante, pp. 184, ISo. (/i-) Where consent is to be given in the case of a lease or licence, the expression "permitted assigns" is occasionally used by conveyancers, and is a convenient term, although apparently of modern origiu. If the word " assigns " only is used, and there is a covenant not to assign without con- sent, the breach of the covenant will not, of itself, make the assignment void, and, therefore, there should also be a proviso making the licence void M. O 194 LICENCES. To sell or A licence may bo either to manufacture the patent articles or TnT seiilhr commodities, or to sell such as are to be supplied by the licensor patent qj. ]^^g nominees, or to manufacture and also sell the same ; or, as the case may require, to apply the invention in the manufacture of certain articles or commodities which are not themselves the But right to subject of the patent. The right to manufacture, however, in- S£ right eludes the right to sell the patent articles or commodities unless *° ^^^^- the licence otherwise provides (/) ; but it is usual expressly to give the right to sell as well as to manufacture the patent articles or commodities (?;/). Eeddcndiun. The reddendum or " yielding and paying" clause, which may be inserted in a licence directly after the statement of the term for which the licence is granted, is not essential provided there is an express covenant to pay the royalties or other sums reserved. Where there is no such covenant the reddendum may probably be construed as a covenant to pay the royalties or sums (;?). Preliminary In the absence of a contract explicitly stating the terms of an cOTenantrand intended licence, the solution of the question as to what covenants provisoes in clauses or provisions shall be inserted in the licence is almost llCGUCGS entirely a matter of bargain. This results from the non-implica- tion at law of covenants respecting things merely personal (o) and the difference in many particulars in the practice of convey- in the event of the breacli of tliis covenant, or of breaches of covenants generally. See pp. 213, 214, iwst, as to covenants not to assign, &c., -without consent. [l) See Thomas v. Hunt (lSr34), 17 C. B. N. S. 183, where it was held that a licence to A to manufacture a patent article is an authority to his vendees to vend it without the consent of the patentee (licensor). {m) In connection with the above, it may be noticed that the sale of a patent article by a licensee within the district covered by his licence carries with it the right to use the article in any part of the whole area covered by the patent, unless the Kcence provide otherwise, but subject to the rights of third parties. See ante, p. 117, note (Chapter on " Assignments "). {n) Otherwise the reddendum would have no meaning. As the law will not create a covenant respecting anything personal {ante, p. 192), such a covenant does not arise from mere implication, but by construction of the clause. In a lease no formal reservation of rent is necessary, as any words indicating the intention in this respect will do {Drahe v. Mundaij, Cro. Car. 207, cited in Davidson, Vol. V. Part I. "Leases"); and the reddendum creates an implied covenant {Giles v. Hooper, Carth. 135; Iggulden v. May, 9 Ves. 330, cited in ihid.). (o) Ante, p. 192. LICENCES. 195 ancers In this respect {j)). The question, however, on the point of fairness, may to some extent be met by considering the respective advantages agreed to be conferred by cither party on the other, and tlien to determine what shoiJd be reasonable concessions in each case to be made by the intended recipient of such advantages. Thus some general rules (at least) for guidance in practice might be arrived at. It may be admitted, for instance, that if the licence is to be exclusive, and no rent or premium is to be reserved but merely royalties, the licensor ought not to be bound down to strict (if any) covenants for title or relating to tlie validity of the patent, as his only profit from the invention in the district would be dependent on the inclination or enterprise of the licensee. For the same reason, he should in such case be entitled to a power of revocation not only for breaches of covenants, but also for failui-e or delay by the licensee in using the invention up to a certain minimum average extent. Where a premium or rent is to be paid or reserved, or the licensee is to be under other onerous liabilities, it seems reasonable that he should have full facilities in relieving himself of futui-e obligations in the event of the patent becoming void, or the breach by the licensor of any important obligations on his part. The principle thus stated is further exemplified in the following observations on covenants and provisoes in licences. The following remarks, except where specially indicated (q) are J^^^^^^^^^j"^ intended to apply only to licences to manufacture and sell patent subject to ^ modifications articles and not merely to sell them. -where licences In the case of a contract to grant a licence in which the barest ^^^"^^ **" provision is made as to its contents, that is (say) merely as to the -^iiat cove- payment of royalties or other sums and the dm\ation of the licence, liJeuccTvlicn it is presumed that no other covenants by the licensee than those ^^^^^.^P^fo for payment of the sums at the appointed times, and furnishing grant one. of accounts as to the royalties (if any reserved), can be insisted on by the licensor. This presumption, it is submitted, results from the rule of law as to the non-implication of covenants in matters (/)) As to tho practice of couveyauccrs amounting to a law, see next page. There is not sufficient analogy between a licence and any assurance of any other kind of property to throw light on the question. ((/) See, in particular, jx 221, post. o2 196 LICENCES. Practice of personal (;'). It is true that the practice of conveyancers is judi- conveyancers. ^^^-^ly noticed (s), but the almost total absence of text-books dis- closing the recognized practice (where any) of conveyancers in many particulars relating to licences, makes it difficult to ascertain such practice with any degree of certainty. A licensor on such a contract would probably not be bound to give any covenant at all. It does not seem likely, however, that such a contract would be entered into except in respect of a non-exclusive licence at mere royalties only, without any premium or fixed rent. Covenants for Where a licence, whether exclusive or non-exclusive, is to be Talidity of granted for valuable consideration other than mere royalties— tf. ff., patent. £^^ ^ premium with or without royalties, or at a fixed rent covering mium or rent, royalties to the like amount, it seems usual to insert, at least, a qualified covenant as to the validity of the patent (/), and a covenant as to the right to grant. The other covenants for title can as a matter of bargain be inserted, or (together with the covenant as to the right to grant) be implied under the Convey- ancing, &c. Act, 1881, sect. 7 (ii), especially in the case of a valuable exclusive licence. Where, however, an exclusive licence is to be granted in consideration merely of a premium payable by instalments, there is virtually an agreement to assign the patent rights for the district, and consequently the covenants for title should be as full as in an assignment {v). (r) Ante, p. 192. (s) Lord St. Leonards (3 V. & P. 28) observes that "it matters very little what is the opinion of any individual conveyancer, but the opinion of con- veyancers as a class is of the deepest importance to every individual owner of property in the state. Their settled rule of practice has accordingly in several instances been adopted as the law of the land, not out of respect for them, but out of tenderness to the numerous purchasers who have bought estates under their advice." See also WiUoughhy v. Willoughhj, 1 T. E. 772 (per Lord Ilardwicke), and other cases cited in Taylor on Evidence, 6th edition, p. 5. {t) As to the nature and extent of this covenant, see Chapter on "Assign- ments," ante, p. 114. See also same page, as to the extension of the quali- fied covenants as to acts or omissions to a testator intestate or donor. The same observations will apply in the case of licences. (m) Appendix, post, p. 370. [v) By sect. 36 of the new act, the patent — i.e., the patent rights — can be assigned for a district. Where the premium is to be payable at once, an assio-nment is, no doubt, the proper assurance, unless the term is to be less than that granted by the patent, for an assignment (so called) of a sub-term would be a licence only. Where the premium is payable by instalments, LICENCES. 197 As a fixed rent (where no premium) should always be reserved "Wliore no in an exclnsivo licence, because otherwise the licensor's profit in rent, the district Avill depend only on the exertions of the licensee, there is less reason in an exclusive licence at royalties merely, without any fixed rent or premium, to insert any covenants for title or as to the validity of the patent. In the case of a non-exclusive licence at royalties only, these covenants are often omitted («•). It has been thought fit, however, to insert in every precedent of In licences a licence given herein, without reference to the nature of the licence, ^^^^^" ^' except in the case of a simple open contract for a non-exclusive licence at royalties only (.r), the C[ualified covenants as to the validity of the patent and the right to grant. This course is recommended, as the willingness of the licensor to enter into such covenants will help to establish little, if anything, more than his bo )i a Jules {//). The cj^uestion of covenants for title is probably not of much Usually un- practical importance, inasmuch as they relate to the ownership or prior searches devolution of the patent, and not to its validity; and, moreover, t^Du^of tTtlf^" the title is usually short and simple, and reliance is placed on the '^^^ relied on. investigation of it before completion, which will of course include searches at the office. The register should no doubt be finally inspected by the licensee immediately before the execution by him of the counterpart of the licence (s). and the term is to be tlio full one, it is not to the interest of the licensor to assign subject to the payment of the instalments, but to grant an exclusive licence, ■svhich, on the satisfaction of the ■whole purchase-money, will expand into an assignment. See Chapter on " Assignments," ante, p. 110, as to mode of assignment, andjip. 117, 118, as to advantagesof assignments over licences; and this Chapter, p. 183, as to licences amounting to assignments. (w) See precedents in Coryton, 528, 534 ; 4 Chitty, 217, 219; and 2 Wilde (Wilde's Sup2)lement to Barton), G07, 608. In 7 Byth. & Jarm. 595, how- ever, in the form of a non-exclusive licence at royalties only, the licensor gives a general warranty. In Johnson, P. M. 229, the qualified covenant as to the validity, and the right to grant, are recommended for licences generally. (.c) See Licence I., post, p. 245, as to the form of such a licence. (y) Where no premium or fixed rent is reserved, the reference to the acts or omissions of the donor, testator, or intestate, should, perhaps, be omitted. See note (<), siqjra. (z) No text-book writers appear to have discussed the question of cove- nants for title in respect of licences, but merely, either exjircssly or im- pliedly, advise the insertion of a covenant as to the right to grant and (occasionally) one or more of the other covenants of title, especially in an 198 LICENCES. Otlier ordi- nary cove- nants by a licensor. In licences at royalties only. In addition to covenants (if any) for title and as to tlie validity of the patent, the other ordinary covenants by a licensor may be taken to be those which relate to the maintenance and protection of the patent (including legal proceedings and the amendment of the specification), and to improvements to the invention, the deter- mination of the licence by the licensee, and the production of the letters patent. In an exclusive licence, however, the licensor will probably be recj[uired to covenant that there are no other subsisting licences within the district, and that he will not use the invention in or grant other licences for the district during the subsistence of the licence {«) . It is conceived, however, that in a licence at royalties only, and not at a rent or premium, the covenants by the licensor should, exclusive licence or in any licence in -wHcli a premium or rent is paid or covenanted to be paid. Hindmarch, 243, states that vt^liere a consideration is paid the patentee [licensor] usually covenants as to the right to grant and occasionally as to the validity of the patent ; especially where the licensee is unable to ascer- tain its validity and is embarking considerable capital in the business. At p. 757 {Hid.), however, is given a form of a non-exclusive licence at a premium and royalties, and covenants as to the right to grant, for quiet enjoyment, and for further assurance. At p. 767 {ibid.), is given the form of an exclusive and irrevocable licence for a sum of money only, in which is inserted the qualified covenant as to the right to grant and also for quiet enjoyment. At p. 76-i of the same book, the only covenant for title in an exclusive licence at mere royalties is one for quiet enjoyment, but there is no covenant as to the validity of this patent. In Coryton, 542, the covenants in an exclusive licence, at a premium pay- able by instalments but no royalties, are the qualified covenant as to validity and a covenant for further assurance. In 7 Jarm. 790, the covenants in an exclusive licence at royalties with a fixed rent only are as to the validity of the patent (unqualified), for quiet enjoyment (unqualified) and for further assurance. In Johnson, P. M. 229, it is recommended that all licences should contain a covenant for the right to grant l(•). Certain special covenants provisoes or clauses in licences -snll Special cove- • 1 1 T i 1 nant« in now be noticed in connection with the ordinary covenants above counwtion . . , with ordinary mentioned. covenants Where the licence is to manufacture and sell or only to manu- Jj^J'^*J^ facture (which includes the right to sell (x) ) the patent articles. Covenant to the licensor will probably prefer to receive royalties on the manu- S^S^*^^^' faetures rather than higher royalties on the sales, not only on Royalties on account of the acceleration of the payments but also in view of the g^^ qj. ^oth,' possible bankruptcy of the licensee. The choice, however, will of course depend partly on what difference in the respective amounts of the two sets of royalties is proposed by either party. "Where the royalties are to be paid on sales only, it will bo well to avoid the question that might arise as to whether the royalties are to be paid on sales effected after the determination of the licence or the reverse. Therefore either the covenant should be made to E«duced extend to such sales, or, in order to ensure on the determination a articles in final settlement of all accounts between the parties, it should be J^^^^^^ '''"^ °* provided that on the determination of the licence from whatever cause the licensee should pay to the licensor reduced royalties on all the articles in hand then remaining unsold {>/). It should, of course, be taken into consideration that where a licence provides that the royalties are to be paid only on articles sold dui-ing the licence, the licensee is encouraged to manufacture largely near the end or contemplated end of the licence, and postpone the sale until to keep a sufFicicnt supply for tlio public, aud to keep a depot for inspec- tion of the articles; Loth parties to' submit difl'erences to arbitration. Many special clauses both in the recitals and the other parts of the deed may bo advisable, e.g. accounts to bo verified by statutory declaration; licensee not to work under any other patent ; and the licence to bo revoked and payments discontinued if licensor fail in any action for infringement. See also Coryton, and the precedents of licences mentioned in Copingcr's Index. {w) The present Bills of Sale Acts are the Acts of 1S7S and 1SS2 (41 & 42 Vict. c. 31, and 45 & 4G Vict. c. 43). Consider sects. 4 and (i of the former act, and sects. 3 and 9 of tho latter act, in respect of such a clause of distress. (x) Ante, p. 194. ly) See Sj>. CI. 5, post, p. 229. 204 LICENCES. Option of licensee to pay royalties on sale instead of manufacture, and vice vcrsd, or on both. Remission of royalties in the case of bad debts. after the end or sooner determination of the licence. It is sub- mitted, however, that the terms of the covenant must be very clear in order to relieve the licensee from the payment of royalties on sales effected after the determination of the licence. In some cases, a licensee, having to pay royalties on manufacture only, might wish to keep money in hand, and consequently prefer to pay higher royalties on sales only, or, alternatively, reduced royalties on manufacture, and further royalties on sale ; or again, having to pay royalties on sales only, might obtain a large order for articles which he had not yet manufactured, and consequently find it suitable to pay reduced royalties on the manufacture only, or, for any other reason withoiit reference to any orders, might wish to pay royalties both on manufacture and sale in lieu of the original fixed royalties. In anticipation of such cases, a special proviso is sometimes added, in a licence, to the covenant to pay royalties, giving the licensee the option to vary the payment of the royalties in the desired manner in respect of any articles he should manufacture ; but in the interest of the licensor it would seem advisable to make the proviso apply only to some fixed minimum quantity of articles at a time (s) . As a sale is effected as soon as the property in the goods is in the purchaser, notwithstanding they may remain in the possession of the vendor, royalties made payable " on articles sold " by the licensee may become payable without reference to the payment of the price to the vendor [a). It may, therefore, be thought fit, although it is probably not very usual, to provide in a licence reserving this kind of royalties, for remission of these to some extent in the case of bad debts. In order to discourage long credit being given, some limit should be placed to the amount of credit to be given to each person, and also to the length of time at which credit may run without x^roceedings being taken to recover the debt. Thus provision may be made to the effect that every sum equal to or exceeding a fixed sum, owing from any one debtor, shall be (2) See Sp. CI. 4, po&t, p. 228, as to the variation from royalties on sales to royalties botli on manufactures and sales. (a) There must be a concluded contract, and not an executory one, so that nothing remains to be done to pass the property. See Benjamin on Sales, pp. i_3^ and Book II., as to the effect of the contract in passing the property, and the distinction between executory and concluded contracts. LICENCES. 205 treated as having been actually paid at the time of sale [or delivery] of the articles, and that every sum of whatever amount, which at the end of some [say] half-year shall have been owing more than a certain period, shall be treated as having been paid in that half-year, unless the licensee can show that he had taken all reasonable means to recover the money, and, that, with the above exceptions, but subject to the licensee paying the royalty or royalties, or proportionate part or parts of them, in respect of any sum remitted, if and when it should (if at all) be actually paid, no sums owing at the end of every half-year shall be treated as having been actually paid {b). This provision may be modified by also providing that credit up to a certain amount and for a maximum period may be given to persons firms &c. approved of by the licensor. It is sometimes covenanted by a licensor that the payment of Suspension of rent and royalties shall be suspended if ho, after due notice in royaltLs writing being given to him by the licensee of any infringement of "^^'^"|^ licensor the patent reasonably believed by the latter to have been com- proceedings for infrin re- mitted, shall commit a breach of his covenant (if so) to take menta. proceedings legal or otherwise to prevent or restrain the further infringement by the same person or persons (e). As the time of suspension should terminate when any event renders the suspen- sion unnecessary, it should be provided that the suspended pay- ments shall revive (if at all) on the termination of any proceedings which result in favour of the licensor, or in ease it shall be ascer- tained to the satisfaction of the licensee that the alleged infringer or infringers had done nothing to justify any proceedings against him or them. The licensee should covenant to keep account of the suspended royalties {d) . Where it is provided in the licence, which of com'se would be an exclusive or partially exclusive one (r), that the proceedings shall be at the cost of the licensee, the latter has the strongest reasons for not movine: the licensor until he the licensee has made {b) See Sp. CI. 17, post, p. 232. (c) lu Henderson v. Mostijn Copper Co., L. E. 3 C. P. 202, it was held that reasonable notice that an infringement had taken place ^vas necessary, in order to enable the patentee to take proceedings, and that reasonable time was necessary for completing the proceodings. (rf) For such a covenant, see Sp. CI. 14, post, p. 231. (e) Ante, p. 200. 206 LICENCES. sure of the facts. Where the costs are to be borne by the licensor, it should be provided that reasonable pnmd facie evidence and full particulars should be afforded him in respect of any alleged infringement as to which he shall be required to take proceedings. In relation to such proceedings, it will be noticed that the licensee if not a party to them will not obtain any damages, as the licensor can only claim damages in respect of his own interest in the patent as to the locality in which the infringement shall have occurred (/). Where the infringement is only incipient, such as, for instance, the mere manufacture or exposure for sale of the patent article, the licensee will probably be content to rely on the proceedings undertaken by the licensor alone, and not himself claim damages (nominal) by the same or separate proceedings. Royalties paid In connection with the last-mentioned covenant should be men- during pro- tioned a covenant by the licensor that, during the proceedings (if ceedmgs for ^^ \ undertaken by third parties for the revocation of the patent, revocation oi -^ ' ./ i a. ' patent. the royalties, which would otherwise then become payable to the licensor, should be paid to trustees upon trust to retain the same until the end of the proceedings, and in case these (including an appeal) should result in favour of the licensor, to pay the moneys to him, but in the opposite event to pay them to the licensee, subject in either case to the expenses of the trusts (g). Such a covenant, however, seems only requisite where some premium is to be paid, or a fixed rent supplemented by an average clause {(j) is reserved, inasmuch as, by reference to the provisions as to registration under the late and present practices respectively, a patent and the licences under it, are, as to the revocation of the patent, seen to be good as against the plaintiff in the action, until judgment for revocation is obtained {h). The covenant therefore may, in the event of the patent being revoked, operate so as to return to the licensee some portion of his premium, or make up to him some sum which he claims, but is unable to obtain under the (/) Ante, p. 201, and note thereto. [g] See Sj). CI. 19, j'osf, p. 233; and also the note thereto as to provitling, in case of revocation, that the licensee shall only receive part of his premium (if any paid), or any sum which ho was unable to make ujd under the average clause. (/i) See sect. 35 of the Act of 1852 (15 & 16 Vict. ,c. 83), and pp. 9, 23, ante (Introductory Chapter) ; and sect. 87 of the Act of 1883 {Ap-pendis., post, p. 322), and post, pp. 23—25. LICENCES. 207 average clause. Where royalties only, without rent, are reserved, the covenant seems of less urgency, as the payments of them run with the extent of user of the invention ; although, even then, some compensation might be thought due in respect of any outlay of capital which the licensee might have made on the strength of his licence. Where a fixed rent to cover royalties to the same amount is ^^J^^J^^ reserved, and the licensee is dependent for the working of the fails to supply invention on some act of the licensor — c. g. where the latter has according to from time to time to supply the licensee with and the licensee has tis covenant, covenanted to purchase from him the raw material to which the invention is to be applied— it seems wholly reasonable that pro- vision should be made for the cesser of payment of the rent during any period of some minimum length, for which the licensor shall fail to supply the material. The cesser, however, should be expressed to be without prejudice to the payment of the royalties in respect of the application of the invention to raw material obtained by the licensee elsewhere, and which, as the licence should provide, he should, on such failure, be at liberty to obtain (/). Provision is also sometimes made for the commutation of royal- Co^^^f^*^"^ ties for a lump sum. The simplest method is to make the option by the licensee exercisable within or after a certain period, or at any time while not in default in any of his obligations, on his giving notice of his intention and paying the commutation money, whereupon the licensee would become entitled to a release of the covenants to pay the royalties (./). The usual method, however, is to make the option exercisable only after a certain period, when the commercial value of the invention, as shown by the receipt of royalties, would be likely to appear, and to fix the commutation money according to the number of years for which the licence has to run, taking a yearly average based on the receipts of royalties for the past years (/c). Where the licensor is at liberty to grant other licences for the Covenant not same district (/), or even elsewhere, the licensee might require a licc'ncesat (0 For the abo\c provisions, soo Sp. CI. 20, iwst, p. 233, and Licence IV post, p. 254 (Clause 3). (j) Sec Sp. CI. 22, post, p. 234. (A-) Ibid. (l) See Licence VI., post, p. 2G3. 208 LICENCES. lower royal- ties or for recluction to same amount as in other licences. Royalties in ascending or descending scale. Exclusive licence for district on a sale on tlie hire system. Covenants in such a licence. covenant by tlie licensor not to grant any other licence at royalties lower than those to be reserved in the intended licence, or that the amount of the royalties in the latter shall be reduced to that of the lowest royalties for the time being payable under any other licence. Such a covenant, however, by itself will not have a clear operation, unless the licensor is also bound only to grant the other licences at royalties of a nature similar to those reserved in the particular licence. For example, difficulties would arise as to the equalisation of two kinds of royalties at the respective rates of five shillings per article manufactured and four per cent, on the (variable) selling price per article sold (/;?). Eoyalties are sometimes made to vary in amount from year to year in an ascending or descending scale, either immediately or to commence after a certain date. Such an arrangement is probably not of frequent occurrence. In the former case, especially where the patent or the industry is new, and sales are likely to be slow at first, the object is to enable the licensee to nurse his expenditure at first. In the latter case, a high premium probably has to be paid {»). Where an exclusive licence is to be granted for the whole term of a patent, in consideration of the payment of a premium by instalments, the last of which is to be payable before the end of the term, but no royalties are to be reserved, the contract may be taken to be one for the sale of the patent for the district to which the licence is to apply, on what has been termed in the C/iajyfer on Agreements {ante), " the hire system" (o). As the interest of the licensor in the patent for the district will virtually cease after payment of all the moneys reserved, the licence will in that event become expanded into an assignment {])). To enable the licensee to obtain covenants for title and otherwise as on an assignment, the licensor should covenant that on payment of all the moneys due, and the satisfaction of other specified obligations (if any) he will execute to the licensee an assignment of the patent for the district containing the requisite covenants. The other covenants in such a licence, except in respect of the payment of the instalments, will be such as have been previously (m) See Sp. CI. 13 & 34, pp. 231, 238, post. In) See Sp. CI. 16, post, p. 232. (o) Ante, pp. 37—39. Ip) Cartwright v. Amatf, 2 Bos. & Pul. 43, and aide, pp. 91, 111. LICENCES. 209 mentioned in the case of an exclusive licence at a rent or premium with or without royalties (q). The usual covenant by the licensee that the default in payment of any instalment shall render the whole balance immediately payable, may be modified by limiting the extra demand to some fixed sum, or providing that any extra amount once demanded shall not be increased by any fui'ther demand in respect of the same default, and that the demand of an extra sum shall operate so as to accelerate the payments by the like instalments of the final balance. The licensee should, of course, covenant to pay interest on every sum in arrear. A covenant as to the suspension or cesser of payments pending proceedings on appeal against a judgment in revocation of the patent, or on its becoming void, and as to the final cesser of payments being treated as satisfaction in damages, should be inserted. The efi^ect of such a covenant has been before noticed (/■). The most ordinary kind of royalties is fixed sums payable Different according to the weight size or number of the material articles or royalties. commodities manufactured by means of the invention, or to which the invention shall be applied. Of other kinds of royalties, there may be mentioned sums payable as shares of or by reference to the amount of net profits obtainable by the licensee, or shares of the selling prices of articles. If the royalties reserved in a licence are to be a share of the net profits in specie obtainable by the licensee, and he is under an obligation to work the invention to a certain extent, the question of the liability of the licensor as a partner may arise, for it may be contended that the licensee becomes an agent for the licensor in the business of working the invention («). The whole tenor of the licence shoidd of course be considered before the question is decided. Where the payments are not to be of a share of the net profits in specie but of amounts equal to a (;). In order, however, to ensure against the improvident granting of sub-licences wliereby the ability of the licensee to perform his obligations may bo considerably reduced, it will be found advisable in some exclusive licences for the licensor to give express power to the licensee to grant sub-licences contain- ing prescribed terms (o). The adoption of this plan will enable a licensee to proceed to grant a sub-licence without first obtaining the consent of the licensor or his approbation of the terms of it. The prescribed terms are, to their fullest extent, usually that each Terms of sub-licence sliall be expressed to take effect at once in possession ^^^ "" l'*^^^''* and be granted to the sub-licensee personally but not his as- signs (jj), and be at royalties only which shall be the highest that can reasonably be gotten, and shall contain covenants by the sub- licensee to perform and observe certain of the covenants and con- ditions in the licence (q), and not to assign or encumber the sub- licence or attempt so to do without the written consent of the sub- licensor (r), and for revocation of the sub-licence on default being made for (say) twenty-one days in the payment of royalties due thereunder, or on the breach of other covenants or conditions in the sub-licence, or on bankruptcy or committal of any act of bank- ruptcy whether available for adjudication or not, and that the sub- licensee shall execute a counterpart of the sub-licence. As, however, the licensee might be induced to waive any breaches by his sub-licensee or even release him from some or all of his obligations, it seems well to provide also in the licence that the licensee shall not release any of the covenants or conditions to be performed or observed by the sub-licensee, and shall give the licensor immediate notice in writing of any breach committed by a sub-licensee, and shall if required by him revoke the sub-licence on account of the breach, and shall not without the written con- sent of the licensor grant any further sub-licence to the same person. (ji) Aitte, p. 187. (o) It is not of course advisable to give the power of sub-licensing to a non-exclusive licensee. (p) It might bo provided that on payment of some sum the licenco may be extended to an assignee, if a responsible person. (7) E.g. as to the use of the patent mark, and the not disputing the validity of the patent, and (where the sub-licensee may manufacture) as to the manufacture only according to the specification. (r) See pp. 213, 214, ante. 216 LICENCES. Royalties to licensor from licensee in respect of sub-licences. Covenant not to dispute tlie validity of the patent. Where tlie licensor is to obtain royalties from tlie licensee in respect of the patent articles manufactured or sold by any sub- licensee, it should be also provided that the sub-licence shall con- tain covenants by the sub-licensee for keeping and furnishing accounts and verifying them. The licence should also provide that the licensee shall give immediate notice to the licensor of the grant of each sub-licence, and furnish him with a copy or short particulars of it (s). To avoid delay in the settling of accounts between licensor and licensee, it will generally be found convenient to fix in the licence the earliest periods at which royalties, in respect of the patent articles manufactured or sold by any sub-licensee, shall become payable from the licensee to the licensor. On this account, then, the royalties made payable on the manufactures or sales by the licensee for himself and his assigns of the licence, should be made payable to the licensor on the manufactures rather than on the sales of the sub-licensees; subject to a reasonable discount in every case where the licensee himself will only have to receive royalties on the sales. Thus, where the licensee is to pay royalties on sales effected by him of the patent articles, it may be suitable to provide that the delivery of articles by the licensee to a sub-licensee ac- cording to the terms of the sub-licence for the purpose of sales by the latter, shall be deemed a sale to the sub-licensee so as to make the royalties reserved by the licence at once payable on them, but subject to a fair discount (/). Again, in the like case, if the sub-licensees may also manufacture, it might be provided in the licence that the licensee shall pay royalties on all the articles manufactured by sub-licensees, A covenant by the licensee not to dispute the validity of the patent should, in order to be of value to the licensor, be made to extend beyond the continuance of the licence {it). The estoppel of (s) For the above terms, see Sp. CI. 33, 2)ost, p. 237. To shorten the body of the deed it may be convenient to refer to the terms as set out in the Schedule. See Sp. CI. 32. {t) As to such a provision, see Sp. CI. 21, post, p. 234. In the alternative, it might be provided separately that the licensee shall pay certain royalties on all articles delivered by him to his selling sub-licensees. (w) If he does not so covenant he may dispute the validity after the determination of the patent, Datvjerfield v. Jones, Axmann v. Lund, and NeiUon v. FothergiU, cited at p. 190, on this point. LICENCES. 217 the licensee from disputing the validity of the patent while he continues to use the invention has ah-cady been considered (r). If a licensee disputes the validity of the patent, he may bo restrained from using the invention contrary to his covenants, although the patent has been found invalid upon proceedings between the licensor and third parties (ir). A covenant by the licensee to take steps to discover every Covenant to suspected infringement within the district, and to give the licensor friSements immediate notice of it, and assist him if necessary in takiufj pro- f.^^^ 'assist " ^ Lcensor in ceedmgs, is of more importance in the case of a non-exclusive proceedings, licence than in tliat of au exclusive one, especially if, in the former case, the licensor does not intend himself to use the invention in the district. As a non-exclusive licensee is not able to take pro- ceedings for infringement except in respect of any special damage to himself occasioned by it (./), and is liable to the competition of an indefinite number of other licensees, he has not, perhaps, a strong inducement to assist the licensor in the detection of in- fringements. An exclusive licensee is of course on a very different footing to this, and is able himself to take proceedings in the name of the licensor, although at his own expense (x). It is not un- usual, however, to insert such a covenant in an exclusive licence, notwithstanding a covenant by the licensor to take proceedings at the request and cost of the licensee {//), as it may be of use to the licensor should he take proceedings himself, in case the licensee should on the ground of expense or otherwise be opposed to any proceedings being taken. The covenant should, also, provide that the assistance of the licensee shall be given at the cost (as to expenses out of pocket at least) of the licensor (r/). "Where the licence amounts to an assignment for the district, the licensor has apparently no locii^s sfandi at all in respect of legal proceedings for infringements committed within the district {b). (v) Ante, pp. 187—190. (?«) Orover & Baker Sewing Machine Co. v. Millard, 8 Jur. N. S. 714. (a;) Ante, p. 200. ly) Sco ante, p. 199. (a) For such a covenant, sec Sp. CI. 39, 2'>ost, p. 239. (t) Seo ante, p. 183, as to licences amounting to assignments. Bv virtue of a clause of revocation in a licence the licensor retains dominion over the patent for the district. Seo Lawson, p. 51, as to the right of a patentee to sue for infringement committed in a district for -which ho has granted an exclusive licence. It is also there submitted that a patentee who 218 LICENCES. Covenants as Where the licensor is himself to use or continue to use the to unprove- ments made, invention, each party should covenant that any improvements or party. additions to the invention or new discoveries useful for the manu- facture of the patent article made by him, shall during the con- tinuance of the licence be communicated to the other of them and be available for both parties, and if made by the licensor shall be deemed part of the original invention (e). As to the importance of including improvements &c. in contracts relating to patented inventions, reference should be made to the remarks of Jessel, M. R,, in Printing and Numeyical Registering Company v. 8am2JSon (d). Eevocation of The events on the happening of which a licence is provided to be revoked are usually — the default of the licensee in payment of the royalties or other sums reserved ; the breach by him of any covenant in other respects ; or his bankruptcy or the com- mittal by him of any act of bankruptcy {e). Where no premium or rent is to be reserved or payable, it is sometimes desirable to add the event of the licensee not commencing within a given time to use the invention, or, having once commenced, discontinuing to use the invention for any single period of a certain length, or not manufacturing or selling articles to a certain average extent, or not working the invention at a profit or certain minimum amount of profit (/). In the unusual case of an exclusive licence not being at any rent or premium the licensor would be dependent for profit within the district only on the licensee, and should therefore require that the additional events last mentioned, so far as applicable, should be has granted an exclusive licence, with power of revocation, ought and would be allowed to sue for infringement without bringing the licensee before the court. (c) See 6>. CI. 44, post, p. 240. {(1) L. E. 19 Eq. 462, An agreement to assign future patent rights of a like nature and together with an existing jmtent is not void as against public policy {Ibid.; see also Leather Cloth Co. v. Lorsont, L. E. 9 Eq. 345). The same principle applies to licences of future patent rights. As to improve- ments or additions generally, see also ante, jip. 33 — 3G. (e) As to waiver of power to revoke a licence on the rent being in arrear, see Wa7-wicJc v. Hooper, 3 Mac. & Gr. 60. There the licensor had for some years received payment on a reduced footing, and was held not entitled to revoke for the past breach. (/) See Sp. CI. 42, post, p. 239. The payment of royalties for the given period, if involving a loss to the licensee, will show that the business was unprofitable for that period. See Kernot v. Potter, 30 Beav. 313. LICENCES. 219 Btatecl in the proviso or clause of revocation. If a non-exclusive licence merely at royalties is to be granted there is less reason for the mention of these events, but it must be noticed that the mere existence of such a licence, although the licensee may only work it at intervals or at small profit, is likely to be to some extent a deterrent to the taking by third parties of other licences for the same district ; unless perhaps the latter can be granted at lower royalties than those reserved in the particular licence. Where the licence is to the licensee and his assigns, revocation is sometimes provided in the event of his death. In a simple case, it might be provided that the revocation of a licence shall be by notice in writing given by the licensor at any time, or after a certain date. As there is no statutory provision to save the forfeiture of Notice to licences similar to any of the acts relating to leases of land or of before power any kind whatever, it seems fair to provide against advantage exercised, being immediately taken of the breach of any covenant which can be repaired, by making it a condition of forfeiture in such event that, if the licensee shall for a certain time after he has received notice from the licensor to repair the breach (if repairable), omit so to do, the licensor shall then be at liberty to revoke the licence (g). In the absence of a clause for revocation, the breach Breach not cause for- of the covenants to pay royalties or rent or any other covenants of feiture, if no the licensee will not work a forfeiture of the licence {h) . revocation. AVhero the obligations of an intending licensee are to be con- Determina- fined to the payment of royalties and doing other acts proper- licence by tho tionate to the extent of and during his use (optional) of the "<^ensee. invention, there is of course no need to provide for his being at liberty to determine the licence, or his obligations thereunder, in the event of the patent becoming void or any other event, as he can at any time or times cease to use the invention. If rent or other fixed sums payable periodically is or are to be reserved, or the other obligations of the licensee are to be in gross, that is, independent of his use of tho invention, the licensee should take care to provide that he shall bo at liberty to determine the licence in the event of the patent becoming void or other important event. ((/) This additiou is not, it is believed, often inserted, but a licensee, if likely to risk much money in working the licence, should require it. (//) This seems ut least to result from tho decision in TUhns y. Ifuojicr, o Exch. 830, which related to a breach of the covenant to pay tho rent. 220 LICENCES. Xellson V. Fotheryill. Power to determine on breaches by licensor. Return of part of pre- mium on patent becom- ing void. In Ncihon v. Fothergill (?) it was held that after a patent had been declared void between the licensor and third parties, the licensee could successfully resist an action for rent claimed to have accrued due after he had ceased to use the invention. Notwith- standing this decision however, the insertion of an express pro- vision for determination in the event of the patent becoming void is advisable, in order to preclude the question as to whether the obligations of the licensee or any of them were intended to be in gross or not, as, in the absence of such a provision, it might be held that they were intended to be performed during the whole term limited by the licence, without reference to the validity or duration of the patent or the use of the invention {j). In addition to the event of the patent becoming void, it may be advisable in a particular case to mention in the proviso other events — e. g. the breach by the licensor of his covenant to supply the licensee with the patent articles (where the licence is only to sell) or material to which the invention is to be applied, the failure by the licensor to pay the licensee for articles supplied by him, and the breach by the licensor of any other of his covenants. Instead, however, of mentioning a number of events on which the licensee may determine the licence, it may be found convenient to provide that he may be at liberty at any time, either generally or after a certain date, to determine the licence by giving two or three calendar months or weeks previous notice in writing for that purpose. If a premium is to be paid on the grant of a licence, provision might be made for a return of part of it, in the event of the patent becoming void, proportionate to the remainder of the term which shall have lapsed. In the absence of such a provision the licensee cannot recover any portion of his premium on the patent becoming void(^")« (/) 1 Webs. 290, cited ante, pp. 189, 190. (/) See Smithy. Scott, 6 C. B. N. S. 771 (Licence) ; and CntJcry. Boivcr, 11 Q. B. 973 (Assignment), as to certain covenants of parties being independent of eacb other. These cases are cited at j^p. 188, 189, -s^'bere reference sboidd be made. (h) See arde, p. 191, as to money paid for a licence not being returnable unless there was a total failure of consideration &c. and the consideration could not be apportioned ; and see Taylor v. Hare, there cited as to the patent becoming void. LICENCES. 221 As the sale of a iiatent article by the licensor without conditions Licence ^ ... merely to sell comprises undoubtedly, as against him, a licence to the purchaser the patent to use or sell the article everywhere (/), it is advisable in cases where a person is to make extensive purchases of patent articles for the purpose of ro-selling them, for the licensor to grant him a special licence in order to impose the necessary conditions, and to enable the other party to got his rights registered. The previous observations as to the contents of licences apply more particularly to licences to manufacture and sell patent articles, and are subject to certain modifications in the case of licences merely to sell patent articles. Thus the licensor may not be dependent for royalties on the sale Contents of of the articles by the licensee or the state of liis business, so that the keeping furnishing and verifying of accounts would be dis- pensed with. So also as to the liberty of the licensor to inspect the place of business of the licensee. A covenant by the licensor to supply the patent articles should refer to such as may bo made with any improvements, but a covenant by the licensee to give the licensor the benefit of improvements is probably unnecessary. A covenant by the licensor to take proceedings at the request and cost of the licensee in respect of infringements alleged to have been committed within the district, or permit him in the name of the licensor so to do, should in general be confined to infringe- ments on sales, although the licensee should covenant to inform the licensor of suspected infringements of tho patent of whatever natm-e {m) . A covenant not to assign or incumber a mere selling licence, where the patent articles are in the first instance to be sold and supplied to the licensee or his nominees by the licensor or liis manufacturing licensees, would hamper the licensee and should be omitted, if the licensee is to guarantee all payments for goods not- withstanding the assignment &c. of the licence (ii). A clause or mutual covenant for referring matters in dispute to Arbitration arbitration is not uncommonly inserted in a licence, and is of the usual form (o), but a special person (generally an expert in the {I) Seo Bdts v. WillmoU, L. E. 6 Cli. 239 ; and aide, p. 194, note; and also ante, p. 117, note (Chapter on " Assignments"). {m) As to these covenants, see ante, pp. 199 — 201. (/i) See Licence V., post, p. 259, for a precedent of a mere selling licence, (o) Form 24, ante, p. 55. 222 LICENCES. Other special covenants to be found in the prece- dents. Registration of licences. Fees and stamps. kind of business) is sometimes named as sole arbitrator, or each party is to nominate one such person. For other special covenants and provisions, see Special Clauses, post, and the Precedents of Licences, post. With regard to the registration of licences, reference may be made to the subject of registration generally in the Introductory Chapter, ante, pp. 23 — 25, and also to some extent in the Chapter on Assignments, rnife, pp. 132, 133. A fee of ten shillings must be paid on a licence previous to the entry thereof on the register (p). Where a licence is not by deed though under seal, no stamp duty seems payable on it as such under any of the Stamp Acts. Where a licence is or purports to be by deed, it must, it is presumed, bear a stamp of ten shillings under the Stamp Act of 1870 {q) in addition to the fee for entry. When a premium or fixed sum is paid for a licence, an ad valorem stamp on the amount must be impressed (>•). Where a licence contains a covenant for the payment of a minimum royalty, the Stamp Office insists upon payment of an ad valorem duty upon the gross minimum royalty reserved, and this although the licence contains power for licensor or licensee to determine the licence {a) . {p) First Scliedule to Patent Eules, 1883, jw.s^ p. 329. {q) 33 & 34 Vict. c. 97, suh nom. "Deed of any kind wliatsoever not described in this Schedule." (r) Johns. P. M. 233. See Stamp Act, 1870, " Conveyance or Transfer on Sale," and sect. 70 thereof. This would be so, whether the licence bo by deed or otherwise. (s) Johns. P. M. 234. See sect. 72 (1) of the Stamp Act. LIST OF ORDINARY COVENANTS. LIST OF OHDIXARY COVENANTS IN LICENOES. 223 A. Where Open Contract. (See ante, p. 195.) ncontract. Bij the Licensee. 1. To pay royalties or other sums. 2. To furnish accounts. Bi/ the Licensor. None at all. B. Where a Full Contract. b. _^ ^ Full contract. I. Where royalties (hut no rent or premium) are reserved, i. Royaltiea [ExcUisive or non-exelusive licence, unless otherwise ""^J"- stated.] B// the Licensee. 1. To pay royalties. 2. To keep furnish and verify accounts and aUow inspection &c. of hooks— pp. 202, 210. 3. To use the patent mark on the articles — pp. 202, 210 ct seq. 4. To manufacture only according to the specification — pp. 202, 212. 5. To allow the licensor to inspect the factory — pp. 202, 212. 6. Not to assign or charge the licence or grant sub-licences without consent of licensor — pp. 202, 213, 214. [But in an exclusive licence an express power to grant sub- licences might also be given — pp. 215, 216,] 7. Not to dispute the validity of the patent at any time — pp. 202, 216. 8. To detect infringements, and give notice thereof and assist licensor in proceedings — 202, 217. 9. To give licensor the benefit of improvements &c. [or include this in a mutual covenant] — pp. 202, 218. 10. Proviso for revocation by the licensor on breach of covenants or bankruptcy [or death] or by notice at any time — pp. 202, 218, 219. [Sometimes add the event of the licensee not commencing or discontinuing to work the invention, or not manufacturing to a certain extent — p. 218.] 224 LICENCES. Bij the Licensor. 1. As to validity of patent (qualified) — pp. 114, 197. 2. As to right to grant (qualified) — pp. 19G, 197. 3. (Exclusive licence.) To take proceedings for infringement within the district at the request and cost of the licensee, or permit him to do so in the licensor's name — pp. 199 — 201. 4. As to improvements &c. made by the licensor (or, if thought fit, include this in a mutual covenant) — pp. 199, 218. 5. (Exclusive licence.) That there are no other subsisting licences within the district — pp. 1 82, 199. 6. (Exclusive licence.) Not to use the invention or grant other licences within the district — pp. 183, 199. 7. (Exclusive licence.) As to the production and safe custody &c. of the letters patent — p. 199. 8 and 9. Transmission and arbitration clauses (if thought fit). II. Premium or rent (or both) aud royalties. II. Where a premium or fixed rent (or both) and royalties are reserved. [Exclusive or non-exclusive licence unless other- wise stated.] By the Licensee. 1 . To pay royalties and other sums. [As to an average clause, where a fixed rent is reserved, see p. 193.] 2. The covenants Nos. 2 — 9 (both inclusive) by a licensee as above (bi) or such of them as may be applicable. [Insert how- ever an express power to grant sub-licences — p. 214.] 3. Proviso for revocation by the licensor on breach of covenants or bankruptcy or committal of act of bankruptcy — pp. 202, 218, 219. By the Licensor. 1. As to validity of patent (qualified) — pp. 114, 197. 2. As to right to grant (qualified) — pp. 196, 197. [Or as a matter of bargain, e. g. where a large premium and royalties or both premium and rent with royalties are re- served, let the full covenants for title be inserted by im- plication under the Conv. Act, 1^81 — p. 19G.] 3. ("Where the licence is only to sell.) To supply the licensee with the patent articles. 4. To pay the renewal fees or permit the licensee to do so and allow him to deduct amounts so paid from royalties &c. due ; and also generally to perform &c. the conditions of the patent — pp. 199, 200. 5. To defend the patent at his own cost in any proceedings for revocation — p. 199. LIST OF ORDINARY COVENANTS. 225 6. (In exclusive licence.) To take proceedings for infringements within the district at request and cost of the licensee, or permit him to do so in licensor's name — pp. 199 — 201. 7. Not to amend the specification without the written consent of the licensee — pp. 199, 202. 8. To give the licensee the benefit of improvements &c. [Or include this in a mutual covenant] — pp. 199, 218. 9. (In exclusive licence.) That there are no other subsisting licences within the district — pp. 182, 199. 10. (In exclusive licence.) Not to use the invention or grant other licences within the district — pj). 183, 199. 11. Proviso for determination of the licence by the licensee on the patent becoming void or breach in licensor's covenants. [Or on notice] — pp. 219, 220. 12. Acknowledgment and undertaking as to the letters patent (Conv. Act, 1881)— p. 199. 13 and 14. Arbitration and Transmission Clauses (if thought fit) — pp. 55, 56. M. 226 LICENCES. LIST OF SPECIAL CLAUSES FOR LICENCES. CLAUSE PAGE 1. Covenant to pay royalties (^Jixed sums) 228 2. Royalties infixed sums) both on manufactures and sales 228 3. Royalties on sale moneys after satisfaction of Cost price and Mamfacturer^ s profit [Licensee being Manufacturer and Seller) 228 4. Proviso that in lieu of royalties on sales, lower royalties may be paid both on manufactures and sales 228 5. Proviso that unsold articles at end of term shall bear reduced royalties 229 6. Covenant to pay Rent and Royalties 229 7. Another form 229 8. Average Clause 230 9. Another form 230 10. Royalties on Carloads 230 11. Royalties per Shuttle according to width of fabric and period of use , 230 12. Royalties on Railway Foot-warmers to which the Invention may be apjjlied 231 13. Royalties to be reduced to lowest for time being in other licences — Early notice to be given to Licensee of any licence involving the reduction — Reduced royalties not to be increased if other licence be determined 231 14. Suspense of rent and roycdties lohile Licensor omits to talie pro- ceedings for infringements 231 15. Royalties varied as sales of articles continue 232 16. Royalties ifi descending scale after certain date 232 17. Remissio7i of royalties in the case of bad Debts 232 18. Payments to cease or {pe7iding appeal) to be suspended if patent become void — but final cesser to be deemed satisfaction of damages 233 19. Royalties to be paid to trustees pending proceedings for revoca- tion of patent 233 20. Cesser of Rent ichile Licensor fails to supply material as covenanted 233 21. Delivery of articles by Licensee to his selling sub-Licensees to be deemed sales to them 234 22. Commutation of Royalties 234 23. Patent Mark to be used 234 SPECIAL CLAUSES. CLAUSE PAOE 24. Another form 235 25. Licensor to send person to manufacforij to affix the patent marks 235 26. Stamping patent articles ivith a die — Licensees also to stamp articles sent hj other Licensees — Charges to he debited to LJcensors — Dies to he property of Licensors 235 27. Clause to be inserted in other licetices for Licensees to bring articles to Licensees hereof to he stamped 230 28. No amendment of Specif cation by IJcensor without consent of Licensee 230 29. Covenant by Licetisor as to no prior licences and not to use Invention or grant other licences within district 230 30. Covenant by Licensee to mantfacture only according to Specif - cation [or in default to pay royalties 07i articles made other- wise, but ivithout prejudice to potver of revocation] 230 31. Licensee not to assign, mortgage ^r. without consent 237 32. Express l^oioer to grant sub-licences \_terms in Schedule'], hut notice and particulars to he given 23/ 33. Another form [ter^ns set out] 237 34. Licensor not to grant other licences on terms more favourable than hereunder 238 35. Liberty for Licensor to inspect factory 238 36. Licensee not to dispute validity of patent 238 37. Licensor to pay fees or permit Licensee so to do and deduct from royalties and to observe conditions of patent 238 38. Licensor to defend patent and at cost of Licensee to talc proceed- ings for infringements or permit him Sfc 238 39. Licensee to detect infringements and give notice thereof and assist Licensor in proceedings , 239 40. Power for either party to determine licence on notice 239 41. Power of revocation on default in payments or breach of other obligations or bankruptcy of Licensee 239 42. Another form [additional to last, referring to unprofitable working and ceasing to work] 239 43. Power for Licensee to determine licence if patent void 2 10 44. Mutual Covenant as to Lnprovements ^'c 210 45. Covenant by Licensor as to Lnprovements made by him 210 40. Option to purchase patent after three years — hut purchase to be completed within three months from exercise 241 47. Licensor not to engage in like business within district 211 48. Licensee not to manuf((cture but Licensor to do so for Licensee.. 241 49. Sale onlg through Brokers common to both parties — Meetings to regulate prices - '- 50. Exclusive licence to become non-exclusive if unprof table icorking or non-user of Invention -^'- 51. Notices how served - '- 52. Transmission Clause - *- q2 227 228 LICENCES. Covenant to pay royalties (fixed sums). Royalties (fixed svims) both on manufacture and sales. 1. The licensee shall during the continuance of this licence pay- to the licensor half-yearly on every clay of and day of for every manufactured by the licensee hereunder and in the half-years then ending respectively sold by him a royalty of £ (a) [Or sai/ " the royalty specified in the Schedule hereto," and add {if appropriate) " according to the size and description of such article "] (b). 2 (c). The licensee shall during the continuance of this licence pay to the licensor half-yearly on every day of and day of for every manufactured by the licensee hereunder in the half-years then ending respectively a royalty of £ and for every sold by him as aforesaid therein respectively a royalty of £ . Royalties on sale moneys after satisfac- tion of cost price and manufac- tirrer's profit (licensee being manufacturer and seller). Proviso that in lieii of royalties on sales, lower royalties may be paid both 3. The gross returns on the sale of each machine by the licensee shall be applied first in satisfaction to him of a sum of £ or such lesser sum as such returns will amount to which sum shall be taken to include both the cost price of the article and the profit thereon of the licensee as manufacturer thereof and as to the balance (if any) of such returns shall be divided equally between the said parties (d). 4 (e). Provided always that the licensee may at the end of each half-year without giving any previous notice to the licensor of his intention so to do [but not so as thereby to reduce the rent (/)] vary the amount of royalties in respect of any of the articles afore- said not being less than in number then in his possession Variations of the above in certain cases. (a) Or (as to manufacture only) write "manufactured by the licensee hereunder in the half-j'ears then ending respectively a royalty of £ ." Where the royalty is to be paid, not on an article but on a fixed quantity of material, write (instead of the above) " for every [say] hundred weight of manufactured, &c.," and add (if thought fit) "and so proportionately for any less quantity. Provided, however, that any quantity less than [say] 7 pounds not otherwise liable to a royalty shall be treated as weighing 7 pounds." Where the invention is such that it may only be applied to existing or unpatented articles or material, write (instead of the expression as to manu- facture) ' ' for every &c. to which the said invention may be aj^plied by the licensee &c." Where royalties are to be paid on sales (with or without previous royalties on manufactures), it Avill be found convenient to use also Clause 5, post, as to reduced royalties on articles unsold at end of licence. (i) In this clause, and other later ones, the assigns of either party or of both of them may be taken to be implied by means of a Transmission Clause. See Clause 52, post. (c) For variations in the language of this clause as to the nature of the invention, see note (a). (f/) The final share of the licensee will be his profit as a licensee. Clause 5, jiost, might be adapted to form a proviso to the above clause, by making the reduced royalty depend on the average selling price for the previous few months or so. (e) As to this clause, see ante, p. 204. (/) That is, if rent be reserved. SPECIAL CLAUSES. 229 and unsold by debiting himself therefor in the accounts for such on manufac- half-year with royalties at the rate of shillings per article (.7) g^f^g ^^ and so that at the end of any succeeding half-year in which the articles last aforesaid shall be sold he shall debit himself in the accounts with fuiiher royalties at the rate of shillings per article (//). 5 (i). Provided always that at the end or sooner determination Proviso that of this licence all articles in the possession of the licensee not then !J°'^jJj ^f ^*^^^^ already sold wliether actually complete or only in course of mauu- \^.j.^ g],aii facture shall bear the royalties which would respectively become bear reduced payable under Clause as if the same had been actually sold royalties. less however a discount of per cent, thereof (./) . 6 (/.) . The licensee shall during the continuance of this licence Covenant to pay to the licensor the annual sum of £ (hereinafter called P^^'.^J'J'J* '^^^ "the rent") by two equal instalments of £ each on every '""^'^ day of and day of respectively by way of royalty at the rate of shillings per hundred weight on hundred weight half-yearly of the said as if such quantity shall in each such half-year have actually been manufactured hereunder by tlio licensee (/) and also except as next hereinafter provided (m) a royalty on the same half-yearly days respectively at the same rate for every hundred weight or lesser quantity of • manufactured by him hereunder in each such half-year in excess of such quantity of hundred weight {»). 7. The licensee doth hereby covenant &c. [Use Clause I., ante, Anotherform. p. 228, as to the covenant to pay royalties.'] And also such further sum (if any) as together with the said royalties shall amount to the sum of £ (hereinafter called " the rent ") [that is to say a sum equal to the amount of royalties on of the said articles (0)] {p). {(j) Or say "tho royalties in this behalf mentioned in the Schedule hereto." (//) lb. The above proviso should be supplemented by tlie next proviso as to reduced royalties on articles remaining unsold at the end of the term (0 This proviso is to apply only where royalties on sales (with or -without royalties on manufacture) arc reserved. Bee ante, p. 203. \j) This clause must be varied for the case of the original royalties not being of fixed amount, e.g. as in Clause 3, cuite. In every such case tho reduced royalty might conveniently be some percentage on the average selhng price for the last few months or so. (A-) For another form, see next clause. (/) Or (if tho royalties are to be on sales) say, "as if such quantity had actually been manufactured, and in each such half-year been sold by him." (in) This refers to tho Average Clause. See Claims 8 and 9, post. {)i) Or (as to sales) say, "manufactured by him hereunder, and in each such half-year sold bv him in excess, &c." (0) If tho words in "brackets be used care should be taken that tho calcula- tion is correct. (2>) See the next two clauses (Average Clauses). 230 LICENCES. Average 8. PROVIDED ALWAYS that if the rent for any half-year shall clause. exceed the total amount of royalties due therefor the licensee shall be entitled for any one or more succeeding half-years (so far as necessary for the purpose) for which respectively the total amount of royalties due shall exceed the rent to a remission of so much of the latter excess as will make up to him the excess of payment made in the half-year for which the rent shall have exceeded the royalties due therefor as aforesaid {q). Another form. 9 (r). PROVIDED ALWAYS that if the licensees shall for the period between the date hereof and the first day of January next or for any succeeding year pay a royalty or royalties according to the covenant hereinbefore contained without having actually sold within such period or year the engine or engines on which such royalty or royalties were so paid they shall be at liberty in any succeeding year or years, without paying any further royalty in respect thereof to sell to the number requisite to make up such past deficiency aforesaid an engine or engines of the lowest class or (but subject to the payment of the difference in royalties) an engine or engines of any different class or classes. Royalties on carloads. Royalties per slmttle according to •width of fabric and period of use. 10. A royalty of £ for every carload of imported by the licensees into their works for the manufacture as herein- before authorized which term carload shall be deemed to mean a quantity of aforesaid of the weight of cwt. (s) and so proportionately for any lesser quantity. Provided however that no apportionment of any royalty shall be made in respect of any quantity less than 7 lbs. (f). 11 (ii). Pay .... for every shuttle used in weaving as afore- said the said fabrics without silk and either in warp or weft to a width not exceeding three inches the sum of five shillings for every day or fraction of a day of such use and to a width exceeding three inches but not exceeding six inches the further sum of two shillings for every day or fraction of a day of such use and to a width exceeding six inches biit not exceeding nine inches the still further sum of two shillings for every day or fraction of a day of such use and so on at the rate of two shillings per day or fraction of a day of such use for each and every fm-ther extra width of three inches or less. And for every shuttle &c. \_Similar provision as to the onanufadure of the fabrics icith silk.'] [q) For another form, see next clause. (r) This proviso is to meet the case of royalties of different amounts having been reserved on the sales of engines of different classes, and an annual rent having been fixed covering the royalties on the sales of a certain number of engines of the lowest class. (s) Or (if applicable) vpiite, " a quantity of aforesaid to the extent of superficial feet." [t) Or superficial feet. (u) This clause is adapted from a clause in a precedent in Cory ton (Appendix No. 3). SPECIAL CLAUSES. 231 12. A royalty of £ for the application of tlie Eaid invcn- Royalties on tion to the first 1000 foot-warmers or other ajiparatuses of a similar ^varmers to" character used by the company or any lesser number and £ which the for the like application to every additional lOO and so proportion- invention may ately in respect of any less number than 100 of such additional ^^PP"^'"- apparatuses. 13 (v). The royalties for any articles aforesaid shall be reduced Royalties to from time to time so as to equal the lowest roj-alties for cone- ioVehiT*^*° sponding articles for the time being provided to be paid in similar time being eases in any other then subsisting licence granted for the said ^P other district or any part thereof (/r). And further the licensor shall ^'^*^^^*^''- give to the licensee information in writing at the earliest oppor- to'^be^'given'^to tunity of any reduction of royalties whieli ought to be made as licensee of aforesaid and of the circumstances relating to such reduction: ?ny licence Provided always that the licensor shall not without the -^Titten reduction. ^ consent of tlie licensee grant any other such licence unless there be reserved thereunder royalties of the like kinds respectively as are reserved hereunder payable half-yearly (.r). Provided also Reduced that no royalties reduced as aforesaid so as not to exceed the Royalties not royalties of any other licence shall be liable to be increased by if other reason only of the expiration of such licence. licence be determined. 14 (//). If the licensee shall at any time during the continuance Suspension of of this licence have reasonable cause to believe tliat an infringe- rent and ment of the said letters patent had taken or was then taking place ^"hilc^licensor within the said district and shall serve the licensor with a notice in omits to take ' AVTiting requiring him at the expense of the licensee (z) to take proceedings proceedings legal or otherwise with all due speed in order to ments'^°^" prevent or restrain the said infringement or any renewal thereof and the licensor shall for the space of one week or more after such service unreasonably neglect or refuse so to do or having commenced shall for the like space unreasonably neglect or refuse to continue such proceedings the licensee may at any time thereafter while the said infringement or renewal thereof shall remain unprevented or unrestrained on serving the licensor with a further notice in writing for the purpose be at liberty to withhold payment of any rent or royalties aforesaid thereafter becoming due hereunder (a) : Provided however that the suspended payments shall revive (if at all) either on the termination of any proceedings aforesaid {v) As to tliis clause, see ante, p. 207. For a shorter clause, see Clause 34, post. (w) Or let tliero be no limit in tlio area, c.f/. if the iutcuded licence bo an exclusive one. (x) Or as provided in the present licence. (?/) As to this clause, see aide, pp. 205-6; and note (- ^82. (z) Add, -where appropriate, "or any other expression referring to either of the same persons." See ante, pp. 185, 186, as to covenants binding assigns. 243 LICENCES. LIST OF PRECEDENTS. FAOE I. LICENCE {7ion-exchisive) at Royalties only [ JFhere open Con- tract'] 245 II. LICENCE hion-exdush-c) at Royalties only [ Where full Con- tract-] 247 III. LICENCE (exclusive) at Rent and Royalties 250 IV. LICENCE (exclusive) at Eent and Koyalties to manufacture and sell Chemicals— Fon^iGS CoxcESSiox held by Licensor to yet the Eaw Material — Licensor to supply Licensee ivith the material at prices — An.alyses of Cakgoes by Chemists — No Rent payable when supply insufficient 254 [Agreement IX. carried out.] Y. LICENCE {exclusive) to sell the patent articles — Licensor both French and British patentee — Licensor from French factory or his British matnfacturiny Licensees to supply articles monthly at prices ■_ 259 [Agreement X. carried out.] VI. LICENCE to a Firm to manufacture at own Works and {subject to Eeservation to yrant limited number of other sclliny Licences) to sell the patent articles within a Dis- trict — Eents and Eoyalties on Sales, or at ottiox of Licensees, BOTH on manufactures and so Zes— Delivery of Articles to Sub-licensees to be denned Sales 263 VII. LICENCE {exclusive) for a District at a sum the balance tchereof is payable in Five Years by Half-yearly Instal- ments — If any Instalment in arrear, fnal balance, or any jyart demanded, at once j^cyc^^^ — Payments to cease // Patent void, but to revive //" decision overruled — Cesser of Payment to be taken as Damages— Assignment for the District, tchen all Moneys paid — Eevocation of the Licence if long default in Payment or Bankruptcy — Licensee may determine on breach by Licensor 2(jG \_Sale on HiRE System.] VIII. LICENCE {exclusive) fur a District, in consideration of a Life Annuity secured by Bond 271 k2 244 LICENCES. fAGE IX. LICENCE {exclusive) for the KiifGDOM, siilject to prior LiCEXCES Jixing Minimum selling prices of the Patent articles, and to Licensor's right to supply some of the other Licensees — Premium paid — Eoyalties m fixed Sums in- creased to a percentage on selling prices, but no Rent — Articles supplied bg Licensee to his Sub-licensees or MANUFACTURED bg them to be deemed sold bg him at said minimum prices less Discount — Licensee [if required) to SUPPLY the other Licensees, and to receive the prices and PAY Royalties — No Sale bg Licensee at less than said minimum prices — Sub-licences to contain certain pro- visions — Reduced Royalties on unsold Articles at e7id of Licence — Licensor not to engage in adverse Business .... 273 X. LICENCE {exclusive) for a District to a Limited Company — ■ Premium in Cash and Shares — Royalties ^je/- ton according to different products, but after certain date to decrease Five per Cent. Annuallg — Different Rents — Suspense OF Royalties and Rents ivhile Licensor omits to proceed for Lnfringements — Special Provisions for determination ^c, — Reduced Royalties on products in hand at end of Licence 278 XI. LICENCE {exclusive) for England, Wales, and Lsle of Man — Royalties and Rent — Royalties on Manufactures by Licensee, and his Sub-Licensees, and also on articles autho- rized to be supplied by him Abro.o) — Reservation to Licensor as to existing Orders atid Foreign Customers, and the supply by him to the Licensee /o>- the First Year of Articles to be Sold on Commission 283 XII. SUB-LICENCE {exclusive for a District at Royalties) 288 245 LICENCES. I. Trec. T. LICENCE {non-cxchmvc) at Royaltm onJy—lWhere open con- tvaet^ {a). THIS INDENTUEE made tlie day of — - 18— behveen A. B. of &c. (hereinafter called "the licensor ") o the one mrt and C. D. of &c. (hereinafter called " the licensee ) of Uie oSer part (b) : Whereas by letters patent &c. [Grant of RccitaJs %:ft)jXoMion (if any) of title]: And ^vhe.ujas the G.ant ^ licensor has agreed to grant the licensee a licence to use the said ^^^^^^^^^^ ^f invention [so far as relates to the manufacture of J witmn title. he town or district of in the county of — "" - ^--^^ ^^--^ ^« after defined upon the terms heremafter appearmg. N OW Tlllb been- INDENTURE WITNESSETH that in pvu-suance of the said Grant, agreement and in consideration of the royalties heremafter re- sen^T and the covenants on the part of the licensee heremafter contained the licensor doth hereby grant unto the hcensee [and h s assio-ns(./)1 full liberty licence power and authority mthm the SietWiig m'iles in radius from the ^-nto^ the town hall of the town of in the county of to ^^lake use exercise and vend (.) the said invention [so far as the same sh be applicable to the manufacture of ]• J-«, "^'^^f '" exercise and enjoy the said licence and premises unto and b} the Ucensee [and hs assigns (./')] for and during all the residue now ___ manufaetu/ed by the licensee [or his assigns] hereunder in the half-years then ending respectively the royalty o± J • (rA The onlv terms of the contract are to bo supposed to bo as to the axioLt of "l-aS payable half-yearly, the locality, and the duration of the licence. HcQ avie, -p. 19o. (h) As to recitals in a licence, see ante, p. IJI. S:ri?th;'jont,i:;ctd"e:'SS4"i to .to assigns, omit the .o.* iu nf^L.?rd "l^ki'StalK usoa .ith .ete^^^^^ will include the sale of them. {Thomas v. Hunt, 17 C. B. M. fe. IW, ana ante, p. 194.) (/') See note ((/), s(/;'ra. ^ „ 10. (^) As to the insertion of the reddendum, see ante, p. 1.4. 246 LICENCES. Peec. I. Covenants. To pay- royalties. To keep account books &c. Production and inspection of books. Delivery of accounts. And the licensee doth hereby covenant with the licensor and his assigns that he the licensee [or his assigns] will during the term hereby granted pay to the licensor or his assigns {h) half-yearly on every day of and day of for every manufactured by the licensee [or his assigns] here- under in the half-years then ending respectively the royalty of : And also (/) that he [or his assigns] will during the said term keep at his [or their] usual place [or places] of business all proper books of account and make true and complete entries therein at the earliest opportunities of all particulars necessary or convenient for the purposes hereof of all transactions re- lating to the manufacture [or sale (/)] of manufactured by him [or his assigns] hereunder and produce the said books to the licensor or his assigns or his or their agent or agents at all reasonable times for inspection and the taking copies or extracts therefrom and will at his [or their] own expense obtain and give to him or them all such information as to any item or matter con- tained or which ought to be contained therein as shall be reason- ably required : And also that he [or his assigns] will at the end of each half-year aforesaid deliver or send to the licensor or his assigns a statement in writing of the particulars of the manu- facture in such half-year of the said articles and the amount of royalties payable in respect thereof as aforesaid (k). In "WITNESS &c. (/). Improve- ments &c. (mutual covenants). Power of revocation. (/i) If the reddendum is inserted this covenant need only be " to pay to the licensor or his assigns the said royalties at the respective times aforesaid." {i) As to keeping accounts, insj^ection, &c., see ante, p. 210. (j) Entries of the sales will serve as a check to those of the manufacture. {k) Where the contract is more than an open one of the simplest kind {ante, p. 195), so as to extend to improvements, &c., and to a power of revocation by the licensor, use Sp. CI. 41 and 44, ante, pp. 239, 240. Liberty for the licensee to determine the licence is unnecessary to be given, as he need only discontinue the use of the invention {ante, p. 219). {I) The licence should be registered {a7ite, pp. 23, 24, and sect. 23 of the Act of 1883, 2'>ost, p. 313, Appendix). LICENCES. 247 II. LICENCE {tion-e.rcliisire) at IxoyaJties onhj [ lJ7icrc full contract'\{((). Peeo. II. THIS INDENTURE made &c. Between A. 13. of c^c. (herein- after called " the licensor") of the one part and C. D. of &.Q. of the other part \_Pu'cite as in last Precedent]. NOW THIS INDEN- Ji^ciiaU. TURE WITNESSETH that in pursuance &c. [Coiitinne to the 1st Testatum. end of the Habendum in lad Precedent, and take in the Peddenduni if Grant. tJiougJit Jit~\ : And the licexsor doth hereby covenant with the covenants. licensee [and his assigns] that notwithstanding anything by him VulicUty of the licensor done omitted or knoAvingly suffered the said letters P^t«.'nt aud I'lf lit" TO patent arc now valid and subsisting and not void or voidable and .rnxat. that notwithstanding as aforesaid he the licensor now hath power to grant the premises in manner aforesaid : And the licensee Cuveuants hj doth hereby covenant &c. \Coi'enants to pay royalties, heep $^e. ^''«'«<^^- accounts and aJlou- inspection 8^"c. as in last Precedent, adding as royalties. folloics~\ : And will if and when required by the licensor or his -po keep and assigns but at the expense of the licensee [or his assigns] verify or deliver ac- procure some fitting person in his [or their] employ to verify the counts and said statement or any part or parts thereof by statutory declara- spection "of tion : And at,so {Jj) will place on some conspicuous part of every books, article manufactured by him [or his assigns] as aforesaid as soon To verify as the same shall be completed a metal plate \_or " label " or ^•c.'] statements of furnished by the licensor or his assigns as and when required by °"" ' the licensee [or his assigns] bearing Fome number showing the patent' mark order of manufacture and also having an inscription or mark on articles. of the kind shown in the margin hereof or such other inscription or mark as the licensor or his assigns may think fit to adopt and will not retain or sell or part with the possession of any such article without the said plate [or " label " or c^f.] being placed thereon as aforesaid: And also Avill on each half-yearly day aforesaid or within twenty-one days thereafter pay to the licensor or his assigns for the said jilates [or " labels " or i^'c.'] so fmrnished in the half-year then ended as aforesaid at the rate of shillings per dozen including the cost of carnage and delivery ((() As to this form of licence, sco "List of Ordinary Covenants," ante, p. "i'i;], and the references there to the pages of the text. (i) Por other clauses relating to the use of a patent mark, see Sp. CI. 23—27, ante, pp. 234—6. See also ante, pp. 210, 211. 248 LICENCES. Peec. II. To mamifac- ture ouly according to tlie specifica- tion. Licensor may inspect factory. No assign- ment charge &c. of the licence or gi'aut of sub- licences. Not to dis- pute validity of patent. To detect in- fringements and assist licensor in proceedings. Power for licensor to revoke on notice. thereof : And also (e) that [neither] the licensee [nor his assigns] will [not] during the continuance of this licence without the written consent of the licensor or his assigns manufacture any article aforesaid without the application of the said invention as descrihed in the specification thereof for the time being in force at the Patent Office [and in case he [or his assigns] shall do so without such consent will pay to the licensor or his assigns such sum or sums by way of royalty to the amount or respective amounts and otherwise as aforesaid in respect of any article or articles manufactured by him [or them] contrary to this covenant as if the same had been manufactured in accordance therewith] : And also (r/) that the licensor or his assigns or his or their agents shall be at liberty at all reasonable times during the continuance of this licence to enter any place of the licensee [or his assigns] where the manufacture or sale of the said articles shall be carried on in order to ascertain the state or extent of such manufacture or sale and that all covenants by the licensee herein contained have been or are being duly per- formed or observed : And also (e) that [neither] the licensee [nor his assigns] will [not] without the written consent of the licen- sor or his assigns first had and obtained assign or mortgage charge or grant sub-licences in respect of or otherwise deal or part with the possession or control of this licence or attempt so to do [but such consent shall not be arbitrarily withheld]: And also (/) that [neither] the licensee [nor his assigns] will [not] during the continuance of this licence nor at any time after the determination thereof dispute or object to the validity of the said letters patent or the novelty or utility of the said invention : And also (rj) that the licensee [or his assigns] will use his [or their] best endeavours to detect every suspected infringement of the said letters patent within the said district and will give the licensor or his assigns written notice thereof as soon as the licensee [or his assigns] shall have suspected and also (if the case) ascertained the same and will at the expense of the licensor or his assigns as to actual disbursements (if any) made or liabilities (if any) incurred there- by assist him or them in any proceedings undertaken by him or them in respect thereof as shall be reasonably required : And IT IS HEREBY DECLARED (h) that the Hceusor or his assigns shall be at liberty at any time after the day of (c) As to this covenant, see ante, p. 212. (d) Ante, p. 212. , , (e) As to this covenant, see aiite, pp. 213, 214; and as to an express power to grant sub-licences, see ante, p. 215. For precedents of an assignnaent and a mortgage of a licence, to which the licensor is a party, see Assign- ment X. and 3Iortcjage IV., ante, pp. 163, 177; and in connection therewith respectively, see the remarks at pp. 128, 131, ante. (/) Ante, p. 216. Ifj) See ante, p. 217, as to this covenant, and also note to Sp. CI. 39, ante, ' (h) As to the revocation of a licence, see ante, pp. 218, 219. For the form of a proviso or covenant for revocation on bankruptcy or breach of covenants, see Sp. CI. 41, ante, p. 239. LICENCES. 249 18 — to serve the licensee [or his assigns] witli a written notice Fbec. II. to revoke this licence which accordingly shall stand and be revoked at the expiration of weeks from the date of such service but without prejudice to the payment of any royalties or other sums duo hereunder up to the time of revocation : And Mutual EACH of them the said parties hereto (/) doth hereby covenant with '[^^^^^^t''^^ the other of them tliat he [or his assigns] will at tbe earliest meuts. opportunity either at his [or their] own place [or respective places] of business or by post (if suitable) or otherwise as shall be reason- ably required during the continuance of tliis licence communicate and explain to the otlier of them [or his assigns] free of charge except as to expenses out of pocket incurred thereby any improve- ment in or addition to the said invention or mode of applying the same or any discovery useful for the manufacture of the said articles that he [or they] may invent ascertain or make or other- wise be enabled to communicate and that every such improvement addition or discovery (whether the same shall be or become patented or not) shall during the continuance of this licence be for the use of both parties hereto [or their respective assigns] and if made invented or ascertained by the licensor [or his assigns] shall for the purposes hereof be deemed part of the said invention. In witness &g. {J). (i) As to this covenant, see aute, p. 218. Compare this covenant -with Forms 15 and 16, aute, p. 52. As to the insertion of some covenant of the kind in most instruments, see anP/, pp. 33 — 35 (Chapter on "Agree- ments"). (./) The licence should be registered. See note (?) to last precedent. For a declaration as to service of notices, use Sp. CI. 51, ante, p. 242. 250 LICENCES. III. Peec. III. Eccitalfs Grant. RcdJcndum. Covenauts as to validity of patent and power to grant. Licensee's covenants. To pay- royalties, and rent. Average clause. LICENCE {exclusive) at Eent and Royalties {a). THIS INDENTUEE made &c. Between A. B. of &c. of the one part and C. D. of &c. of the other part \_Recite as in Licence /., ante, hut use the ecrpression "sole and exclusive licence"]. NOW THIS INDENTURE WITNESSETH that in pursuance of the said agreement and in consideration of the royalties and rent hereinafter reserved and the obligations of the licensee hereinafter contained the licensor doth hereby grant unto the licensee and his assigns {Ij) the full sole and exclusive liberty right licence power and authority within the town of in the county of to a radius of miles from the front of the town hall thereof to use exercise and vend the said invention : To have hold exer- cise and enjoy the said premises unto and by the licensee and his assigns for and during the residue now to come and unexpired of the said term of fourteen years and during any further term for Avhich the said letters patent may be prolonged [Yielding and PAYING &c. ((?) ] : And the licensor doth hereby covenant &c. \_QuaUfied covoiants as to 'validity of patent and poKer to grant, as in last Precedent^ : And the licensee doth hereby covenant with the licensor &c. \Covenant for paymod of royalties as in Licence /., hut importing "assigns" and conti)iuing as follous^ : And also such further sum (if any) as together with the said royalties shall amount to the sum of £a (hereinafter called " the rent ") [that is to say a sum equal to the amount of royalties on of the said articles (f/)] : Provided alm^ays that if the rent for any half- year shall exceed the total amount of royalties due therefor the licensee or his assigns shall be entitled for any one or more suc- ceeding half-years (so far as necessary for the purpose) for Avhich respectively the total amount of royalties due shall exceed the rent (a) As to tliis form of licence, see "List of Ordinary Covenants," ante, p. 223, and the references there to the pages of the text, {b) As to the use of the word " assigns " in a licence, see ante, pp. 185, 193. (c) As to the insertion of the reddendum, see ante, p. 194. ((?) The matter in brackets is objectionable on the ground that some dis- crepancy might, by the mention of the wrong number of articles, arise between it and the statement as to the amount of royalty. Its insertion, on the other hand, is no doubt convenient. LICENCES. 251 to a remission of so much of the latter excess as will make up to Peec. III. him or them the excess of payment made in the half-year for " which the rent shall have exceeded the royalties duo therefor as aforesaid : And the licensee doth hereby also covenant with the Accounts, licensor &c. [Covouaits as to keepinfj furnisJtiiuj and vcrifi/ing x;so of patent accoiiiifs and alloidncj innpcdion of hooks, the iisc of the patent mark, mark. manufacture only accorduuj to the specification, and tiJjcrtij to inspect the Manufacture factory, as in last Precedenf] : And also that neither the licensee according to nor his assigns will without the wiitten consent of the licensor specification, or his assigns first had and obtained assign or mortgage charge J^^^^^J to [grant sub-licences in respect of (e) ] or otherwise deal or part factory, with the possession or control of this licence, or attempt so to do No assi^ii- [except by way of sub-licensing as next hereinafter provided] but ment &c. such consent shall not be arbitrarily withheld: fl'JtoviDED always '^^'it^iout consent tliat it shall be lawful for the licensee and his assigns to grant sub- p . licences hereunder wliicli shall respectively be according to the giving power terms (amongst others) mentioned in the schedule hereto (_/) : to grant sub - Provided also that tlie licensee or his assigns shall immediately licences, after the grant by him or them of any sub-licence give the licensor l>ut notice and or his assigns written notice thereof stating the date tliereof the to be*'"iven. name and address of the sub-licensee the nature of the privileges thereby granted the amount and times for payment of the royalties reserved thereunder the length of the term comprised therein and the locality in ^^'hich the same is to be enjoyed and also showing that the sub-licence contains the terms herein- before provided in this behalf] : And the licensee doth hereby Not to dis- also covenant with the licensor that neither he the licensee Pi'*® validity nor his assigns will during the continuance of this licence to detect in^ &c. \_Cocena)its as to not disputing the validity of the patent and friugcmouts to detect infringements and assist licensor, as in last Precedent ■':^^ assist saying " nndcrtaken [unrequestcd by the licensee or his assigns) "] : proceedings. And the licknsor doth hereby covenant with the licensee that he zicoisor's the licensor or his assigns will during the continuance of this further cove- licence pay all fees necessary for the renewal of the said letters '"""■*• patent days at least before the latest times appointed for "^^.P Y ^^^^ the payment thereof respectively and when required by the couditions^of licensee or his assigns produce the certificate to him or them of patent. any payment thereof or permit the licensee or his assigns to pay any one or more of such fees and to deduct the amount of the same if and when so paid by him or them from the amount of royalties or other sums for the time being duo hereunder and also generally perform or observe the conditions of the said letters patent {g) : And also that the licensor or his assigns will at all To defend times during the continuance of this licence at his or their own proceetlmgs ° for rcvoca- (e) Omit this reference to sub-licensing if the next later matter in brackets is to be iuscrtcd. See pp. 2i;i, 21-4, ante, and Sp. CI. 33, p. 237, ante, as to the above covenant, and the insertion of uu express power to grant sub- licences. (/ ) As to this and the following proviso, and the terms usually prescribed, see ante, pji. 214, 21J. Where those terms are to bo set out in the body of the licence, use Sp. CI. 33, ante, p. 237. {g) As to this covenant, see ante, pp. 199, 200. 252 LICENCES. Peec. III. tion and at cost of licen- see to take proceedings for infringe- ment or per- mit him &c. Not to amend specification. That no other Licences within dis- trict are sub- sisting. Not to use &c. invention in district. Mutual cove- nant as to improvements &c. Proviso for revocation by licensor on defaidt in payment or breaches &c. Proviso for determination of licence if patent void. cost defend every proceeding for the revocation of tlie said letters patent and at all times aforesaid at the request and cost of the licensee or his assigns commence and prosecute all legal or other- proceedings in respect of any infringement or suspected infringe- ment of the said letters patent committed within the said district or permit the licensee or his assigns at the like cost so to do in the name of the licensor or his assigns (//) : And that neither the licensor nor his assigns will at any time during the continuance of this licence amend the specification for the time being in force at the Patent Office of the said invention without the written consent of the licensee or his assigns but such consent shall not be arbitrarily withheld : And that he the licensor hath not hereto- fore granted any licence for use of the said invention within the said district : And that neither the licensor nor his assigns will during the subsistence of this licence use the said invention or grant licences in respect thereof or authorize any person whomso- ever to use the said invention within the said district : And each of them the said parties hereto doth hereby covenant with the other of them that &c. \_2Iutual covenant as to improvements 8^r. as in last Precedent^ : Provided always that if any royalties or other sums payable hereunder by the licensee or his assigns or any part thereof respectively shall for any half-year aforesaid be not paid within twenty-one days from the expiration thereof (whether demanded or not) or if the licensee or his assigns shall make default in any other obligation by him herein contained and (in the case of a breach capable of being made good) shall for the space of days after he shall have been served with a notice in writing by the licensor or his assigns to make good the said breach neglect or omit so to do or if the licensee or his assigns shall become bankrupt or commit any act of bankruptcy whether available for adjudication or not then the licensor or his assigns at any time thereafter and notwithstanding any merely implied waiver by him or them of his or their right so to do may by serving the licensee or his assigns or his or their trustees in bankruptcy (if any) with a notice in writing for this purpose forthwith revoke this licence without prejudice however to the recovery by the licensor or his assigns of any moneys then already due or to any right of action by or on behalf of either party or his assigns for past breaches accrued hereunder (/) : Pkovided also that if the said letters patent shall from any cause become wholly or as to some material part of the said invention void and incapable of being restored (notwithstanding that any judgment in revocation of the said letters patent to the extent aforesaid shall or shall not be appealed against) (J) the licensee or liis assigns may at any (h) As to payment of royalties to trustees cUmng the proceedings, see Sp. CI. 19, ante, p. 233. (i) As to the revocation of a licence, see ante, pp. 218, 219. {j) If the royalties are to be paid to trustees during the proceedings the matter in brackets should be omitted. See ante, p. 206, and Sp. CI. 19, ante, p. 233. LICENCES. 253 time thereafter by notice in writing served on the licensor or his Phec. III. assigns determine this licence forthwith -without prejudice however to the recovery by tlie licensor or his assigns of any royalties or other sums then ah-eady due to the licensor or his assigns here- under or to any right of action then already accrued to eitlier party or his assigns liereunder (k) : And tup: licensor hereby Acknowledg- acknowledges the riglit of tlie licensee and his assigns to the pro- ™^°' ^j^- ^^ duction of the said letters patent and any other letters patent in ^^nt.^"^" l)rolongation tliercof and to the delivery and right to take copies of the same and hereby undertakes for the safe custody thereof respectively. In witness &c. (/). The Schedule. (A-) As to tills proviso, see ante, pp. 219, 220. (/) The licence should be registered. See note (/) to Licence I., ante. For a declaration as to service of notices, use Sj). CI. 51, ante, p. 242. 254 LICENCES. Peec. IV. IV. LICENCE {exclusive) at Rent and Royalties to manufacture and sell Chemicals — Foreign Concession held by Licensor to get the Raw Material — Liceiisor to siipphj Licensee uith the material at prices — Analyses of Cargoes bf/ Chemists — No rent payable ichen supply insufficient (a). [Agreement IX. carried out.^ THIS INDENTURE made the Recitals. Grant of patent and devolution of title. Foreign con- cession to obtain raw material, for manufac- turing the patent che- micals. Licensee esta- blished in business. Agreement to grant exclu- sive licence. \st TcstaUnn. Grant of exclusive licence for district. day of &c. : Between A. B. of &c. (hereinafter called "the licensor") of the one part and C. D. of &c. of the other part : Whereas by letters patent &c. \_Grant of patent, and devolution {if any) of title'] : And whereas by an instrument in writing or acte d'aiitorite dated &c. under the seals of &c. (hereinafter called " the said concession ") the said A. B. has obtained &c. \_Recite as in Agreement IX. at p. 84, ante'] : And whereas the said [_7Y(w material] is the principal &c. \_Recite as in Agreement IX. at p. 84, ante] : And whereas the said C. D. is established at aforesaid as a manufactiu'er of chemicals of various kinds : And whereas the licensor has agreed to grant the licensee a sole and exclusive licence to manufacture chemicals according to the said invention within the counties of &c. &c. upon the terms hereinafter appearing and to supply him with the \_raw material] in certain minimum quantities from time to time upon the terms hereinafter expressed : And whekeas in view of the grant of this licence the licensee hath already purchased from the licensor a considerable quantity of the said [rr/^r material]. NOW THIS INDENTURE WITNESSETH that in pursuance of the said agreement in this behalf and in consideration of the royalties and rent hereinafter reserved and the covenants and agreements on the part of the licensee hereinafter contained the licensor doth hereby grant unto the licensee and his assigns the full sole and exclusive liberty right licence power and authority within the said counties of &c. &c. [hereinafter called " the said district "] to manufactm^e chemicals according to the said invention and also to (a) As to the covenants, &c., in an exclusive licence at rent and royalties, see List, ante, pp. 223-5, and the references there to the j)ages of the text. LICENCES. 255 sell (h) the chemicals so manufactured : To have hold exercise P^c. rv. and enjoy the said licence and premises unto and by the licensee and his assigns for and during all the residue now to come and unexpired of the said term of fom-teen years granted by the said letters patent and during any further term for which the said letters patent may be prolonged : And the Licensor doth Covenanis as hereby covenant with the licensee &c. [^Covenants as to raVuUtj/ <)/• to validity of jmtent and ri(jht to cjmnt as in Licence II., ante'] : AND THIS riehtto'^ INDENTUEE ALSO WITNESSETH that in pursuance of the gmnt. said agreement in this behalf and in consideration of the premises 2)id Testatum. it is agreed and declared as follows (c) : — Covenants. 1. The licensee shall during the continuance of this licence pay Royalties up to the licensor half-yearly on every day of and **^ ^ minimum day of royalties at the rate of shillings manS-"'^' per pound on all chemicals manufactured by the licensee here- tured. under in the half-years then ending respectively and also such further sum (if any) as together with the said royalties shall amount to the sum of £a (hereinafter called " the rent ") [that is to say a sum equal to the amount of royalties on lbs. of the said chemicals {d)]. 2. Provided always that if the rent for any half-year sliall Average exceed the total amount of royalties due therefor the licensee shall '^^^"^^• be entitled for any one or more succeeding half-year (so far as . necessar}^ for the purpose) for which respectively the total amount of royalties due shall exceed the rent to a remission of so much of the latter excess as will make up to him the excess of payment made in the half-year for which the rent shall have exceeded the royalties due therefor as aforesaid. 3. Provided also that in the event of the said concession becom- Proviso as to ing determined or the supply of material from the said Island of non-payment within the limits aforesaid becoming exhausted or any anyhalf°year otlier event wliereby the licensor shall in any one half-year become if insufficient unable to and in fact not supply to the licensee the said material ^"PP'y" ^^ to the amount of a tons at least as hereinafter provided the rent shall not become payable for such half-year but this proviso shall not affect the obligation of the licensee to pay royalties on the amount of chemicals in the same period actually manufactured by him subject to the operation of Clause 2 hereof {e). 4. The licensor shall for every half-year during the continuance Licensor to of this licence (the first whereof however commencino: on the supply licen- ° see half- (6) "To manufacture" includes "to sell." Seo Thomas v. Hunt, 17 C. B. N. 8. 183, and ante, p. 194. (c) The system of clauses is adopted in this and the following precedents of licences, as being most suitable to what may bo called the informal part of the deed, as distinguished from that part of it which contains the actual licence and the covenants for title. The words "agreed and declared" stamp the provisions as covenants (E. N. & C. 41o, 42G); and, where it is stated that a person is to do a thing, ho alone is bound to do it [ibid. 426). Ul) See note [d) to last Precedent. (e) The licensee may, by Clause 6, obtain material elsewhere, if and while ho is insufficiently sui)plied by the licensor. 256 LICENCES. Peec. IV. yearly with rainimum weight of raw material at fixed prices according to percentage of acid. day of (/')) supply to tlie licensee and the licensee Analysis of material by chemists. Licensee not to sell &c. material ex- cept in form of chemicals or purchase other mate- rial elsewhere unless licensor fail to supply him. Books and accounts kept, inspection &c. and accounts delivered &c. Use of patent mark. shall purchase from him a tons of the said material containing c per cent, at least of acid and at the option of the licensee a further amount not exceeding tons of the said material containing the like minimum percentage of acid and the licensee shall pay for the different kinds of such material the following prices namely for such quantity thereof as after analysis shall he found to contain not less than a per cent, of acid the price of £ per ton and for such quantity thereof as shall be found as aforesaid to contain ]} per cent, and not less than c per cent, of acid a price per ton in the same proportion to the said sum of £ as such lesser percentage of acid shall bear to the b percentage and all quantities of the said material so purchased if coming from the said Island or elsewhere abroad shall be delivered to the licensee free exship in the river Thames or other place of arrival from abroad and the said prices shall be payable at the end of the respective half-years in which the same shall be purchased. 5. Any difference at any time between the parties as to the per- centage of acid in the different quantities of material so to be purchased shall be referred to the arbitration of some com- petent and well-known chemist in Great Britain or of two such chemists one to be appointed by each party hereto and Clause 23 hereof shall with the necessary modifications be applicable to any such reference. 6. The licensee shall not during the continuance of this licence without the written consent of the licensor sell or otherwise dispose of any such material supplied by or through the licensor except in the form of chemicals manufactured according to the specification of the said invention nor (so long as the licensor shall be able and willing to supply him therewith) purchase or acquire from any other person or persons any material aforesaid or other like material. 7. The licensee shall keep at his usual place of business all proper books of account and make true and complete entries therein at the earliest opportunities of all particulars necessary or con- venient for any of the purposes hereof of all transactions relating to the manufacture by him of chemicals under this licence and of the like chemicals sold by him hereunder and shall produce the said books to the licensor &c. {_Froductioii and inspection of hooks, and delivery of accounts as in Licence /., omitting reference to "assigns^'']. And will if and when required by the licensor but at the expense &c. [^Verification of statement as in Licence II., ante']. 8 {g). The licensee shall aflSx on every box packet bottle jar or other receptacle of or containing the said chemicals as and when (/) This might conveniently be six calendar months after date, the licensee being already supplied with material. {g) For other clauses relating to a patent mark or die, see Sp. CI. 23 — 27, ante, pp. 234 — 6. LICENCES. 2^^ manufactured by Lim a laljol or ijlate bearing the proper patent ^^^- ^^- mark and designation of the said invention wliicli t-liall be fur- nished by the licensor {//) as and when required by thp licensee and shall not sell or part with the possession of any chemicals aforesaid or the receptacle containing them without such mark and desig- nation being so affixed and shall on each half-yearly day aforesaid pay to the licensor for the said labels and plates so furnished m the half-year then ended as aforesaid at the rate of shillings per gross of labels and shillings per dozen of plates afore- said. 9. The licensee shall not during the continuance hereof without To mamifac- the written consent of the licensor manufacture any_ chemicals J;;^^;'^;.^^'^"^ aforesaid (from whatever source supplied to him) without the ^j^^^ application of the said invention as described in the accepted specification thereof for the time being in force at the Patent Office. And in case he shall do so without such consent shall but without prejudice &c. [As in Sp. CI. ^30, ante, p. 236, mincj the term " chemicals " instead of " articles "]. * '* * * * [For Clause 10, as to inspection of factor//, use Licence II. ; for Clauses Clause 11, as to non-assignment, ^r., mth the proviso giving pourr to sub-license, and the proviso as to notice, i^r., me last Precedent ; for Clauses 12 and 13, as to not disputing the ralidit// of the patent, and detecting infringements and assisting licensor, c^r., use Licence II. [hut, as to '' assistance,'' with the qualif cation as in Licence III.']; and for Clauses 14—18, as to pai/ment of fees and observance of con- ditions of patent, defence in proceedings for revocation and talcing, 8fc. proceedings for infringements, non-amendment of specif cation, no other licences subsisting, and non-user, ^r. of invention uithin district, use the last Precedent.! * * * * * 10. Each of the parties hereto shall during the continuance of Each party to this licence at the earliest opportunity either at his own place of Jj^^^^^JlJ^'^^.' business or by post (if suitable) or otherwise as shall be reasonably jj^^^ts made required communicate and explain &c. [Mutual covenant as to im- by the other. provements, Sfc, as in Licence II., ante, p. 249]. 20. If any royalties or other sums payable hereunder by the Power of licensee or any part thereof respectively shall remain unpaid for j^^^.^^^f^^JJ'' °'' twenty-one days after the time hereinbefore appointed for payment covenants or thereof (whether demanded or not) or if the licensee shall &c. bankruptcy of [U,e last Precedenq. ^'^'^'^^ 21. If the said letters patent shall from any cause become Power of wholly or as to some material part of the said inveutionvoid and Jj^J^^^^^^^*^ iucaimble of being restored (notwithstanding that any judgment Ji^pyee if in revocation of the said letters patent to the extent aforesaid shall patent bo- or shall not be appealed against) (/) or if the licensor shall in any ;;"^°^;^'^''3''J,J'^ {h) Or refer to the patent mark, &c., as being " of the kind designated in the margin licrcof." (i) If a provision bo inserted that during any proceedings for revocation, or pending any appeal from the judgment thereon, the payment of royalties shall be suspended or made to trustees (see ante, pp. 120 J, 20G, and Sp. CI. 18 and 19, anti', p. 233) the above matter in brackets sliould bo omitted. M. *^ licensor. 258 LICENCES. Peec. IV. Acknowledg- ment &c. as to the letters patent. Arbitration clause. Transmission clause. half-year make default in supplying the licensee with the full minimum quantity of tons of the said material as aforesaid the licensee may by notice in writing served on the licensor to operate at once in the former event and at the expiration of two calendar months from the end of such half-year in the latter event determine this licence but such determination shall be without prejudice to the recovery by either party of any monies then already due or right of action accrued hereunder. 22. 'The licensor hereby acknowledges the right of the licensee to production &c. [As in last Precedent, but omitting reference to ^' ((ssigns"']. 23. If any difference shall arise between the parties hereto in respect of &c. [Arbitration Clause, Form 24, ante, p. 55]. 24. Except where in any case the context &c. [Transmission Clause, Form 2d, ante, jj. 56, using the terms ''licensor" and " licensee "]. In witness, &c. {j). [The Schedule.] (/) The licence sliould be registered. See note (0 to Licence /., ante. a clause as to service of notices, use Sjp. CI. 51, ante, p. 242. For LICENCES. 2o9 Y. Peec. V. LICENCE {exclKsivc) to SELL file pa fen I articles— Licensor loth French and British patentee — Licensor from French factory or his British manufacturing licensees to supiyt'j articles monthly at prices (a) . [Agreement X. carried out.~\ THIS INDENTURE made &c. Between A. B. of &c. (herein- after called " the licensor ") of the one part and 0. D. of &c. (hereinafter called "the licensee") of the other part: Wiikreas jtecitak. the licensor is entitled to a Brevet d'lnvention dated &c. _ and French numbered &c. granted to him for the sole and exclusive privilege pateut. of using and vending within the Republic of France a certain invention described as &c. for the term of fifteen years from the day of : And whereas the licensee at his own British expense in part pursuance of an agreement with the licensor patent taken obtained in the joint names of himself and the licensor letters names,^"™ patent dated &c. numbered &c. for the use of the said invention within the United Kingdom and the Isle of Man for the term of fourteen years: And whereas by an indenture dated &c. and aaidthcn made between the licensee of the one part and the licensor of the Ij^f,^^),"^^^^^. other part the licensee in further pursuance of the same agreement jeet to cove- and in consideration of the covenant by the licensor therein nant to grant contained to grant the licence hereinafter contained duly released *^"=^ licence, and assigned to the licensor all his interest in the said letters patent : And whereas the licensor is established at in the Licensor department of aforesaid in the business of manufacturing ^"^l^'j^Jlf^f '"^ articles according to the said invention : And wheheas in further mauufacturcr. pursuance of the same agreement the licensee hath purchased from the licensor oOO of the said articles at the price of £ . NOW THIS INDENTURE WITNESSETH that in pursuance ist Testatum. of the said covenant in this behalf and in consideration of the Grant of premises and also of tbe obligations on the part of the licensee fj^|;'^!';® ^ho hereinafter contained the licensor doth hereby grant unto the Unitwl King- licensee and his assigns the full sole and exclusive liberty right dom to seU licence power and authority within the T'nitcd Kingdom and Islo *j.['j£^°* of Man to sell \_articlcs] manufactured according to the specififation (a) See p. 221, as to licences merely to sell the patent articles, s2 260 LICENCES. Prec. V. Qiulified covenants as to validity and right to grant. 2nd Testatum. Agreement and declara- tion. Licensor to siipply and licensee pur- chase mini- mum number of articles monthly at prices in Schedule. Licensor to supply further number if required at like prices — but time allowed for large orders. Licensor not ' to grant other licences to sell nor (ex- cept on con- dition of not supplying others than this licensee) to manufac- ture within United King- dom. of tlie said invention or of any improvement thereof wliicli sliall "be supplied to the licensee or his assigns by the licensor or his assigns or otherwise as hereinafter mentioned : To have hold exercise and enjoy the said licence and premises unto and by the licensee and his assigns for and dming all the residue now to come and unexpired of the said term of fourteen years granted by_ the said letters patent and any further term for which the said letters patent may be prolonged : And the licensor doth hereby covenant with the licensee &c. \_QuaUfied covenantH as io mUditi/ of patent and right to grant as in Licence II., ante']. AND THIS INDENTURE ALSO WITNESSETH that in pursuance pf the said covenant in this behalf and in consideration of the premises it is agreed and declared as follows : — 1. The licensor shall at or shortly before the end of each calendar month during the continuance of this licence (the first whereof commencing on the day of next) supply to the licensee or his nominees who shall accordingly purchase from him in number at least of each of the five classes of [/(rticlesl which can be manufactured according to the said invention or any improvement thereof at the prices respectively mentioned in the schedule hereto according to the variations in price for the time being of \_raw fnaterial] and the cotton or textile fabric out of which their covers are made which shall be payable by drafts or ]3ills of days after the delivery (as hereinafter defined) of the said articles respectively. 2. The licensor shall at all times during the continuance of the licence supply the licensee or his nominees with any further number of the said articles than as aforesaid not exceeding altoo-ether of any class or classes per calendar month as and when required by the licensee or his nominees at the respective prices and with the like mode of payment as aforesaid : Provided ALWAYS that the licensee or (as the case may be) his nominee or nominees shall in every case imder this clause allow the licensor or person or persons authorized by him to supply the same days at least for the execution of any order which shall be for more than articles altogether of any class or classes and shall also allow an interval of days at least for the execu- tion of two consecutive orders each of which may be for more than the same number of articles. 3. The licensor shall not during the subsistence of this licence sell the said articles nor grant any other licence to sell the same within the United Kingdom or Isle of Man and shall not unless subject to the condition (amongst others) that the licensee there- under shall not sell or supply any such articles to any person or persons firm or company within the United Kingdom or Isle of Man other than to the licensee or his nominees grant any licence under the said letters patent to manufacture the said articles : Provided however that the licensee (party hereto) shall at the written request of the licensor join in any such licence last afore- said in order to covenant with the licensee thereunder to pay to him at the prices and by drafts or bills as aforesaid for the articles LICENCES. 261 ■which shall be supplied to liim or his nominees by such licensee by Teec. V. way of satisfaction pro tanto of anj' covenant by the licensor in this behalf hereinbefore contained and (if the licensor .shall think fit) shall obtain a covenant by tlio licensee thereunder to supply him or liis nominees with tlie said articles either to the full extent of the obligations of the licensor hereunder in this respect or to any lesser extent. 4. Notwithstanding anything herein to the contrary the prices Licensee to of all articles aforesaid which shall be supplied liereunder to the gujirauteo licensee or his assigns or his or their nominees sliall be guaranteed articles sun- by the licensee himself [h). pUed to hia 5. The delivery of any articles aforesaid to a railway company ^issigTis or or other common carrier on the sale thereof to the licensee or his "°'^^°^^^- nominees shall be deemed a delivery to him or them thereof (c). ^IVZ'^^il /» A n i • 1 T T 1 J 1 1 • 1 • T <• common car- u. All articles supplied by the licensor or his licensees as afore- rier to be said shall be of the best manufacture and as delivered to the dt-emed de- railway company or other common carrier as aforesaid in good and ilceusee*' merchantable condition [d) or if not the licensee or his nominee or a .f • .i g + b nominees (if any) to whom any of the same shall be supplied may of good make within six days from their receipt by him or them at his or their ^'^- or may be usual place of business in London in due course of transit return ^'•^t^™^^- them to the licensor or the licensee or other person supplying tlio same and the licensor or such licensee or person shall allow or pay to him or them all expenses (if any) incurred by him or tliem in respect of the carriage to and fro thereof [c). 7. The licensee sliall keep or cause to be kept undefaced the Use of patent patent mark on every article supplied to him or his nominees m^i'l^- hereunder and so that the same shall not be sold or parted with while not bearing the patent mark. * * * * ♦ [For Clauses, as to not disjmting raUditij and delecting infringe- Clauses ments (/) and assisting licensor, 8fc., iise Licence II. \_biit, as to '^ as- sistance," with the qualification as in Licence III.~\ ; and for Clauses, as to paijinent of fees and observance of conditions, defence in proceed- ings for revocation and talcing, ^'c. proceedings for infringements (g), and no other licences " to sell" having been granted, tise Licence III.'] (Ji). {h) This guarantee \;i\\ enable the licensor to dispense ■with a covenant against assignment, &c. See note {h). (c) This only states the law -n-horo there is no contract to deliver the goods at a specified place {Smith v. Hudson, 34 L. J. Q. B. 145). See other cases mentioned in Benjamin on Sales, Srd echtion, p. 686. Where the contract is to deliver goods at a specified i)lace, the vendor takes the risks of transit thereto [Diudop v. Lambert, 6 CI. & Fin. 600; Benjamin, p. 686). (f/) Where a vendor undertakes to deliver goods in a merchantable con- dition to a certain place, he is only liable for deterioration beyond that //fcc-;- sardi/ caused by the transit {Bidl v. liobisou, 10 Ex. 342 ; 24 L. J. Ex. 16o ; Benjamin, 686, 687). (f) In the absence of an agreement to the contrarj-, a vendor is not bound to send or carry the goods to the vendee (Benjamin, 690). lie is also not liable to the latter for the expenses of carriage, unless he contracts to be so. See Benjamin, Book IV., Part II., Deliverj-. ( /') That is, as to infringements in manufacture or sale. ((/) This had better be limited to infringements with respect to the sale of the articles, and not the manufacture of them. See ante, p. 221. (/*) See note (?>). A covenant against assignment, &c., or sub-licensing, 8—12. 262 LICENCES. Peec. V. Determina- tion by licen- see if patent void or in- Bufficieiit supply. Revocation of licence if payments in arrear or on bankruptcy &c. Remaining clauses. 13, If the said letters patent shall from any cause become wholly or as to some material part of the said invention void &c. \_Pou-er io dctcrnuiio if patent void or ■ijisi{fficic)it suppli/ " in any calendar month aforesaid of the full winimimi quantity of articles as afore&aid^^ using Clause 21 of last Frecedeid^. 14. If for the space of days from the time of delivery (as hereinbefore defined) of any articles supplied to the licensee or his nominees hereunder there shall not be sent or given to the licensor or other person or persons entitled thereto a draft or bill in payment of the prices therefor respectively as aforesaid or if any such draft or bill shall be dishonoured or if the licensee shall make default &c. become bankrupt &o. then the licensor at any time thereafter &c, [Use Licence III., a)ite^. [^For the remainincj clauses as to the undertahing to produce the letters patent, i^r., Arbitration Clause, and Transmission Clause, refer to last Precedent.'] In witness &c. (/). The Schedule. is not inserted, as being too restrictive of trie right of the licensee under Clause 3 to nominate persons to take goods direct from the licensor, &c., and ■would hamper him in the sales. A covenant by licensor not to sell or grant other licences appears in Clause 3. A covenant as to imi^rovcments, &c., seems unnecessary. See ante, p. 221, as to licences merely to sell the patent articles. (/) The licence should ho registered. See note {I) to Licence I., ante. For a clause as to service of notices, use 6p. CI. 51, ante, p. 242. LICENCES. 263 VI. Pbeo. VI. LICENCE to a Firm to manifactuke at oavn "Works ami {subject to Rfservation to [/rant lA'siiTED KUMBER o/Selling ticciwcs) to SELL t/ie 2)ate)tt articles within a district — Hents and Royalties on Sales, or at option of Licensees both on Manu- factures and Sates — J)'£.h\\Y.\i\ of articles to Sdb-licensees to he deemed Sales. THIS INDENTUEE made &c. Between A. B. of &c. (herein- after called "the licensor") of the one part and C. D. and E. F. carrying on the bnsiness of &c. at &c. as co-partners under the firm of &c. (hereinafter called " the licensees ") of the other part : Recitals. AViiereas by letters patent &c. \_Grant~\ : And whereas the Grant, licensor hath agreed to grant the licensees a licence to use the said Agreement invention at their own works at R. aforesaid and to sell the for licence. 's manufactured by them thereby within the counties of &c. subject to the reservations and upon the terms hereinafter appear- ing : NOW THIS INDENTURE WITNESSETH that in consideration of the royalties and rent hereinafter reserved and the covenants and agreements on the part of the licensees herein- after contained the licensor doth hereby grant unto the licensees and their assigns the full sole and exclusive liberty right licence power and authority to make use and exercise the said invention and manufacture 's according thereto at their works at R. aforesaid but not elsewhere and also to sell the so manu- factured within the counties of &c. (hereinafter called " the said district ") : Excepting and Reserving unto the licensor and his assigns the right within the said district (but not to the exclusion of the licensees or their assigns) to grant licences [a) to any persons firms or companies respectively to sell the said 's but so that not more than six in number of such licences shall be subsisting at the same time : To have hold exercise and enjoy the said licence and premises unto and by tlie licensees and their assigns for and during all the residue &c. \_As in last Precedent'] but so long only as the licensees or either of them or their or his assigns shall cither alone or in co-part ner^]lip with any oilier person or persons continue and carry on the business of &e. at the said works at R. under the firm of &.c. : And the (a) See Clause 18. 264 LICENCES. Peec. VI. The term " licensees" to include assigns as aforesaid. Royalties half-yearly on articles sold. Average clause. Licensees may A'ary above royalties by paying both as to manu- facture and sale. Proviso that articles un- sold at end of licence be treated as sold and bear royalties accordingly less discoimt. Delivery of articles to sub-licensees to be deemed a sale. LiCEXSOR dotli hereby covenant &c. [^Qualified coiriiaiifs as to validity of patent and right to qrant as in Licence II., ante'] : AND THIS JNDENTUEE ALSO WITNESSETH that in consideration of the premises it is agreed and declared as follows : — 1. The said term " the licensees " shall also be applicable herein as far as can be to the survivor of the said C. D. and E. F. or other the persons or person for the time being constituting the said firm carrying on the said business at Ji. {b). 2. The licensees shall during the continuance of this licence subject to the provisions of the next two clauses respectively pay to the licensor half-yearly on every day of and day of • for every manufactured by them hereunder and in the half-years then ending respectively sold by them the royalties mentioned in the first part of the schedule hereto according to the size and description of the 's so sold {(■) and also such further sum (if any) as together with the said royalties shall amount to the sum of £a (hereinafter called "the rent"). 3. Provided always that if the rent for any half-year shall exceed the royalties &c. [^.s in Clause 2 of Licence IV., ante']. 4 (f/). The licensees may at the end of each half-year without giving any previous notice to the licensor of their intention so to do (but so as not thereby to reduce the rent) vary the amount of royalties in respect of any of the articles aforesaid not being less than in number then in their possession and unsold by debiting themselves therefor in the accounts for such half-year with the royalties in this behalf mentioned in the second part of the schedule hereto and so that at the end of any succeeding half- year in which the same articles shall be sold they shall debit them- selves therefor in the accounts with the further royalties in this behalf also mentioned in the second part of the said schedule : Provided always (e) that at the end ot sooner termination of this licence all articles in the possession of the licensees not then already sold whether actually manufactured or only in course of manufacture shall bear the royalties which would respectively become payable by virtue of this clause or Clause 2 as if the same had been actually sold less however a discount of per cent. thereof. 5. All articles delivered or sent by the licensees to any of their sub-licensees according to the terms of their respective sub-licences shall for the purposes of this licence be considered as having been actually sold by the licensees at the respective times when the same shall have left their said works in the possession of or to be delivered to such sub-licensees respectively. And the licensees shall accordingly pay in respect of such articles the royalties pro- {b) As to covenants binding assigns, see ante, pp. 185, 186. (c) As to royalties on sales, see ante, pp. 203, 228. (d) As to this clause, see ante, p. 204. (e) See p. 203, ante, as to this proviso. LICENCES. 265 vidcd by Clause 2 or (as the case may require) Clause 4 to be paid Tbec. VI. in respect of sales less a discount of per cent, thereof (./"). 6. The licensees shall keep at their works at II. aforesaid all Accoimts proper books of account &c. [Use Licence /., icit/i the addition from ^^^^'^^^^^ Licence II., as to verif cation of statenn'nt.s']. tc. \_Fo)- oiJier clauses not inserted or provided for liercinofter, see Clauses Licences I. — IV., ante ; and also refer to '^ List of Ordinary Cove- 7—17. nants;' ante, p. 224, B. II. {g).'] ***** 18. The licensor shall not within the said district during the Cuvcnantby continuance of this licence use the said invention or any invention "tx'usor as to lor the time being subject hereto or grant licences m respect district except thereof except that ho may grant licences to sell but not to manu- as to grant of facture the said articles to such an extent only that there shall not rc'jfenS^^^'^ be more than six in number of such licences subsisting at the power, same time and that the respective licensees thereunder shall be bona fide purchasers from or through the licensor of the articles supplied to them respectively and not his mere agents for the sale thereof respectively whether on commission or otherwise. \_For a mutual covenant as to improrenicnts, ^r. use Licence II.; Rcmaiuing poiccr of revocation [It), use Licence III.; power of determination hi/ clauses. licensees, use Licence IV. {except as to default in supph/ing material) ; acknouledgmcnt, S,r. as to the letters patent, use Licence III; arhitration clause, use Form 24, aide, p. 55 ; andtraiismissioii clause, use Form 25, ante, p. 5G.] In witness, &c. (/). The Schedule. First Fart. Second Fart. (/) As to this clause, see a)de, p. 216. {(j) These may be taken to be eleven in number, namely, covenants by the licensees to use the patent mark ; to manufacture only according to the specification ; to allow inspection of factory; not to assign, &c. (with in-ovisoes granting power to sub-hccnse, and requiring notice of sub-licences as in jAceiice J 11.) ; not to dispute validity of patent ; and to detect infringements and give notice thereof ; and covenants by the licensor to jiay fees and j^cr- form conditions of patent ; to defend i)atent ; to take proceedings for infringe- ments or permit licensees, &c. ; not to amend specification ; antl that there are no other subsisting licences within the district. See the qualification as to " assistance" in Licence III. {It) In the clause conferring this power on the licensor, use, with reference to the bankrujitcy of the licensees, the expression "the licensees or any member or members of the said firm for the time being." (/) The licence should be registered. See note(/) to Licence 1., ante, p. 240. For a clause as to services of notices, use Sjy. CI. 51, ante, p. 242. 2o6 LICENCES, Peec. VII. Recitals. Grant of patent to A. B. Articles of partnership between tlie licensors making the patent an asset of the firm. Agreement to grant the licence. YII. LICENCE icxduHice) for a District at a sum the balance ichercof is pai/abte in five years hij half-yearly Instalments — If any in- stalment in arrcar, final balance^ or any part demanded, at once jxtyable — Payments to cease // Patent void, but to revive if decision overruled — Cesser of Payment to be taken as Damages — ^Assignment /or tJie District, when all Monies paid — Revoca- tion of the Licence if long Default in Fayment or Bankruptcy — Licensee may determine on breach by Licensor (a). [Sale on Hire System.] THIS INDENTURE made &c. Between A. B. of &c. and C. D. of &c. (hereiuafter " called " the licensors ") of the one part and E. F. of &c. (hereinafter called " the licensee ") of the other part : Whereas by letters patent &c. [Grant of patent to A. B.'] : And whereas by articles of partnership dated &c. and made between the said A. B. of the one part and the said C. D. of the other part it was declared (amongst other things) that the said parties thereto should become partners for the term of years from the date thereof in the business of &c. including the manufacture and sale of which might be manufactured according to the said invention : And that the said letters patent and any extension thereof together with the benefit of any improvements made or acquired during the partnership by either party and the letters patent (if any) in respect thereof should be assets of the partner- ship : And that no licence under the said letters patent or any of them should be granted by the said A. B. without the concurrence of the said C. D. {b) : And whereas the licensors have agreed with the licensee to grant to him an exclusive licence within the district comprising the city of in the county of to (a) As to this kind of licence, see ante, pp. 37—39, 208, 209. Compare this precedent with Agreements XL and XII., ar.te, pp. 89, 93, where the sale of the patent is to be for the whole kingdom. {b) In Kenny's Patent ButtonhoJeing Company v. SomervUh and Lutwyche, 37 L. T. 878), Bacon, V.-C, decided that a patent registered in name of one partner only, but t\ hich had become partnership assets, could be worked by the other partner after the chssolution and notwithstanding the assignment thereof by the patentee to a purchaser with notice. LICENCES. 207 tlie extent of miles in radius from &c. to manufacture and I*eec. VII. otherwise to use exercise and vend the said invention and ulti- mately to assign to or vest in hira the patent rights aforesaid for the said district at the price of £.v pavahle by instalments as here- in after provided : NOW THIS INliENTURE WITNESSETH i*< Tcdatum. that in pursuance of the said agreement in this behalf and in con- Grant of sideration of the sum of £h this day paid to the licensors by the c^'lderation licensee (the receipt whereof is hereby acknowledged) and of the of sum paid covenant by the licensee for payment of the sum of £(■ (the balance ^""l covenant of the said purchase-money of £a) by instalments and of other and^other^^^^' covenants and conditions on the part of the licensor hereinafter covenants, contained they the licensors as beneficial owners respectively ac- cording to their respective interests as aforesaid do and each of them doth hereby grant unto the licensee and his assigns the full sole and exclusive liberty licence right power and authority within &c. [the di'ifrict'] to use exercise and vend the said invention : To '^° ^'^^'^ ^^'^ 1IA^■K hold exercise and enjoy the said premises unto and by the ert'ectedlf licensee and his assigns henceforth (as hereinafter provided) until licence not the licensee or his assigns shall become entitled absolutely to the previously said invention and letters patent for the said district unless or until this licence shall previously thereto (if at all) be or become revoked or otherwise determined : And each of them the licensors doth Covenant hereby covenant with the licensee that notwithstanding anything to"i^iiii(iity o^f by him the covenantor done omitted or knowingly suffered the patent. said letters patent are valid and subsisting and not void or void- able : AND THIS INDENTURE ALSO WITNESSETH ^"'^ TedaUm. that in pursuance of the said agreement in this behalf and in consideration of the premises it is agreed and declared as follows : — 1. The licensee shall pay to the licensors the said sum of £c by Covenant by ten equal instalments of £o each that is to say the sum of £d on ^^^^"^^j.^^^^. the day of and day of in every year by ten imif- henceforth until the said sum of £c shall be satisfied commencing yearly iustal- with the day of next but if any instalment shall bo ^"'-''^'•^• in arrear for the space of one calendar month shall on demand in A^.'^,'^'^"^. Avriting pay to the licensors the w^hole or any part of the unpaid arreai- the balance of the said purchase-money including the said instalment licensor may together with interest on the said instiilment at the rate of demand pay- per cent, per annum as from the half-yearly day on which the part of un-' same became due and if the principal sum so dmnandcd shall not paid b:daaeo be paid at the time of demand shall thenceforth pay interest '^"r the dis- licensor &o. \_llere refer to the various coreiiaiits, c^t. in Aasi^jnmcnt ^^^^^' II., ante, p. 139 (/)."] 13. The licensee shall be entitled during the continuance of this Licensee to licence to the sole and exclusive right within the said district to ^'.=^^'^' t-xclu- every improvement or addition to the said invention or new dis- alstVict'^ofTill covery useful for the manufacture of which now is (if at improvementi all) in the knowledge and possession of or which hereafter may be f'^- ''^^'^^ ^y made by the licensor as if the same were part of the said invention '^'^^^°'"- and if he shall become entitled to an assignment for the said district of the said invention and letters patent as herein provided shall also be entitled to an assignment at his own expense for the said district of the letters patent (if any) which may be granted to the licensor in respect of every such imj-jrovement addition or dis- covery whether made during the continuance of this licence or afterwards and the said assignment shall contain (amongst other provisions or clauses) covenants by the licensor &c. \_IIere refer to the various covenants, i^~c. in At^signment II., ante, p. 139]: Provided Notice to La ALWAYS that the licensor shall from time to time after making any qiven to such improvement addition or discovery to the benefit of which the anr^hnt^rove- licensce shall become entitled as aforesaid forthwith give notice mJnt J>:c. and thereof in writing to the licensee and as and when reasonably explanation required by him and at his expense as to actual costs (if any) out ^ "^"^ *^ • of pocket occasioned thereby communicate and explain to him or his agents such improvement addition or discovery. 14. If any principal sum payable hereunder by the licensee shall I'o^er to remain unpaid for the space of calendar months after the [t^my^ monies' time when the same became due (whether the same shall be long "in arrear demanded or not) or if the licensee shall while any principal or licensee monies aforesaid shall remain unpaid become bankrupt or commit rupt™ c any act of bankruptcy whether available for adjudication or not then the licensors may by notice in writing served on the licensee or his trustees in bankruptcy (if any) revoke this licence but such revocation shall be without prejudice to the recovery by the licensor of any monies then already due or to any right of action by either party for past breaches accrued hereunder [g), lo. If the licensors shall commit a breach of any covenant Power for herein contained and on their part to be performed or observed and I'^euseo to (in the case of a breach capable of being made good) shall for the i.reach by space of days after they shall have been served with a licensors, notice in writing by the licensee to make good the said breach (/) A3 to the expediency of sucli an assignment, sec ante, pp. 91, n., HI. {(j) By the Apportionment Act, 1870 (33 & 3-i Vict. c. 3"ce. agreement in this behalf and in consideration of the premises and also of the covenants and conditions on the part of the licensee hereinafter contained and to be performed and observed by him the licensor as beneficial owner doth hereby grant unto the licensee and his assigns the full sole &c. \_To end of the hahendum^ as in Licence III.^ : And the i.icexsou doth hereby covenant with the Covenants as licensee that nothwithstanding anything by him the licensor done to validity of omitted or knowingly suffered the said letters patent are valid and ^^\*j" t^ "^ grant. {a\ The Apportionment Act, 1870 (33 & 34 Vict. c. 35, ss. 1 , 2), however, provides for such an apportionment. Pec a precedent of such a bond, ^^-s^, p. 294, MiS':. Free. 272 LICENCES. Peec. VIII. subsisting and not void or voidable : AND THIS INDENTURE ALSO WITNESSETH that in pursuance of the said agreement in this behalf and in consideration of the premises it is agreed and declared as follows : — Lircncoto 1. If the Said letters patent shall daring the life of the licensor expire if r^^^^^ ^]^q continuancB of this licence become from any cause what- pa_«ii ecome ^^^^^^ -^yholly or as to some material part of the said invention void subject however to the judgment (if any) on appeal which shall reverse the judgment (if any) revoking the said letters patent to the extent aforesaid this licence shall thereupon absolutely cease but without prejudice to the recovery by the licensor of any monies then already due under the said bond or to any right of action by either party for past breaches accrued hereunder {h) . or 2—11 Clauses [For Clause 2, as to nsc of ixitcnt tnarlc, see Licence II. ; fc Clauses 3 — 10, as to not assigning, 8^c. without consent, not disputing the validity of the patent, detecting, i^c. infringements, payment of fees, 8fc., defence of patent and proceedings for infringements, non-amend- ment of specification, no other licences having hee)i granted, non-nser, ^c. u-ithin district, see Licence III. ; and for Clause 11, as to Im- provements, see Licence //.] Power of 12, If any half-yearly instalment of the said annuity or any revocation by pj^j,(- thereof shall be in arrear for one calendar month (whether licensor. ^^^ ^^_^^ ^^ ^^ demanded or not) or if the licensee shall while any part of the said annuity shall remain unpaid become bank- rupt &c. [fJlause 14, of the last Precedent, writing " annuity " for " j)urchase-money," a}id varying the termination tjy writing that such revocation " shall be without prejudice to the recovery &c.," as at the end of Clause 1 hereof] {c). Remaining [For a clausc as to determination hy the licensee on breach by the clauses, licensor, use Clause 15 of last Precedent, but making the variation as last mentioned in the case of revocation by the licensor ; and for a clause as to aclinouiedgmcnt, ^r., use Licence III ; and for arbitration and transmission clauses, use C. F. 24 and 25, ante, pp. 55, ^^^^ In witness, &c. ((/). (i) Whore a licenco had been granted in consideration of an annuity secured by bond, and it was afterwards found that the invention had been in public use before the grant of the patent, unknown to the patentee, when he granted the licence, it was held that the licensee could not recover back the money he had paid on account of the annuity {Taylor v. Hare, 1 Bos. & iPul. (N. E.) 2G0, cited in Agnew, 2:36). As to money paid for a licence not being returnable unless there had been a total failure of the consideration (where unapportionable), see ante. pp. 190, 191. (c) A licensor would not be likely to avail himself of the above power, except in the case of bankruptcy, or his being able to grant a new licence for the district on better terms elsewhere, as the annuity would thereby expire. [d) The licence should be registered. See last note io Licence I. For a declaration as to service of notices, use Sp. CI. 51, aide, p. 242. LICENCES. 273 JX. Thec. IX. LICENCE [exclusive) for the Kingdom subject to prior Licences fixing MINIMUM selling trices of the Patent Articles and to Licensor's rigid to supply some of the other Licensees — Premium jw?V/ — Eoyalties in fixed sums increased to a PERCET^TAGE on selling prices but no Eent — Articles supplied bi/ Licensee to his Sub-Licensees or manufactured h// them to be deemed sold by him at said minimum prices less discount — Licensee ((/' required) to supply the other Licensees and to receive the prices and pay Eoyalties — No sale by Licensee at less than said minimum 2)rices — Sub-Licences to contain certain provisions — Eeduced Eoyalties on unsold articles at end of Licence — Licensor not to engage in adverse business. „ _ ^ Recitals. THIS INDENTUEE made the day of 18— ^^^^^^ ^^ ^^ Between A. B. of &c. (hereinafter called "the licensor") of the patent. one part and C. D. of &c. (hereinafter called "the licensee") of An asri-coraent the other part: Whereas by letters patent &c. [^Grant of patent y,^^;f."f.Vn^ / ^^..-i« 1 L supply a mm and devolution (f any) of title] : And m'hereas by an agreement ^vith the dated &c. mentioned in the First Schedule hereto the licensor has patent agreed to supply E. F. and G-. H. or their nominees (hereinafter articles, referred to as licensees) with articles manufactured according to the jj ^jS^^^ *° said invention to the extent and upon the terms therein mentioned : nianufacture, And whereas by a licence dated &c. also mentioned in the First •Src. Avithin a Schedule hereto the licensor has granted to H. K. the sole and I'^l^'^H .^ exclusive licence within &c. [a certain district] to manufacture reseiT-atioi to articles according to the said invention and sell the same but with licensor pcr- a reservation to the licensor personally or in lieu of him any one J^'^^^^^ °[^**' person or ordinary partnership firm at a time claiming imder hira ncen?eTto by assignment or licence also to sell within the said district articles sell articles in aforesaid which shall bo manufactured and supplied l)y the licensor the district, for this purpose as therein provided: And ^VHKRKAs luider the ^^.J^J'^fy^j^,^ said reservation the licensor has by a licence dated &c. (also ^„".]i reserva- mentioued in the First Schedule hereto) licensed the firm of &c. tion. to sell the said articles within the said district : And whereas the That tlic^said said agro(>inont and licences respectively contain provisions fixing ",^7icences sucli minimum jn'ices at which the respective licensees thereunder fix same may sell the said articles as are mentioned in the Second Schedule miuinium_ •^ selling prices M. 1' of the articles. 274 LICENCES. Peec. IX. licreto : And whereas the licensor lias ao:reed in consideration of Agreement to grant this licence subject as aforesaid. First Testatum. Grant of exclusive licence for the Kingdom in consideration, of a premium and royalties, &c. Reserving licensor's right to maniifactore and supply to his selling licensees aforesaid. But subject to said agree- ment and hcences, and free from the reservation in the first licence. Covenants as to validity of patent and right to grant. Second Testatum. Royalty of shillings I)er article and further sum up to a percentage of selling price of each article, paid half-yearly. Proviso that articles sui^plied by licensee to his selling sub- licensees shall the sum of <£- to grant to the licensee the sole and exclusive licence to use the said invention within the United Kingdom and Isle of Man subject to the said agreement and licences and other- wise upon the terms hereinafter appearing. NOW THIS INDENTURE WITNESSETH that in consideration of the sum of £ this day paid to the licensor by the licensee (the receipt whereof is hereby acknowledged) and of the royalties herein- after reserved and the covenants or conditions on the part of the licensee hereinafter contained the licensor doth hereby grant unto the licensee and his assigns the full sole and exclusive licence liberty right power and authority within the United Kingdom and the Isle of Man to use the said invention and manufacture articles thereunder and to sell the articles so manufactured [a) : Excepting AND RESEiiviNG uuto the liccusor and his assigns the right to manufacture articles as aforesaid for the purpose of supplying the same to the resj)ective licensees under the said agreement dated &c. and licence dated &c. and to supply the same respectively accordingly : To have hold exercise and enjoy the said licence and premises hereby granted unto and by the licensee and his assigns &c. \_To end of the hahenduni] subject to the said agreement and licences mentioned in the First Schedule hereto or any licence to be granted in pursuance of the said agreement but free from the reservation aforesaid contained in the said licence dated &c. : And THE licensor doth hereby covenant with the licensee that not- withstanding anything by him the licensor done &c. [^Covenants as to valid it 1/ and rigid to grant as in Licence //.]. AND THIS INDENTURE ALSO WITNESSETH that in pursuance of the said agreement in this behalf and in consideration of the premises it is agreed and declared as follows : — 1. The licensee shall during the continuance hereof pay to the licensor half-yearly on every day of &c. &c. the first whereof being the day of next a royalty of shillings in respect of the sale by the licensee within that period of each article aforesaid manufactm-ed by him hereunder and a further royalty so as to make up a total royalty equal to per cent, on the selling price thereof if the first mentioned royalty shall be less than such percentage {b) : Provided always that all articles aforesaid delivered or sent by the licensee to any of his sub-licensees according to the terms of their respective licences shall for the purposes hereof be considered as having been actually sold by the licensee at the minimum prices aforesaid mentioned in the Second Schedule hereto less a discount of per cent. (a) A right to manufacture includes a right to sell the patent articles {Thomas \. Hunt, 17 0. B. N. S. 183). (b) The two following provisoes can, of course, be omitted, if si)ecial royalties are placed on the articles siq^plied to or mamifactured by the sub-licensees. In that case no violation of language as to the term "sale" need be caused. See ante, p, 21G. As to allowances for bad debts, see Sp. CI. 17, ante, p. 232. LICENCES. 275 thereon at the respective times when the same shall have left any Peec. IX, place of manufacture or Lusiness of the licensee in the possession be treated as of or to bo delivcicd to such suh-liccnsees respectively: Pkovideu sold at said ALSO that all articles manufactured as aforesaid by an v sub-licensees "".""""m of the licensee sliall for the purposes hereof be deemed articles sold aiscoimt. by the licensee at the time of completion thereof at the minimum Further prices aforesaid less a discount of per cent, thereon. proviso that 2. The licensee shall within ■ weeks after the receipt by ^'anuiacTur'^l him from the licensor of a notice in writing requiring him so to do by manu- undcrtalce to the extent of the terms of such notice the obligations facturing aforesaid of the licensor for the supply of and shall sujiply articles be^^ec'iner'^'' aforesaid to the licensees under the said agreement dated >^^ rent^ ^'^ ^» ^P- 01^ 14, ante, p. 231] (g). of proceedings for infringe- [For Clauses 12 — 14, as to iwn-amendment of specification, no ™^^ ■ other licences subsisting, and non-user Sfc. uithin district, nse Licence 12—14. III-^ f'"^C-] ***** Improve- 1,5. The licensor shall dming the continuance of this licence Hcensor to be" ^^^® Written notice to the licensees at the earliest opportunity of included in every improvement in or addition to the said invention or mode of this licence. (/) As to the terms to be inserted in sub-licences, when the express power to grant them is conferred, see ante, pp. 215, 216, and Sp. CI. 33, ante, p. 237. (g) In Henderson v. Moshjn Copper Co., L. E. 3 C. P. 202, it was held that reasonable notice that an infringement had taken place is necessary, in order to enable the patentee [or licensor] to take proceedings, and that reasonable time was necessary for completing the proceedings. LICENCES. 281 working the same or any discovery useful therefor that he may Frec X. invent ascertain or make and be entitled to communicate and at the cost of the licensees as to journeys and other expenses (if any) out of pocket occasioned to him tliereby and at such remuneration (if any) as the directors of the licensees may think fit to award him therefor communicate and explain to the manager or otlior agent or agents of the licensees or any workmen of theirs as and when reasonably required the nature of such improvement addition or discovery so as to enable them or him to make full and effective use of the same and permit the licensees to have the use thereof (whether it shall be or become patented or not) subject as nearly as can be to the covenants and conditions herein contained as if such improvement addition or discovery were part of the premises. 16. If the said letters patent shall from any cause whatever Dotcnnlna- become wholly or as to some material part of the said invention {1"^^^^^ ^ void (notwithstanding that any judgment in revocation of the said patent void or letters patent to the extent aforesaid shall or shall not be appealed breaches by against (//) ) or if the licensor shall commit a breach of any of his licensor, obligations hereunder other than in respect of commencing or carrying on proceedings for infringement as aforesaid and (where the breach is capable of being made good) shall for days after he shall have been served with a notice in writing requiring him to make good the same omit so to do or shall commit or suffer any breach of his obligations imder Clause 11 hereof in respect of commencing or carrying on proceedings for infringement and shall not make good such breach before the time when the licensees shall first become entitled to withhold or suspend pa}^- ment of royalties or rents as provided by the same clause then the licensees may by notice in writing served on the licensor at any time thereafter but in the case of any such last mentioned breach only before the same shall (if capable thereof) be actually (if at all) made good determine this licence forthwith but such deter- mination shall operate without prejudice to the recovery by the licensor of any rents or royalties then due or to any right of action by either party then accrued hereunder and in case of such deter- mination the said rents shall be apportioned (if necessary) for the period less than a half-year which may have elapsed between the day of such determination and the end of the half-year last previous thereto (/). 17. If any royalties rents or other sums payable hereunder or Revocation if any part thereof respectively shall be in arrear for two calendar ^^^^^^£.^0^ J^j^. months whether demanded or not or if the licensees or any of pauy wound their assigns being a company shall commence to be wound up on up, &c. account of their inability (as defined by section 80 of the Com- (A) Use ('('ause 2 of Licence VIZ., ante, if tliouglit fit as to tho suspense of roj-alties during appeal. If such, bo intended, omit tlic matter in tho brackets as to appeal. See ,S^*. CL 19, as to payment to trustoe.s during proceedings. ()■) Tho Apportionment Act, 187U {\i3 & 31 Vict. c. 3o, ss. 1, 12), however, proYides for such an apportionment. By sect. 2, tho timo for pajmient of tho apportioned part would not bo accelerated, but would be the same as fixed for the payment of the ontiretj'. 282 LICENCES. Peec. X. Acknowledg- ment and imdertakiDg' as to the letters patent. Notices how served. Transmission clause. Arbitration clause. panies Act 1862 or any statutory modification thereof for the time being) to pay their debts (» or being a company or in- dividuals or an individual shall not commence their or his business in relation to this licence within calendar months from the date hereof or (being assigns aforesaid) shall not commence their or his said business within the like period from the date of the assignment to them or him of this licence or being a company or individuals or an individual having commenced their or his said business shall for any period of calendar months consecu- tively cease practically to carry on the same or being individuals or an individual shall become banki'upt or commit an act of banki-uptcy whether available for adjudication or not or_ if the licensees or their assigns shall make default in any obligation hereunder other than in respect of the payment of moneys and (in the case of a breach capable of being made good) shall for the space of days after they shall have been served with a notice in writing by the licensor to make good the said breach neglect or omit so to do then the licensor at any time thereafter [and notwithstanding any merely implied waiver by him of his right so to do] may by notice in writing served on the licensees or their assigns or their liquidator liquidators or the trustees or trustee in bankruptcy as the case may require revoke this licence forthwith but such revocation shall operate without prejudice to the recovery by the licensor &c. [^.s in lad clause, but ming " revocation " for " determination."] 18. The licensor hereby acknowledges the right of the licensees to production of the said letters patent &c. \_Use Licence III.., ante, ]). 25-3.] 19. Any notice intended to be given or served hereunder on the licensees being a company shall be effectual if served according to the provisions (if any) as to services of notices in its articles of association but in any other case any notice intended to be given or served hereunder &c. [Sp. CI. 51,7;. 242, ante.'] 20. Unless when the context requires a different construction the term " licensor " herein shall include the assigns of the person so designated and the term " licensees " herein shall include the assigns of the company so designated. 21. If any difference shall arise &c. [^Arbitration Clause, Form 24, ante, 2). 55.] In witness &.C. {/>). The Schedule. (/) Sect. 80 of the Companies Act, 1862 (25 & 26 Vict. c. 89) in effect declares that this inability shall he deemed to arise when the company, after service of notice, neglects for three -weebs to pay or secure or compound for any debt exceeding oOJ. ; or if execution or other like process in England or Ireland issued on the judgment, &c. of any Court in favour of a creditor is returned unsatisfied ; or the inducico of a charge for payment on an extract decree, &c., have expired without payment being made; or whenever it is proved to the Court that the company is unable to pay its debts. See Buckley's notes to this section. {k) The licence should be registered. See note (1) to Licence I., ante, p. 246. LICENCES. 283 XI. Pbec. XI. LICENCE {exclusive) for England, Wales, and Isle of Man— Royalties and Rent — Royalties on JIanufaciares b// Licen- see a)id /lis SuH-LiCENSEES, and also on Articles authorized to be SUPPLIED 15Y HIM ABROAD — RESERVATION to LicCHSOr ttS to Existing Orders and Foreign Customers, and the supply- by HIM to the Licensee for the First Year of Articles to be sold on Commission. THIS INDENTURE made &c. Between A. B. of &c. (herein- after called " the licensor ") of the one part and C. D. of &c. (hereinafter called " the licensee " of the other part : Whereas Ea-itah. by letters patent &c. [^;/;. 49, 50] : And ^VHEREAS the licensor has Grant of agreed to grant the licensee a sole and exclusive licence to use P|^teut and the said invention for the countries of England Wales and the iiceuce. Isle of Man with the reservations and upon the terras hereinafter appearing. NOW THIS INDENTURE WITNESSETH that Fi>st in consideration of the royalties and rent hereinafter reserved and Testatum. the covenants and conditions on the part of the licensee hereinafter exclusive contained the licensor doth hereby grant unto the licensee the full licence for sole and exclusive licence right power and authority to make use England, exercise and vend the said invention and manufacture jgj^ of' Man according to the specification thereof and also to sell the so manufactured within the countries of England Wales and the Isle of Man (hereinafter called " the said district ") : Excepting Reservation AND reserving uiito the licensor and his assigns the right to to licensor for manufacture the like articles according to the said specification at existiuo-° the works of the licensor at aforesaid or other works (if orders and for any) of his for the time being in execution of all orders already f."i'l^_\^'"\= , received by liim for the supply of such articles to persons in the tomers. said district and of all orders already or which hereafter may bo received by him for the supply of such articles to persons in any part of the world outside the said district and for the supply of the like articles to the licensee for the space of one year from the date hereof to be sold by him upon commission as hereinafter pro- vided (r/) : To HAVE hold exercise and enjoy the said licence and premises unto and by the licensee and his assigns &e. \_To end of the (a) The licensee is to bo supposed not to be ready with the requisite plant, &c. See Clause I. 284 LICENCES. Peec. XI. Covenants as to validity and right to grant. Second Testatum. Covenants and con- ditions. Licensee to commence manufacture, and purchase plant, &c. necessaiy. Royalties on articles manufactured by licensee or his sub- licensees. But a fixed half-yearly rent. Average clause. habendum, and iJicn insert the covenants (qualified) as to the validity of the patent and riqht to qrant\ AND THIS INDENTURE ALSO WITNESSETH that in consideration of the premises it is declared as follows : — 1. The licensee shall witliin calendar months from the date hereof commence the manufacture of according: to the said specification at his works at Licensor to supply articles for one year to be sold by licensee on commission. Expenses of carriage, &c. Licensee on notice to supply foreign cus- aforesaid and accordingly shall purchase all necessary plant machinery fixtures utensils and other effects sufficient and suitable for the manufacture to the best advantage of at least of the said articles half-yearly and shall set up the said effects at or place the same in the said works and shall at all times during the continuance of this licence keep the same in good working order and condition and supply all deficiencies therein respectively, 2. The licensee shall during the continuance of this licence pay to the licensor half-yearly on every day of and day of for every maniifactured by the licensee and his sub-licensees respectively hereunder in the half- -years then ending respectively a royalty of shillings and in case the total amount of royalties for any such half-year shall not amount to the sum of £a (hereinafter called "the rent") then such further sum in addition to such total amount of royalties as will equal the rent : Provided always that if the rent for any half-year aforesaid shall exceed the total amount of royalties for the same period the licensee shall be entitled for any one or more succeeding half-year or half-years (so far as necessary for the purpose) to a remission of so much of the latter excess as will make up to him the excess of payment made in the half-year for which the rent shall have exceeded the royalties due therefor as aforesaid. 3. The licensor shall supply and the licensee shall receive from him during one year from the date hereof all such articles manu- factured by the licensor under the reservation hereinbefore con- tained not being less than in number per calendar month which the licensee shall sell in the usual way of business and for the sale whereof he shall be entitled by way of commission to debit the licensor in the half-yearly accounts embracing the periods of sale thereof respectively with sums amounting to ■ per cent. of the selling prices thereof which prices shall be in accordance with the lists of gross prices for the time being exhibited or pub- lished by the licensor or such other prices as the parties hereto may agree upon : Provided always that in taking any such half- yearly account in respect of articles supplied by the licensor and sold by the licensee as aforesaid all expenses (if any) of carriage or delivery of the articles from the works of the licensor to the licensee paid by the latter shall be credited to the licensor ih). 4. The licensee shall after the day of as and when required by the licensor in writing so to do manufacture or supply articles aforesaid for the licensor for the purpose only of his (the (?)) As to delivery of goods, risks of transit, deterioration, and expenses of carriage, see notes (c), (fi), and (e), to Licence V., ante. LICENCES. 285 licensor's) supplying the same to any of his foreign or colonial Teec. XI. customers not exceeding however in number per week tomersof unless the licensee being requested by the licensor so to do shall liceasor. be willing to manufacture or supply any larger quantity and shall ^™^^f^j be entitled to charge the licensor for the said articles prices equal iiJ|!^^or ° to per cent, of the usual list or gross prices for the time according to being of the licensor charged by him to customers in the particular 1"^ "suul countries to which the said articles are intended to be exported ^Ccount^ less (as to such last mentioned prices) the usual deductions allowed by the licensor and all such articles shall at the expense of the licensor be delivered free on board ship at such ports in England as the licensor shall direct : Provided always that the licensor But amplo shall give the licensee one week's previous notice in writing for the 1J°^^'J^''^^° supply of any such articles as last aforesaid where the quantity flceusee. required at any one time is to be more than but not more than in number and where the quantity is to exceed the latter amount shall allow days extra for any excess up, to in number and so on proportionately for any further excess: Provided also that the licensee shall not without the But licensee written consent of the licensor either directly or indirectly manu- J^J^^^.^^.-^ facture or supply any articles aforesaid for the use of any person supply articles or persons residing or for the purpose of transmission out of the for abroad, district. 5. Each party lioreto shall during the coutinuance hereof keep Each party at his usual place of business all proper books of account and make ^ Ij^^J^^'J^'^ true and complete entries therein at the earliest opportunities of all aiiow^nrpec- particulars necessary or convenient for any of the purposes hereof tion, &c. of all transactions relating to the manufacture or sale by him of the said articles as aforesaid including as to the licensee the manu- facture thereof by liis sub-licensees (if any) and produce the said books so to be kept by him to the other of tliem or liis agents or agent at all reasonable times for inspection and the taking copies or extracts therefrom and at his own expense obtain and give to the other of them or his agents or agent all such information as to any item or matter contained or wliich ought to bo contained therein as shall be reasonably required. 6. The licensee sliall at the end of each lialf-ycar aforesaid deliver Delivery of or send to the licensor a statement in writing of all particulars of JJ^Slon account between him and the licensor hereunder for the same half-year and shall if and when required by the licensor but at the expense of the latter verify or procure some fitting person in his employ to verify each such statement or any part or parts thereof by statutory declaration. 7. Each article manufactured l)y either party as aforesaid shall ::V^5i'^J'"'j *^j^^ as soon as manufactured bear a metal plate [or " label," or ^r.] ^^.^Icntvolik. furnished by the licensor and shall bear a number designating tlie actual number of such articles then completed by him of which such article shall be the last completed and also an inscription and mark of the kind shown in the margin hereof as applicable to such party or such other inscription or mark as the licensor in order to avoid infringement of the trade mark of any other person may 286 LICENCES. Peec. XI. think fit to adopt and he shall not retain or sell or part with the pos- ' session of any such article withont the said plate [or " label," or (^T.] being placed thereon and the licensee shall on each half-yearly day aforesaid or within twenty-one days thereafter pay or account for to the licensor for the said plates [or •' labels," ^t.] so furnished to him in the half-year then ended at the rate of shillings per dozen including the costs of carriage and delivery thereof and the licensor shall execute all orders of the licensee for the supply to him thereof with all reasonable dispatch [c). Each party g. Either party hereto or his agents shall be at liberty at all factorieT^&c i^easonable times during the continuance of this licence and for the of other ' space of ouc calendar month after the same shall be determined or party. revoked to enter any place of the other party where the manu- facture or sale of the said articles shall be carried on and inspect the same for the purpose of ascertaining the state or extent of such manufacture or sale and that all covenants by the other party hereunder have been or are being duly performed or observed and for finally winding up all accounts between the parties. ^ 9^ '^ Tff 'ff Clauses 9— IG. \_For Clause 9, as to mannfadure by the licensee only according to the specification, use Licence II., ante ; and for Clauses 10 — 16, r/.s to non-assignment, ^e. without consent, and express piower to grant sub-licences, including the provisoes (d), and as to not disputing the ralidity of the patent and detection, 8fc. of infringements, and assisting licensor, as to payment of fees and performance of conditions of patent, defence of patent and talcing proceedings for infringement, non-amend- ment of the specification, and no other licences having been granted, nse Licence III, ante, p. 251.] ***** Non-user, 6cc. 17. The licensor shall not during the continuance of this licence ^■^th'^^^d'^t ■ 't ^^^®P^ ^s i^ hereinbefore provided use or authorize any other except as pro- pcrson to use the said invention within the said district, vided. 18. The licensor shall not within the said district during the Licensor not continuance of this licence except according to the reservations like^utmes^ hereinbefore contained either alone or in partnership &c. \_Sp. CI. except under 47, ante, p. 241]. therescrva- IQ^ Each party hereto shall during the continuance of this ions erem. ^^(^^^(^q ^q [Mutual covenant as to i)nprovements, ^'c, as in Licence II., noents by' ante, p. 249, omitting any reference to " assigns," but stating at the either party end thereof that any improvement, Sfc. if made, Sfc. by the licensee, to te for u gi^r^ii ]3e used by the licensor as to the said district to the extent both. only of the reservations hereinbefore contained as if the said improvement addition or discovery were part of the said inven- tion"]. (c) For other clauses relating to use of a patent mark or die, see Sp. CI. 23—27, ante, pp. 234—236. ((Z) As to the terms to be inserted in sub-licences, see ante, pp. 215, 216, and Sp. CI. 33, ante, p. 237. LICENCES. 287 [For Clame 20, r^s to revocation of the licence, use Licence ITT., Peec. XI. ante, p. 252 ; and for Clause 21, as to the determination of the licence Remaining 1)1/ the licensee if patent void or breaches, S^c, use Clause 19 of clauses. Licence IX., ante, p. 277 ; and for Clause 22, as to achnouledgment, 8fc., use Licence III; and for a rljit ration and transmission clauses, me C. F. 24 and 25, ante, pp. 55, 5G.] In witness, &c. (e). The Schedule. (e) The licence should bo ro^^istered. See last note to Licence I., ante. For a clause as to service of notices, use Sp. CI. 51, ante, p. 242. 288 LICENCES. Peec. XII. XII. It cc it ah. The licence. Agreement for siib- licouce. First Testatum. Grant of sub- licence at royalties for a term of SUL-LICENCE (exclusive /or a District at Royalties (a)). THIS INDENTUEE made &e. : Between A. B. of &c. of the one part and C. D. of &e. of the other part : Whereas by a licence under seal dated &e. and made between X. Y. (therein and herein- after called "the licensor") of the one part and the said A. B. (therein called "the licensee") of the other part the licensee is entitled to the sole and exclusive licence to use within &c. \^t/ie district'] the invention mentioned together with the letters patent in respect thereof in the Schedule hereto and also every improve- ment in or addition to the said invention or new discovery useful for the manufacture of made or acquired by the licensor for the residue of the term of fourteen years from the day of 18 — comprised in the said letters patent and any ex- tension thereof subject to the rent and royalties payable half-yearly on every day of and day of and to the covenants and conditions on the part of the licensee therein contained and to be performed and observed by him (h) : And •whereas the said A. B. has agreed to grant to the said 0. D. a licence to use the said invention and all improvements additions or discoveries aforesaid within the town or district of &c. in the county of as hereinafter defined for the term of years from the date hereof if the said licence shall so long subsist upon the conditions hereinafter appearing. NOW THIS IN- DENTUEE WITNESSETH that in pursuance of the said agreement in this behalf and in consideration of the royalties hereinafter reserved and of the covenants and conditions on the part of the said C. D. hereinafter contained he the said A. B. doth («) Wtere the licence gives an express power to grant sub-licences, con- taining prescribed terms, reference should be made to pp. 215, 216, ante, (Express power, &c.), and Sp. CI. 33, ante, p. 237. See also p. 214, ante, as to sub-licences generally. (h) Where the licence prescribes some of the teims to be inserted in sub- licences, it may be well, unless brevity is desired, to recite these terms, as to which see pp. 215, 216, aide, and Sjy. CI. 33, ante, p. 237. The above recital might then be extended by adding, " and in particular to a covenant that the licensee will &c. and to a covenant that " &c., &c. LICENCES. 289 hereby grant unto tlie said C. D. (r) the full sole and exclusive Phec. XII. licence liberty right power and authority within the town of years if the in the county of and also to the extent of a radius licence so long of miles from &c. (hereiuafter called "the said district") subsist. to use the said invention and any other invention for the time being comprised in the said licence dated &c. and to manufacture articles thereunder respectively and to sell the same so manu- factured: To HAVE HOLD exercise and enjoy the said licence and premises hereby granted unto and by the said C. I), for the term of years herefrom if the said licence dated &c. shall so long subsist : And the said A. B. doth hereby covenant with tlie said Covenants C. J), that notwithstanding anything by him the said A. B. done [^'J^o^Sity omitted or knowingly suffered the said licence dated &c. is now of licence and valid and subsisting and not void or voidable. And that notwith- right to standing anything as last aforesaid he the said A. B. now hath ^''^^^■ power to grant the premises in manner aforesaid (c/). AND THIS Second INDENTURE ALSO WITNESSETH that in pursuance of ^^*'«<'"«- the said agreement in this behalf and in consideration of the pre- ^J^tJ^^J*^' mises it is agreed and declared as follows : — conditions. 1. The said C. D. shall on the day of next (c) Royalties on pay to the said A. B. or his assigns the royalty of shillings manufacture for every article manufactured by the said 0. D. hereunder up to j-eari^days^as that date and shall thenceforth for each half-year ending on the in UcenJe. day of or ■ day of during the con- tinuance hereof pay to the said A. B. or his assigns the like royalty for every article so manufactured in such half-year. 2. The said 0. D. shall keep at his usual place of business all Accounts, &c. proper books of account and make true and complete entries therein at the earliest opportunities of all particulars necessary or con- venient for any of the purposes hereof or to enable the said A. B. or his assigns to keep and furnish accounts in respect of this licence in accordance with his covenant in this behalf in the said licence dated &c. contained of all transactions relating to the manufac- ture (./■) of articles by the said C. D. hereunder and shall produce the said books &c. [_i(se Licence /., and f/te pron'ision (/s to re r if cation of accounts in Licence //.]. 3. The said C. D. shall at aU times during the continuance of Sub-licensee this licence perform and observe the covenants and conditions in to perform, the said licence dated &c. as to the use of the patent mark on all c'ovenantTin articles manufactured by him and manufacturing the same only superior licence. (c) The sub-licence is to be supjwsed granted to the sub-licensee only, and not to bis assigns, although there is a covenant not to assign &c. without consent. See p. 214, ante. (d) Ilere add (if thought fit) a covenant not to invalidate the licence, f^' - '^<^^ — »^ (e) That is, not one of the half-yearly days mentioned in the licence. Where the contrary is intended, vary the clause accordingly. (/) The superior licence is to bo supposed to provide for payment by the licensee of royalties on articles manufactured by his sub-liccnsccs. This course is recommended in order to accelerate the settlement of accounts between licensor and licensee, notwithstanding that the licence provides for paj-ment of royalties on articles sold by the licensee. As to this, sec auic, p. 210. 290 LICENCES. To pay the sub-licensor for plates bearing the patent mark Power for sub -licensor to inspect factory. Sub -licensee not to assign, &c. without consent. To give notice of alleged in- fringements and assist in proceedings. Peec. XII. according to tlie specification and not disputing the validity of the said letters patent or other letters patent for the time being com- prised in this licence (g) and shall at all times keep the said A. B. and his assigns effectually indemnified against all damages or costs occasioned by any breach by the said C. D. of this present covenant. 4. The said C. D. shall on the day of next and thenceforth on every half-yearly day aforesaid during the con- tinuance of this licence pay to the said A. B. or his assigns for all plates [or labels or &c.] bearing the patent mark obtained by him or them from the licensor or his assigns and furnished to the said C. D. at the rate of shillings per dozen. 5. The said A. B. and his assigns or his or their agents shall be at liberty at all reasonable times during the continuance of this licence &c. {Jlbcrfy to inspect factor n, as in Licence II., ante, p. 248]. 6. The said C. D. shall not without the written consent of the said A. B. or his assigns assign or mortgage charge or otherwise incumber or grant any sub-licence in respect of this licence or attempt so to do. 7. The said C. D. shall during the continuance hereof use his best endeavours to detect every suspected infringement of the said letters patent or other letters patent for the time being comprised in the said licence dated &c, and shall give the said A. B. or his assigns written notice thereof as soon as the said C. D. shall have suspected and also (if the case) ascertained the same and shall at the expense of the said A. B. or his assigns as to actual disburse- ments (if any) made or liabilities (if any) incurred thereby assist him or them in any proceedings undertaken (unrequested by the said CD.) by him or them in respect thereof as shall be reasonably required (/•). 8. Each ]3arty hereto shall during the continuance &c. [rnutiial covenant as to improvements, as in Licence II, ante, p. 249, tvritincj ^\for the use of both parties hereto or the assigns of the said A. -B."]. 9. The said A. B. hath not heretofore granted for the said district any licence for use of the said invention or any other invention comprised in the said licence dated &c. and shall not nor shall his assigns during the continuation of this licence use the said invention or grant licences in respect thereof or authorize any person or persons whomsoever to use the said inventions or any of them within the said district. 10. The said A. B. or his assigns shall at all times during the continuance of this licence at the request and cost of the said 0. D. commence and prosecute in the name or names of the said A. B, or his assigns or procm'e the licensor or his assigns to commence and prose- cute all legal or other proceedings in respect of any infringement or suspected infringement of the said letters patent or other letters patent for the time being comprised in the said licence dated &c. com- mitted or alleged to have been committed within the said district or at Mutual cove- nant as to im- provements. No other sub- sisting licences and non-user of invention in district by sub-licensor. Sub-licensor or licensor to proceed for infringements at request and cost of sub- licensee, &:c. ((/) Add any other excei^tcd covenants and conditions if necessary. {li) See Clause 10, and note thei-eon. LICENCES. 291 the like cost in cany case where the said A. B. or his assigns shall ho Prec. XII. entitled in his or their own name or names to commence and ' prosecute any such proceedings permit the said C. D. in the name or names of the said A. B. or his assigns so to do (/). 11. If any royalties or other sums payahlo hereunder or any rower of part thereof respectively sliall bo in arrear for twenty-one da3's ^- ^- ^ wliether demanded or not or if the said 0. D. shall commit a breach ISui^in of any of his other obligations hereunder (J) or shall become bank- papiiont of rupt or commit any act of bankruptcy whether available for i-oyiiltiesoron adjudication or not the said A. B. or his assigns may by notice in tanlmi^jtc'^ writing served on the said C. D. revoke this licence without pre- '^ ^^' ^' judice to the recovery by the said A. B. or his assigns of any moneys then already due or to any right of action by either party hereto or the assigns of the said A. B. for past breaches accrued hereunder. 12. The said A. B. hereby acknowledges the right of tlie said Acknowlwlfr- C. D. to production of the said licence dated &c. and to the delivery ^^^^' ^.^- ^^ and right to take copies of the same and undertakes for the safe *^ *^° licence, custody thereof. In witness, &c. (/■). The Schedule. (i) As to legal proceedings wMcli may be taken by a licensee for infringe- ments, -whctlier in his own name or that of the licensor, sec pp. 200, 201, aide. {/) The reference appearing in the other precedents of licences (ante) as to giving notice to make good any breaches, may also be inserted here, if the superior licence does not provide to the contrary. (/i) The sub-licence should bo registered. See last note to Licence /., a7ite, p. 240. For a declaration as to service of notices use Sp. Ch 51, ante, p. 242. xj2 292 LIST OF MISCELLANEOUS PRECEDENTS. ■ — ♦ PAGE I. POWEE OP ATTOENEY to take out a Foreign Patent 293 II. BOND to secure a Life Ani^uity to a Licensor as the con- sideration for the Licence 294 III. DEED OP COMMUTATION of Royalties reserved in a Licence 295 IV. MEMOEANDUM to he notified on Register as to the Eevoca- TION of a Licence 296 Y. NOTICE o/Eeyocatiox of a Licence {ivhere no breach) 296 VI. NOTICE by a Licensee to determine the Licence 297 Vn. NOTICE to MAKE GOOD ft BREACH of Covenant 297 Vm. NOTICE o/Eevocation o/ « Licence for breach o/ Cove- nant 298 IX. NOTICE r/ contents o/ Sub-licence 299 MISCELLANEOUS PRECEDENTS. 293 I. I. POWER OF ATTORNEY to take out a Foreign Patent. p^^. J;; attorney to KNOW ALL MEN by these presents that I A. L. ot cVc. a take out a British subject and the sole and original inventor of an invention forexsjx which I have termed &c. [title of the invention^ a short specahcation whereof is o-iven at the end hereof and which specification is a true copy of the provisional specification furnished by me on my appli- cation at the British Patent Office on the day of last for letters patent in respect of the said invention do hereby APPOINT C. D. of &c. my attorney in my name to apply m the empire of for the grant to me of the sole and exclusive privilec-e and riglit within the said empire to use the said invention and make sell and otherwise deal with all articles and things that can be made by or with the application of the said invention and for the piu'pose aforesaid to prepare or cause to bo preparec all necessary petitions specifications and other documents and (where necessary) to sign or execute the same in my name Tsith all proper attestation and to present the same respectively to the proper officer or officers minister or ministers or lodge the same respectively at the proper office or offices and in my name to pay or contract to pay aU proper fees and charges in connection with the apphcation and to do and suffer all such other acts matters and things as shall by the law of the said empbe be requisite for the above pm-pose in the same manner and to the same extent as far as possible as 1 myself would be enabled or required to do in case I had personaUy made the application and I hereby imdertake to ratify and confirm all acts matters and things which may bona fdc be done or suffered by the said C. D. by virtue of the authority hereby conferred on him and to keep him indemnified against all damage or loss which may be occasioned to him by reason of any such acts matters or things which may bona fide be done or suffered by him as aforesaid. In witness, &c. (r/). The Specification ahove referred to. (a) Tho power wiU, of course, bo executed and attested according to tho law of the Country in which it is to bo executed. Information on this can be obtained at a consulate or tho embassy hero for tho particular country. ^-'^ 294 MISCELLANEOUS PRECEDENTS. 11. II- BOND to secure a Life Annuity to a Licensor as the consideration Bond to secure ^ , , -r • / 7 \ a life annuity M the LwCUCe {b) . to a licensor skierati'onfor ^^^^W ALL MEN by tliGse presents that I C. D. of &c. am the licence. bound to A. B. of &c. in the sum of £ (c) to be paid to liim or his certain attorney or assigns : For ^yHICH payment I bind myself (d) by these presents : 8ealeu with my seal. Dated this day of 18 — : Whereas by letters patent &c. \_Recite grant of patent to A. B.] : And whereas the said A. B. has agreed with the said C. D. for the grant to him of an exclusive licence to use the said invention for &c. [the district'] for the residue of the said term in consideration of these presents being executed by the said 0. D. for the purpose of securing to the said A. B. during his life or until the said licence shall by any means whatever (if at all) other than by effluxion of time become deter- mined : And whereas the said licence is already engrossed and is expressed to be of the above date and to be made between the said A. B. of the one part and the said C. D. of the other part and is intended to be executed immediately after the execution hereof and contains a power to each of them the said A. B. and 0. D. to revoke or determine the same in certain events respectively and also a provision that the said licence shall also become void if the said letters patent shall from any cause become wholly or as to some material part of the said invention void : Now the con- dition of the above bond is that if the said C. D. shall pay to the said A. B. dm^ing his life or until the said licence shall by any means whatever (if at all) other than by effluxion of time become determined an annuity of £ by equal half-yearly payments on the day of and day of in every year commencing with the day of next together with the proper proportionate part of the said annuity for the time (if any) which shall elapse between the last of such half- yearly days and the date of the death of the said A. B. or sooner determination (if any) of the said annuity as aforesaid [e] : Then AND IN SUCH CASE the Said bond shall be void otherwise the same shall remain in full force. In witness, &c. (i) For the form of sucli a licence, see Licence VIII,, ante, j). 271. (c) The penal sum. (d) The heirs are bound, though not mentioned. (Conveyancing Act, 1881, s. 59, Appendix, jjosiJ, p. 381.) Before the Act, the real estate, although bound in the hands of the heir or devisee, could only be reached by an administration action or suit, unless the heirs were expressly named in the bond. Sec 3 & 4 Will. IV. c. 101, and 32 & 33 Vict. c. 4G. (e) The Apportionment Act, 1870 (33 & 34 Vict. c. 35), provides, however, for this apportionment. MISCELLANEOUS PKECEDENTS, 295 III. DEED OF COMMUTATION of Royalties reserved in a Licence (/). -^^JH^^^, ^ . ^ - „ , . mutation of THIS INDENTUEE made &c.: Between A. B. of &c. (herein- royalties after called " the licensor ") of the one part and C. D. of &c. (here- ''^^''^^f ^ * after called "the licensee") of the other part: "Whereas by a ^^^H'-^^i^ licence under seal dated &c. the licensor granted unto the licensee .^^^ ucence. and his assigns the sole and exclusive licence for the term of &c. to use exercise and vend witliin the Idisfricf] a certain invention called &c. for wliich letters patent dated &c. and numbered &c. had been granted unto the licensor and in the said licence were reserved unto the licensor royalties at the rate of shillings for &c. payable half-yearly on every day of and • da}' of and it was thereby provided that at any time from and after the day of 18 — the liccDsee should be at liberty to commute the paj'ment of any future roj^alties aforesaid on his satisfying all previous royalties or other sums then due thereunder and paying to the licensor such further sum of money as therein mentioned: And whereas the licensee hath up to Paymcutof the date hereof duly paid all royalties and other sums due by him gS-'^i^iction of to the licensor under the said licence and also duly performed and other obUga- observed his other obligations under the said licence : And whereas tionsupto the licensor hath agreed with the licensee that all future royalties ^^*°- which might become payable under the said licence shall bo_ com- coS^Sc!^ muted for the sum of £ payable forthwith and in considera- tion of payment of such sum to execute such release as is lierein- after contained. NOAV THIS INDENTURE WITNESSETH ^^'''""""^ that in pursuance of the said agreement and in consideration of the JJjui?e°°4i. sum of £ now paid to the licensor by the licensee (the ties for a sum receipt wliereof is hereby acknowledged) he the licensor doth hereby now paid, release the licensee from the payment of all royalties which might but for these presents become payable hereafter under the herein- before recited licence dated &c. : And the i>tcensor doth hereby Covenant by covenant with the licensee that notwithstanding anything by him ^^^^^^ "JJ ^"^ done omitted or knowingly suffered the said letters patent are patent and now valid and subsisting and not void or voidable and that not- right to withstanding as aforesaid he the licensor hath power to release the l^^^^^^^^ licensee in manner aforesaid from the payment of the said royalties. ^^^'^ In witness, &c. {g). (f) As to commutation of royalties, see ante, p. 207. \g) The deed should bo notilicd on tho register as containing matter affecting tlio legal proprietorship of tlie patent. Sec sect. 23 of the Act of 1883, Appendix, jiost, p. 313. Tho deed is also a variation of tho licence, which, wo may suppose, has been previously registered. release tho ies. 296 MISCELLANEOUS PRECEDENTS. IV. Memorandum to be entered on register as to the revoca- tion of a licence. IV. MEMOEANDTJM to he notified on Register as to the Ee vocation of a Licence. BE IT KNOWN from me A. B. of &c. that the licence dated &c. and made between myself of the one part and C. D. of &c. of the other part granted by me to the said 0. D. of the inventions mentioned together with the letters patent and other patent rights relating to the same in the schedule hereto did on the day of ■ last absolutely determine and that the said inventions letters patent and other patent rights are now vested in me [and my licensees] free from the said licence and any sub-licences granted by the said C. D. and I enter this notification by virtue of Clause of the said agr-eement^- -"-'-^■-^"' As WITNESS my hand this day of 18 — . The Schedule. Y. V. Notice of revocation of a licence (where no breach) . NOTICE o/Eevocation of a Licence {tchere no breach). To C. D. of &c. I HEEEBY in exercise of the power given me by Clause of the licence dated &c. granted by me to you under the letters patent dated &c. and numbered &c. for \iitle of invention^ give you notice that the said licence shall determine and stand revoked as from the day of next. Dated &c. {^Signature]. MISCELLANEOUS PKECEDENTS. ^97 YI. NOTICE by a Licensee to determine t//c Licence. Noticlb' licensee tx) To A. B. of &C. determine the licence. I HEREBY in exercise of the power given me by Clause of the licence dated &c. granted to me by you under the letters patent dated &c. and numbered &c. for [tiile of invention j give you notice that the said licence shall as from the day of next absolutely determine and cease to be binding on me. Dated &c. [SignatKre]. YII. NOTICE to MAKE GOOD (( Bkeacii of Covenant. ^.Totid^to make good a To C. D. of &c. - i'^'^''"^^-^ °/ covenant. I HEREBY give you notice to make good within days from the date hereof the breach committed by you in or about September last of your covenant to &c. Is/iorth/ state nature of covenant'] which covenant is contained in the licence dated &c. granted by me to you under the letters patent dated &c. for \JitIe of invention'] (//). Dated &c. [^Signature']. (/i) See next precedent for a notice of revocation of the Hccnco in conse- quence of the failiu-o to comply with the above notice. 298 MISCELLANEOUS PRECEDENTS. VIII. Notice of revocation of a licence for breach of covenant. VIII. NOTICE of Eeyocation of a Licence for Breach of Covenant. To C. D. of &c. I PIEEEBY give you notice that in consequence of the breach by you in or about the mouth of September last of your covenant to &c. \_here sliorthj siate the nature of the covenant'\ which covenant is contained in the licence dated &c. granted by me to you under the letters patent dated &c. numbered &c. for [title of ■invention'] (/) and of your non-compliance with the notice in writing dated &c. served by me on you by which I required you to make good the said breach within days from the date of such notice the said licence shall determine and stand revoked as from the day next after the date hereof. Dated &c. \_Sign(dure~\. {■i) Omit the reference to the previous notice if inapiilicable. See ante, pp. 218, 219. Por the form of such a previous notice, sec last Precedent. MISCELLANEOUS PRECEDENTS. ^99 IX. NOTICE of Contents of Sub-Licence (y). Notic^f contents of To. A. B. of &C. , 6ub-Ucence. Sir, A. Bh ratcnt— Licence to C. D. {^QU)Sub-Ucence to E. F. The followino- are the short particulars of a sub-licence granted by me on the clay of last to E. F. of &c. [but not to his assigns]. _ ,-, m e IMe (m above), Parties, Self & E. F., Lidnct, the Town of and 10 miles from the Town Hall : To manufacture It/te patent artic/cs'] for years from the same date atthe following royalties payable half-yearly every day ot and day of namely [state the roi/alttes]. The covenants by the sub-licensee are (amougst others) to pay the royalties on the half-yearly days to keep regular accounts and on same days to furnish full statements of manufacture and sales not to assign incumber grant sub-licences in respect of or otherwise part with The possession or control of the sub-licence or attempt so to do to give speedy notice to the sub-licensor of suspected or ascertained infringements of the patent within the district and assist the sub-licensor in any proceedings on account thereof to perform and observe the covenants in the licence to use the patent mark not to dispute the validity of the patent and to manufacture only according to the specification. There is also a Proviso lor revocation of the sub-licence on default for ^^ days in the payment of any royalties or on the breach by the sub-licensee ot any other of his obligations. Dated &c. [Signature']. U) Sco pp. 215, 21G, ante. APPENDIX. 302 TABLE OF CONTENTS. — ♦ — PAGE Statute of Monopolies (21 Jac. I. c. 3) [m jx/r<] .... 303 Patents, Designs and Trade Marks Act, 1883 (46 & 47 Yict. c. 57) . 305 Patents, Designs and Te.uje Marks Amendment Act, 1885 (48 & 49 Yict. c. 63) 332 Patents Act, 1886 (49 & 50 Vict. c. 37) 333 Patents Eules, 1883 335 Pirst Schedule — Fees 344 Second Schedule — Forms 346 Law Officers' Etjles 354 Patents PiTtles, 1885 356 First Schedule— Fees .......... 357 Second Schedule — Forms ......... 358 Priyy Council Eules 362 International Convention 365 Partnership Law Amendment Act, 1865 (28 & 29 Vict. c. 86) . . 368 Conveyancing and Law of Property Act, 1881 (44 & 45 Vict. c. 41) linparf] 369 Conveyancing Act, 1882 (45 & 46 Vict. c. 39) [rnixirt'] . . . . 383 STATUTE OF MONOPOLIES. ^"*^ STATUTE OF MONOPOLIES. 21 Jac. I. c. 3 {in part) {a). An Act concerning Monopolies and Dispensations, with Penal Laws and the Forfeitures thereof. b^-'^- ^^-'^■} 1 All monopolies, commissions, grants, licences, cliartcrs, and letters Monopolies patent heretofore or hereafter made or granted to any person, body J-;^\f^7"i politic, or corporate, for the sole buying, selhng, making, yorkmg, or ^^^.j^ usino- of anything within this realm or the dominion ot )\ ales, or ot any other monopolies, or of power, liberty or faculty to dispense with any others, or to give licence or toleration to do, use or exercise any- thin- ao-ainst the tenor or purport of any law or statute, or to give or nmko any warrant for any such dispensation licence or toleration to be had or made, or to agree or compound with any others for any penalty or forfeiture limited by any statute, or of any grant or promise of the benefit, profit or commodity of any forfeiture, penalty, or sum of money that is or shall be due by any statute before iudo-ment thereupon had ; and all proclamations, inhibitions, restraints, warrants of assistance, and all other matters and things whatso- ever any way tending to the instituting, erecting, strengthening, furthering or countenancing of the same, or any ot tliem, are alto-ether contrary to the laws of this realm, and so are and shall be utterly void and of none effect, and in nowise to be put m use or execution. fi Provided that any declaration before mentioned shall not extend Except letters to any letters patent and grants of privilege for the term of fourteen V^^^J years or under hereafter to be made of the sole working or making o --"- - any manner of new manufactures within this realm to the true and fourteen years first inventor and inventors of such manufactures, whicli others at the or under, time of making such letters patent and grants shall not use so as also they be not contrary to the law nor mischievous to the state, by rais- ing prices of commodities at home, or hurt of trade, or generally m- convenient, the said fourteen years to bo accounted from the date of the first letters patent or grants of such privilege hereafter to bo made, but that the same shall be of such force as they shoidd be if this Act had never been made, and of none other. (a) This Act is rcfeiTcd to in the Jiifroductori/ Chapter, ant,', pp. 2, 3, 11, 304 STATUTE OF MONOPOLIES. Act not to extend to grants, f PAGE 107. Savins' for courts in Scotland 320 108. Siiimiiary proceodingf.s iu Scotland 327 109. Proceedinjj^s for revocation of patent iu Scotland -''27 110. Reservation of remedies in Ireland 327 111. General saving for jurisdiction of courts 327 112. Isle of Man 327 Repeal ; Transit ioiidl Provmons ; Savintja. 113. Repeal and saving for past operation of repealed enactments, &e 328 1 14. Former registers to be deemed continued 328 115. Saving for existing rules 328 1 l(j. Saving for prerogative 328 General Dejinitions. 117. General definitions 328 The FiEST Schedule. — Forms of Application, &c 329 The Second Scuedule. — Fees on instruments for obtaining Patents, and Renewal 329 The TuiED Schedule. — Enactments repealed 3oO 4G & 47 YicT. c. 57. A?i Act to amend and consolidate the Law relating to Patents for Inven- tions, lieejistration of Desiijns, and of Trade Marks. [25th August, 1883.] Be it enacted by tlio Quceu's most Excellent Majesty, by and witli the advice and cousont of tlie Lords Spiritual and Temporal, and Commons, in this present Parliament assembled, and by the authority of the same, as follo"n's : PAET I.— PEELIimfAKY. 1. This Act may be cited as the Patents, Designs, and Trade Marks Short title. Act, 1883. 2. This Act is divided into parts, as follows : — Division of Part I. — Pkelimixary. Act into Part II.— PATE^'Ts. P^'"^- Part III. — Desigxs. Part IV. — Tkade Marks. Part V. — General. 3. This Act, except where it is otherwise expressed {a), shall com- Commence- mence from and immodiutoly after the thirty-first day of December one ment of Act. thousand eight hundred and eighty-tliree. (ff) See the savings in sect. 45 (existing patents) and sect. 113 (repeal of acts). PAET II.— Patents. Application for and Grant of Patent. 4.— (1.) Any person, whctlier a British subject or not, may make an Fersons ap])lication for a patent (/>). entitled to (2.) Two or more persons may ]uake a joint application for a patent, ''|^[^^'^ ^^ and a patent may be granted to them jointly (c). ^ (i) As to who may apply for a patent and the devolution of the right to apply, and as to the joinder of co-applicants by amendment, sec ante, pp. 10, 11. X "3 308 PATENTS, ETC. ACT, 1883. Application and speci- fication. (e) As to the position inlcr se of joint grantees or co-owners of a patent, see ante, pp. 118 ct acq. By sect, o of the Amendment Act of 1885 {post, p. 333), it is declared to the effect that the grant under the Act of 1883 to several persons jointly, some or one of whom only were, was, are, or is the true and first inventors or inventor, was and is lawful. 5. — (1.) An aj)plication for a patent must be made in tlie form set forth in the First Seliediile to this Act, or in such other form as may be from time to time prescribed (<■/) ; and must be left at, or sent by post to, the patent oliiee in the prescribed manner (c). (2.) An application must contain a declaration (/) to the effect that the applicant is in possession of an invention, whereof he, or in the case of a joint application, one or more of the applicants, claims or claim to be the true and fii-st inventor or inventors {(j), and for Avhich he or they desires or desire to obtain a patent ; and must be accom- panied by either a provisional or complete specification. (3.) A provisional specification must describe the nature of the invention, and be accompanied by drawings, if required (A). (4.) A complete specification, whether left on application or sub- sequently, must particularly describe and ascertain the nature of the invention, and in what manner it is to be performed, and must be accompanied by drawings, if required (/). (5.) A specification, whether provisional or complete, must commence with the title, and in the case of a complete specification must end with a distinct statement of the invention claimed (j). id) New forms have been prescribed under P. P. 1883, rr. 6, 8, 9, 10, wliich are now superseded by Forms A and Al [post, pp. 358, 359), under P. P. 1885, rr. 4, 7. {e) See P. P. 1883, r. 19, post, p. 337. (/) This may be either statutory or not as from time to time prescribed (sect. 2 of Act of 1885, 2)ost, p. 332). {g) See note [c) to last section as to sect. 5 of the Act of 1885. The ierm "inventor" includes "importer" from abroad [ante, pp. 2, 10). (A) See a)tte, p. 13, as to the nature of a provisional specification, which is the same as under the late practice, except that it need not be under seal. See present Perm B. {2)ost, p. 360), under P. P. 1885, superseding Form B. under P. P. 1883. As to drawings, see post, p. 338, n. (i) The drawings, if accompanying the provisional specification, need only be referred to, and not accompany the complete siDCcification (sect. 2 of the Act of 1886, 2^ost, p. 333). As to the nature of a complete specification under the late practice, see ante, p. 5. A complete specification need not be imder seal (see Fonn C., 2>ost, p. 360). As to di-awings, see p. 338, n. [j) This claim was not reqnii-ed under the old law. See ante, p. 12, n. (/). Peference of 6. The comptroller shall refer every application to an examiner, application to who shall ascertain and report to the comptroller whether the nature examiner. of the invention has been fairly described, and the application, si^eci- fication, and drawings (if any) Lave been prepared in the prescribed manner, and the title sufficiently indicates the subject-matter of the invention. Power for 7. — (1.) If the examiner reports that the nature of the invention is comptroller to not fairly described, or that the application, sj)ecification or drawings refuse ap- j^ag not or have not been prepared in the prescribed manner, or that the title does not sufficiently indicate the subject-matter of the inven- tion, the comptroller may recj^uire that the application, specification or drawings be amended before he proceeds with the apphcation. (2.) Where the comptroller requires an amendment, the aj)plicant may appeal from his decision to the law officer. (3.) The law officer shall, if required, hear the applicant and the plication or require amendment 4G & 47 Vict. c. o7. 309 comptroller, and may mako an order determining whether and subject to wlint conditions, if any, the application shall be accepted. (4.) The comptroller sliall, when an application has been accepted, give notice thereof to the applicant. (5.) If after an apiilication has been made, but before a patent has been sealed, an application is made, accompanied bj- a specification bearing the same or a similar title, it shall bo the duty of the examiner to report to the comptroller whether the specification Jippears to him to comprise the same invention ; and if he reports in the affirmative, the comptroller sliall give notice to the applicants tliat he has so reported. (6.) Where the examiner reports in the affirmative, the comptroller may determine, subject to an appeal to the law officer, Avhether the invention comprised in both applications is the same, and if so he may refuse to seal a patent on the ai)plication of the second applicant. 8. — (1.) If the applicant does not leave a complete specification with Time for his apiilication, he may leave it at any subseipient time witliin nine leaving corn- months from the date of application (Jc). l;l'^*tc speci- (2.) Unless a complete specification is loft within that time the appli- *^^*^^'^"- cation shall bo deemed to be abandoned (/). (Z-) Auothcr month or less may bo allowed on payment of the prescribed fee (sect. 3 of the Act of ISSo, post, p. Xi'l). {I) Where an ai)plication has boon abandoned, the specification and drawin"-.s shall not at any time be open to pubUc insjiection or be published by the comptroller (sect. 4 of the Act of 1885, poxt, p. 332). The abandonment must be before the acceptance of the complete specifieation, as publication takes place on such acceptance (sect. 10, 2}ost). Under the old law, the abandonment of iirocecdings commenced with a provisional specification did not establish publication {O.r/ci/ v. Jlolihn, 8 C. B. N. S. CG6). After such an abandonment, the applicant ma}-, it is presumed, make a new apjilication, if he docs not between the date of the abandon- meut and that of the new application make a public use of the invention (seo ante, pp. 13, 14 ; and sect. 14, post). "Month" means " calendar month " (13 & 14 Vict. c. 21, s. 4). 9. — (1.) Where a complete specification is left after a provisional Comparison specification, the comptroller shall refer both specifications to an of pro- examiner for the purpose of ascertaining whether the complete siiecili- '^i'^ion^l a°*i cation has been prepared in the prescribed manner, and whether the '^'^"^P^'^*^. invention particularly described in the complete specification is sub- stantially the same as that which is described in the provisional specification. (2.) If the examiner reports that the conditions hereinbefore con- tained have not been complied with, the comptroller may refuse to accept the complete specification unless and until the same shall have been amended to his satisfaction ; but any such refusal shall bo subject to appeal to the law officer. (3.) The law officer shall, if required, hear the applicant and tho comptroller, and may make an order determining wJiether and sub- ject to what conditions, if any, the complete s^iecificatiou shall bo accepted {m). (4.) Unless a complete specification is accepted witliiu twelve months from the date of application («), then (save in tho case of an appeal having been lodged against the refusal to accept) the application shall, at the expiration of those twelve months, become void. (5.) Keports of examiners shall not in any case be published or bo open to public inspection, and shall not be liable to jjroduction or inspection in any legal proceeding, other than an appeal to the law officer under this Act, unless tho court or officer having power to order 310 PATENTS, ETC. ACT, 1883. Adveitise- ment on ac- ceptance of complete specification. Opposition to grant of patent. Sealing of patent. discovery in such, legal proceeding shall certify that such production or insjiection is desirable in the interests of justice, and ought to be allowed. (m) It is presumed that, notwithstanding the investigation at the office prior to the acceptance of the complete specification, the patent -will still be liable to be revoked for the insuificiency of the specification (see Lawson, 10 ; and ante, pp. 20, 21). (ii) This period is extendible to three months longer at most by sect. 3 of Act of 1885, post, p. 332. 10. On the acceptance of the complete specification the comptroller shall advertise the acceptance ; and the application and specification or specifications with the drawings (if any) shall be open to public inspection (o). (o) See rr. 25, 26, post, p. 338. As to complete protection and patent rights afforded by the acceptance of a complete specification, see sect. 15, _?;o«;, and ante, p. 15. 11. — (1.) Any person may at any time within two months from the date of the advertisement of the acceptance of a complete specification give notice at the patent ofiice of opposition to the grant of the patent on the ground of the applicant having obtained the invention from him, or from a person of whom he is the legal representative, or on the ground that the invention has been patented in this country on an application of prior date, or on the ground of an examiner having re- ported to the comptroller that the specification appears to him to com- prise the same invention as is comprised in a specification bearing the same or a similar title and accompanying a previous application, but on no other ground (^j). (2.) Where such notice is given the comptroller shall give notice of the opposition to the applicant, and shall, on the expiration of those two months, after hearing the apj^licant and the person so giving notice, if desirous of being heard, decide on the case, but subject to appeal to the law officer. (3.) The law officer shall, if required, hear the applicant and any person so giving notice and being, in the opinion of the law officer, entitled to be heard in opposition to the grant, and shall determine whether the grant ought or ought not to be made. (4.) The law officer may, if he thinks fit, obtain the assistance of an expert, who shall be paid such remuneration as the law officer, with the consent of the Treasury, shall appoint. (p) Prior public user, want of utility, or an objection that the invention is not properly the subject-matter of a patent, was fomierly, but is not now, a ground of opposition to the grant (see Lawson, 11, and cases there cited), but may be one for revocation of a patent (see sect. 26, post, and ante, pp. 20, 21, as to revocation of patents) . 12. — (1.) If there is no opposition, or, in case of opposition, if the determination is in favour of the grant of a patent, the comptroller shall cause a patent to be sealed with the seal of the patent office. (2.) A patent so sealed shall have the same effect as if it were sealed with the great seal of the United Kingdom. (3.) A patent shall be sealed as soon as may be, and not after the expiration of fifteen months from the date of application (^), except in the cases hereinafter mentioned, that is to say — (a) Where the sealing is delayed by an appeal to the law officer, or by opposition to the grant of the patent, the patent may be sealed at such time as the law officer may direct. 46 & 47 Vict. c. 57. 311 (b) If the person making tlie application dies before the expiration of the fifteen months (r) aforesaid, the patent may bo granted to his legal representative and sealed at any time within twelve months after the death of the applicant. (7) Seo, however, sect. 3 of the Act of 1885 {post, p. 332). It is there provided that if the comptmllcr allows extra time for leayinjr or acceptinjir the complete speci- fication (not exceeding one month and three months respectively) a further extension of four months is allowed for sealing in addition to the fifteen months. {>■) It is presumed that tlie extension of time as to sealing as last referred to will also apply as to the death of the applicant. 13. Every patent shall be dated and sealed as of the day of the Date of application (*) : Provided that no proceedings shall be taken in respect patent, of an infringement committed before the publication of the complete specification : Provided also, that in case of more than one application for a patent for the same invention, the sealing of a patent on one of those applications shall not prevent the sealing of a jiatent on an earlier application (/). (.f) Semble, no legal assignment can bo made of the patent or any legal interest therein (other than a licence), before the actual date of the sealing of the patent {ante, p. 24). As to licences granted before the sealing being legal grants, see also p. 21. {t) As to rival applications at different dates for the same invention, see Law- son, pp. 16 — 19, and cases under old law there cited. Provisional Protection. 14. Where an application for a patent in respect of an invention Provisional has been accepted, the invention may during the period between the protection, date of the application and the date of scaling such patent be used and published without prejudice to the patent to be granted for the same ; and such protection from the consequences of use and publica- tion is in this Act referred to as provisional protection (?/;. («<) On this section generally, see ante, pp. 13, 1-i ; and as to the nature of pro- visional protection under the old law (which is the same as under this Act), see ante, p. 4. See also note (/) of sect. 8, ante, as to abandonment of applications. The period of protection above stated will of course be determined on the abandon- ment of the application, whether under sect. 8 or otherwise. Protection by Complete Specification. 15. After the acceptance of a complete specification and until the Effect of date of sealing a patent in respect thereof, or the expiration of the acceptance of time for sealing, the applicant shall have the like jiriviloges and rights complete as if a patent for the invoution had been sealed on the date of the ^"^^ ^ ^°°' acceptance of tlie ccmiplete specification : Provided that an applicant shall not be entitled to institute any proceeding for infringement unless and until a patent for the invention has been granted to him {v). (r) See ante, pp. 5, 15. Patent. 16. Every patent when sealed shall have effect throughout the Extent of United Kingdom and the Isle of Man [to). patent. (ic) The Channel Islands were included in former patents. 17. — (1.) The term limited in every patent for the duration thereof Term of shall be fourteen years from its date (.r). patent. 312 PATENTS, ETC. ACT, 1883. (2.) But every patent shall, notwithstanding anything therein or in this Act, cease if the patentee fails to make the prescribed payments within the prescribed times (y). (3.) If, nevertheless, in any case, by accident, mistake or inadvert- ence, a patentee fails to make any prescribed payment within the prescribed time, he may apply to the comptroller for an enlargement of the time for making that pajTaent. (4.) Thereupon the comptroller shall, if satisfied that the failure has arisen from any of the above-mentioned causes, on receipt of the prescribed fee for enlargement, not exceeding ten pounds, enlarge the time accordingly, subject to the following conditions : (a.) The time for making any payment shall not in any case be enlarged for more than three months, (b.) If any proceeding shall be taken in respect of an infringement of the patent committed after a failure to make any pay- ment within the prescribed time, and before the enlargement thereof, the Court before which the proceeding is proposed to be taken may, if it shall think fit, refuse to award or give any damages in respect of such infringement. (.r) The day of the date of the patent is the first day of the term of fourteen years, so that the corresponding day at the end of the fourteenth year will be just beyond the term [Russell v. Ledsam, 14 Mees. & Wcls. 574). {y) See P. P. 1883, r. 4, and P. P. 1885, r. 3, and Schedules of Pees, pp. 329, 344, 357, post. Amendment of Sjjecijication. Amendment 18. — (1.) An applicant or a patentee may, from time to time, by ot specifaca- request in writing left at the patent office, seek leave to amend his specification, including drawings forming part thereof, by way of dis- claimer, correction, or explanation, stating the nature of such amend- ment and his reasons for the same (::). (2.) The request and the nature of such proj)osed amendment shall be advertised in the prescribed manner, and at any time within one month from its first advertisement any j^erson may give notice at the patent office of opposition to the amendment. (3.) Where such notice is given the comptroller shall give notice of the opposition to the person making the recj[uest, and shall hear and decide the case subject to an appeal to the law officer. (4.) The law officer shall, if required, hear the person making the request and the person so giving notice, and being in the opinion of the law officer entitled to be heard in opposition to the request, and shall determine whether and subject to what conditions, if any, the amendment ought to be allowed. (5.) Where no notice of opposition is given, or the person so giving notice does not appear, the comptroller shall determine whether and subject to what conditions, if any, the amendment ought to be allowed. (6.) AVhen leave to amend is refused by the comptroller, the person making the request vli&j aj^peal from his decision to the law officer. (7.) The law officer shall, if required, hear the person making the request and the comptroller, and may make an order determining whether, and subject to what conditions, if any, the amendment ought to be allowed. (8.) No amendment shall be allowed that would make the specifica- tion, as amended, claim an invention substantiallj' larger than or substantially different from the invention claimed by the specification as it stood before amendment. 46 & 47 Vict. c. 57. 313 (9.) Leave to amend shall be conclusive as to the right of the party to make the amendmont allowed, except in case of fraud; and the amendment shall in all courts and for all purposes be deemed to form part of the specification. (10.) The foregoing provisions of this section do not apply when and so long as any action for infringement or other legal proceeding in relation to a patent is pending («). (;) As to this and other sub-sections, and the effect of amendments, see a>i(c, pp. 18, 19. As to the amendment by disclaimer under the old law, and effect thereof, see ante, pp. 6 — 8. . (a) See next section as to disclaimer during an action for infringement or pro- ceedings for revocation. 19. — (1.) In an action for infringement of a i^atent, and in a jn-o- Tower to ceeding for revocation of a patent, the Court or a judge may at any flj'f^^'^^/?^;* time order that the patentee shall, subject to such terms as to costs during action, and otherwise as the Court or a judge may impose, be at liberty to ^^c. apply at the patent office for leave to amend his specification by way of disclaimer, and may direct that in the meantime the trial or hearing of the action shall be postponed (i). {/)) See sub-sect. 10 of last section, and P. R. 56, post, p. 341, and ante, p. 18, n. 20. Whore an amendment by way of disclaimer, correction, or Restriction on explanation, has been aUowod under this Act, no damages shall be J^^^^^J^"^ given in any action in respect of the use of the invention before the ^ disclaimer, correction, or explanation, unless the patentee establishes to the satisfaction of the Court that his original claim was framed in good faith and with reasonable skill and knowledge. 21. Every amendment of a specification shall be advertised in the Advertise- prescribed manner. amendment. Compulsory Licences. 22. If on the petition of any person interested it is proved to the Tower for Board of Trade that by reason of the default of a patentee to grant Board to ,. 1 1 i order gi'aut licences on reasonable terms — ^^ licences (a.) The patent is not being worked in the United Kingdom ; or (b.) The reasonable recjuirements of the public with respect to the invention cannot be supplied ; or (c.) Any person is prevented from working or using to the best advantage an invention of which he is possessed, the Board may order the patentee to grant licences on such terms as to the amount of royalties, security for payment, or otherwise, as the Board, haviii"- regard to the nature of the invention and the circum- stances of the case, may deem just, and any such order may be enforced by mandamus. Reyisier of Patents. 23._(1.') There shall be kept at the patent office a book called the Register of Eegister of Patents, wherein shall be entered the names and addresses patents, of o-vantees of patents, notifications of assignments and of transmissions of patents, of licences under patents, and of amendments, extensions, and revocations of patents, and such other matters afiecting thevalidity or proprietorship of patents as may from time to time be prescribed (c). (2.) The register of patents shall be prima facie evidence of any matters by this Act directed or authorised to be inserted therein. 314 PATENTS, ETC. ACT, 1883. (3.) Copies of deeds, licences, and any other documents affecting the proprietorship in any letters patent or in any licence thereunder, must be supplied to the comptroller in the prescribed manner for filing in the patent office. (c) The section should be read iii connection with sects. 85 and 87, pout. As to registration under the new practice, and what documents may be regis- tered, and the rectification of the register, see ante, pp. 23 — 25. As to registration under the old practice, see ante, pp. 8, 9. By sect. 114, po^t, the registers under the old practice are to be deemed parts of the same book as the register of patents now in use. As to registration of assignments and licences respectively, see also ante, p. 132. Fees. Fees in 24. — (1.) There shall be paid in respect of the several instruments ^° ^ ^ ^* described in the Second Schedule to this Act, the fees in that schedule mentioned, and there shall likewise be paid, in respect of other matters under this part of the Act, such fees as may be from time to time, with the sanction of the Treasury, prescribed by the Board of Trade ; and such fees shall be levied and paid to the account of Her Majesty's Exchequer in such manner as the Treasury may from time to time direct {d). (2.) The Board of Trade may from time to time, if they think fit, Avith the consent of the Treasury, reduce any of those fees. [d) As to fees, see P. R. 1883, r. 4 {post, p. 335), and P. E. 1885, r. 3 [po&t, p. 356), and schedules to same rules, pp. 341, 357. As to the last day for the payment of any fee falling on Christmas Day, Good Friday, or on a Saturday or Svinday, or Bank Holiday, or day of public fast or thanksgiving, see sect. 98, x)ost, p. 323. Extension of Term of Patent. Extension of 25. — (1.) A patentee may, after advertising in manner directed by term of patent any rules made under this section his intention to do so, present a on petition to petition to Her Majesty in Council, praying that his patent may be Council^ extended for a further term ; but such petition must be presented at least six months before the time limited for the expiration of the <0- 1 -i ' ' patent. . , (2.) Any person may enter a caveat, addressed to the Eegistrar of the Council at the Council Office, against the extension. (3.) If Her Majesty shall be pleased to refer any such petition to the Judicial Committee of the Privy Council, the said Committee shall 2)roceed to consider the same, and the jDetitioner and any person who has entered a caveat shall be entitled to be heard by himself or by counsel on the petition. (4.) The Judicial Committee shall, in considering their decision, have regard to the nature and merits of the invention in relation to the public, to the profits made by the patentee as such, and to all the circumstances of the case. (5.) If the Judicial Committee report that the j)atentee has been inadequately remunerated by his patent, it shall be lawful for Her Majesty in Council to extend the term of the patent for a further term not exceeding seven, or in exceptional cases fourteen, years ; or to order the grant of a new patent for the term therein mentioned, and containing any restrictions, conditions, and provisions that the Judicial Committee may think fit. (6.) It shall be lawful for Her Majesty in Council to make, from time to time, rules of procedure and practice for regulating proceed- 40 & 47 Vict. c. 57. ^lo ings on such petitions, and subject thereto such proceediugs^ shall Lo regulated according to the existing procedure and practice in patent matters of the Judicial Committee. (7.) Tlie costs of all parties of and incident to such proceedings shall be in the discretion of the Judicial Committee ; and the orders of the Committee respecting costs shall be onforcoablo as if they were orders of a division of the High Court of Justice (p). {f) As to the extension of the terra of a patent, see ante, pp. 19, 20. Jievoca/ion. 26. — (1.) The proceeding by scire facias to repeal a patent is hereby Revocation of abolished. _ patent. (2.) Eevocation of a patent may be obtained on x^etition to the Court. (3.) Every ground on -which a patent might, at the commencement of this Act, bo repealed by scire facias shall be available by way of defence to an action of infringement and shall also bo a ground of revocation. (4.) A petition for revocation of a patent may be presented by — (a.) The Attorney-General in England or Ireland, or the Eord Advocate in Scotland : (b.) Any person authorised by the Attorney-General in England or Ireland, or tlie Lord Advocate in Scotland : (c.) Any person alleging that the patent was obtained in fraud of his rights, or of the rights of any person under or through whom he claims : (d.) Any person alleging that he, or any person under or through whom he claims, was the true inventor of any invention included in the claim of the patentee : (e.) Any person alleging that he, or any person under or through whom he clauns an interest in any trade, business, or manu- facture, had publicly manufactured, used, or sold, within this realm, before the date of the patent, anything claimed by the patentee as his invention. (5.) The plaintiif must deliver with his petition particulars of the obj(>ctions on which he means to rely, and no evidence shall, except by leave of the Court or a judge, be admitted in proof of any objection of which particulars are not so delivered. (6.) Particulars delivered may be from time to time amended by leave of the Court or a judge. (7.) The defendant shall be entitled to begin, and give evidence in support of the patent, and if the plaintiff gives evidence impeaching the validity of the patent the defendant shall be entitled to reply. (8.) "Where a patent has been revoked on the ground of fraud, the comptroller may, on the application of the true inventor made in accordance with the provisions of this Act, grant to him a patent in lieu of and bearing the same date as the date of revocation of the patent so revoked, but the patent so granted shall cease on tho expiration of tho term for which tho revoked patent was granted (/). (/) As to revocation of patents, see ante, pp. 20, 21. Crown. 27. — (1.) A patent shall have to all intents the like effect as against Patent to Her Majesty the Queen, her heirs and successors, as it has against a bind Crown, subject. 316 PATENTS, ETC. ACT, 1883. (2.) But the officers or authorities administering any department of the service of the Cro-svn may, by themselves, their agents, con- tractors, or others, at any time after the ajiplication, use the invention for the service of the Crown on terms to be before or after the use thereof agreed on, with the approval of the Treasury, between those officers or authorities and the patentee, or, in default of such agree- ment, on such terms as may be settled by the Treasury after hearing ail parties interested. Hearing assessor. with Delivery of particulars. Order for inspection, &c., in action. Legal Proceedings. 28. — (1.) In an action or proceeding for infringement or revocation of a patent, the Court may, if it thinks fit, and shall, on the request of either of the parties to the proceeding, call in the aid of an assessor specially qualified, and try and hear the case wholly or partially with his assistance ; the action shall be tried without a jury unless the Court shall otherwise direct. (2.) The Court of Appeal or the Judicial Committee of the Privy Council may, if they see fit, in any proceeding before them respectively, call in the aid of an assessor as aforesaid. (3.) The remuneration, if any, to be paid to an assessor under this section shall be determined by the Court or the Court of Appeal or Judicial Committee, as the case may be, and be paid in the same manner as the other exj)enses of the execution of this Act. 29. — (1.) In an action for infringement of a patent the plaintiff must deliver with his statement of claim, or by order of the Court or the judge, at any subsequent time, particulars of the breaches com- plained of. (2.) The defendant must deliver with his statement of defence, or, by order of the Court or a judge, at any subsequent time, particidars of any objections on which he relies in support thereof. (3.) If the defendant disputes the validity of the patent, the par- ticulars delivered by him must state on what grounds he disputes it, and if one of those grounds is want of novelty must state the time and i^lace of the previous publication or xiser alleged by him. (4.) At the hearing no evidence shall, excej)t by leave of the Court or a judge, be admitted in proof of any alleged infringement or objec- tion of which particulars are not so delivered. (5.) Particulars delivered may be from time to time amended, by leave of the Court or a judge. (6.) On taxation of costs regard shall be had to the particulars delivered by the plaintiff and by the defendant ; and they respectively shall not be allowed any costs in respect of any particular delivered by them unless the same is certified by the Court or a judge to have been proven or to have been reasonable and proper, without regard to the general costs of the case. 30. In an action for infringement of a patent, the Court or a judge may on the application of either party make such order for an injunc- tion, inspection or account, and impose such terms and give such directions respecting the same and the proceedings thereon as the Court or a judge may see fit. "n an action for infringement of a patent, the Court or a judge rtify that the validity of the patent came in question ; and if Certificate of 31. In questioned ^|^g Court or a judge so certifies, then in any subsecj^uent action for 46 & 47 Vict. c. 57. 317 infringement, tlio plaintiff in that action on obtaining a final order and costs or judgment in Lis favovir shall have his full costs, charges and expenses thereon, as between solicitor and client, unless the Court or judge trying the action certifies that he ought not to have the same. 32. Where any person claiming to be the patentee of an invention, Remedy in by circulars, advertisements or otherwise threatens any other person f^'^''' arty to the assignment. (2.) The assignment shall effectually vest the benefit of tho invention and patent in the Secretary of State for the time being on behalf of Her ISIajesty, and all covenants and agreements therein contained for keeping the invention secret and otherwise shall be valid and effectual (notwithstanding any want of valuable consideration), and may be enforced accordingly by the Secretary of State for the time being. (3.) AVhere any such assignment has been made to tho Secretary of State, ho may at any time before the application for a patent for tho invention, or before publication of the specification or specifications, certify to the com])troller his opinion that, in the interest of the public service, the particulars of the invention and of the manner in which it is to be performed shoidd be kept secret. (4.) If the Secretary of State so certifies, the application and specifi- cation or specifications with the draAvings (if any), and any amendment of the specification or specifications, and any copies of such documents and drawings, shall, instead of being left in the ordinary manner at the patent office, be delivered to the comptroller in a packet sealed by aiithority of the Secrf^tary of State. (5.) Such packet shall until tlie expiration of the term or extended term during which a patent for the invention may be in force, be kept sealed by the con\ptroller, and shall not be opened save under tho authority of an order of the Secretary of State, or of the law officers. 320 PATENTS, ETC. ACT, 1883. (6.) Sucli scaled packet shall be delivered at any time during tlie continuance of the patent to any person authorized by writing under the hand of the Secretary of State to receive the same, and shall if returned to the comptroller be again kept sealed by him. (7.) On the expiration of the term or extended term of the patent, such sealed packet sliall be delivered to any person authorized by "writing under the hand of the Secretary of State to receive it. (8.) Where the Secretary of State certifies as aforesaid, after an application for a patent has been left at the patent office, but before the j)ublication of the specification or specifications, the application, specification or sjiecifications, ^vith the drawings (if any), shall be forthwith placed in a packet sealed by authority of the comptroller, and such packet shall be subject to the foregoing provisions respecting a ];)acket sealed by authority of the Secretary of State. (9.) No proceeding by petition or otherwise shall lie for revocation of a patent granted for an invention in relation to which the Secretary of State has certified as aforesaid. (10.) No coj)y of any specification or other document or drawing, by this section required to be placed in a sealed packet, shall in any manner whatever be published or open to the inspection of the public, but save as in this section otherwise directed, the provisions of this part of this Act shall apply in respect of any such invention and patent as aforesaid. (11.) The Secretary of State may, at any time by writing under his hand, waive the benefit of this section with resjDCct to any particular invention, and the specifications, documents and drawings shall be thenceforth kej)t and dealt with in the ordinary way. (12.) The communication of any invention for any improvement in instruments or munitions of war to the Secretary of State or to any person or persons authorized by him to investigate the same or the merits thereof, shall not, nor shall anj'thing done for the purposes of the investigation, be deemed use or publication of such invention so as to prejudice the grant or validity of any patent for the same. Provisions respecting- existing patents. Definitions of patent, Existing Patents. 45. — (1.) The provisions of this Act relating to applications for patents and proceedings thereon shall have effect in resjject only of applications made after the commencement of this Act. (2.) Every patent granted before the commencement of this Act, or on an application then pending, shall remain unaffected by the pro- visions of this Act relating to patents binding the Crown, and to com- pulsory licences. (3.) In all other respects (including the amount and time of pay- ment of fees) this Act shall extend to all patents granted before the commencement of this Act, or on applications then pending, in sub- stitution for such enactments as would have ajiplied thereto if this Act had not been passed. (4.) All instruments relating to patents granted before the com- mencement of this Act required to be left or filed in the Great Seal Patent Office shall be deemed to be so left or filed if left or filed before or after the commencement of this Act in the patent office (/). [I) See sect. 113. Dejinitions. 46. In and for the purposes of this Act — " Patent " means letters patent for an invention {m) : 46 & 47 Vict. c. 57. 321 " Patentee " means the person for the time being entitled to the patentee, and benefit of a patent : ,•. > •..--.,. ..<- - _ invention. " Invention" moans any manner of now manufacture tlie subject cjf letters patent and j^rant of privilege within section six of the .Statute of Monopolies (that is, tlie Act of the twenty-first year of the reign of King James tlio First, chapter three, intituled " An Act concerning monopolies and dispensations with penal laws and the forfeiture thereof"), and includes an alleged invention («). In Scotland '"injunction" means "interdict." (>«) See extended definition of the tcrni " patent," ante, p. 2. (h) As to the term "inventor" comprising " an importer," see mite, pp. 2, 10. Sects. 47 — 81 do not relate to patents. PAET v.— GEXER.U.. Patent Office and Proceedings thereat. 82. — (1.) The Treasmy may provide for the purposes of this Act Patent office, an office with all rer^uisite buildings and conveniences, which shall be called, and is in this Act referred to as, the Patent Office. (2.) Until a new patent office is provided, the offices of the Commis- sioners of Patents for inventions and for the registration of designs and trade marks existing at the commencement of this Act shall bo the patent office within the meaning of this Act. (3.) The patent office shall be under the immediate control of an officer called the comptroller-general of patents, designs, and trade marks, who shall act under the superintendence and du-ection of the Board of Trade. (4.) Any act or thing directed to be done by or to the comptroller may, in his absenee, be done by or to any officer for the time being in that behalf authorised by the Board of Trade. 83. — (1.) The Board of Trade may at any time after the passing of Officers and this Act, and from time to time, subject to the approval of the Trea- clerks, sury, appoint the comptroller-general of patents, designs, and trade marks, and so many examiners and other officers and clerks, with such designations and duties as the Board of Trade think fit, and may from time to time remove any of those officers and clerks. (2.) The salaries of those officers and clerks shall be appointed by the Board of Trade, with the concurrence of the Treasury, and the same and the other expenses of the execution of this Act shall be paid out of money provided by Parliament. 84. There shall bo a seal for the patent office, and impressions Seal of patent thereof shall be judicially noticed and admitted in evidence. office. 85. There shall not be entered in any register kept under this Act, Trust not to or be receivable by the comptroller, any notice of any trust expressed, he entered in implied or constructive (o). ^'■'°'* ^''"'*' (o) Tliis section should be read in connection with sects. 23 and 87. As to reg-is- tration under the two practices, see pp. 8, 9, and pp. 23—25, ante, and as to regis- tration of Assignments, pp. 132, 133, ante. M. Y 322 PATENTS, ETC. ACT, 1883. Refusal to grant patent, &c. in certain cases. Entry of assignments and trans- missions in registers. The documents to be registered must be such as As to this, and the section generally, see ante, 86. The comptroller may refuse to graut a patent for an invention, or to register a design or trade mark, of wliich the use -would, in his opinion, he contrary to law or morality. 87. Where a person becomes entitled by assignment, transmission, or other operation of law to a patent, or to the copj^ight in a registered design, or to a registered trade mark, the comptroller shall on request, and on proof of title to his satisfaction, cause the name of such person to be entered as proprietor of the patent, copyright in the design, or trade mark, in the register of patents, designs, or trade marks,, as the case may be. The person for the time being entered in the register of patents, designs, or trade marks, as proprietor of a patent, copyright in a design or trade mark as the case may be, shall, subject to any rights appearing from such register to be vested in any other person, have power absolutely to assign, grant licences as to, or otherwise deal with, the same and to give effectual receipts for any consideration for such assignment, licence, or dcabng. Provided that any equities in respect of such patent, design, or trade mark may be enforced in like manner as in respect of any other personal property (;j). [p) See sects. 23 and 85, ante. confer legal interests or rights pp. 23—25. As to rectification of the register, see sect. 90, post. As to registration of assignments and licences respectively, see ante, pp. 132, 133. 88. Every register kept under this Act shall at all convenient times be open to the inspection of the public, subject to such regulations as may be prescribed ; and certified copies, sealed with the seal of the patent office, of any entry in any such register shall be given to any person requiring the same on payment of the prescribed fee. Scaled copies 89. Printed or written copies or extracts, purporting to be certified to be received l^y tbe comptroller and sealed with the seal of the patent office, of or '" "''"''°""° from patents, specifications, disclaimers and other documents in the patent office, and of or from registers and other books kept there, shall be admitted in evidence in all courts in Her Majesty's dominions, and in all proceedings, without further proof or production of the originals. 90. — (1.) The Court may on the application of any person aggrieved by the omission without sufficient cause of the name of any person from any register kept under this Act, or by any entry made without sufficient cause in any such register, make such order for making, expunging or var3'ing the entry, as the Court thinks fit ; or the Court may refuse the application ; and in either case may make such order with respect to the costs of the proceedings as the Court thinks fit. (2.) The Court may in any proceeding under this section decide any question that it may be necessary or expedient to decide for the recti- fication of a register, and may direct an issue to be tried for the decision of any question of fact, and may award damages to the party aggrieved. (3.) Any order of the Court rectifying a register shall direct that due notice of the rectification be given to the comptroller (§■). {q) See, as to rectification of the register, ante, p. 24. 91. The comptroller may, on request in writing accomjDanied by the prescribed fee : — (a.) Correct any clerical error in or in connection with an application for a patent, or for registration of a design or trade mark ; or Inspection of and extracts from registers. in evidence. Rectification of registers by court. Power for comptroller to correct clerical errors. 46 & 47 Vict. c. o7. 323 (b.) Correct any clerical error in tlio name, stylo or address of tlic registered proprietor of a patent, design, or trade mark. (c.) Cancel tlie entry or part of the entry of a trade mark on the register: Provided tluit tlio applicant accompanies his refj[uest by a statutory declaration niado by himself, stating his name, address, and calling, and that he is tlie person whoso name appears on the register as the proprietor of the said trade mark. 92.— (1.) The registered proprietor of any registered trade mark Alteration of may apiily to the Court for leave to add to or alter such mark in any registered particular, not being an essential particular within the meaning of this ^^^^ Act, and the Court may refuse or grant leave on such terms as it may think fit. (2.) Notice of any intended application to the Court under tliis section sliall bo given to the comptroller by the applicant ; and the comptroller shall be entitled to be heard on the application. (3.) If the Court grants leave, the comptroller shall, on proof thereof and on payment of the prescribed fee, cause the register to be altered in conformity with the order of leave. 93. If any person makes or causes to be made a false entry in any Falsification register kept under this Act, or a writing falsely purporting to be a o^ entries in copy of an entry in any such register, or produces or tenders or causes ^^^ ^"" to be produced or tendered in evidence any such writing, knowing the entry or writing to bo false, he shall be guilty of a misdemeanor. 94. "Where any discretionary power is by this Act given to the Exercise of comptroller, ho shall not exercise that power adversely to the appli- tliscretionary cant for a patent, or for amendment of a specification, or for registra- coiiip^i-o'^er^ tion of a trade mark or design, without (if so required within the prescribed time by the applicant) giving the applicant an opportunity of being heard personally or by his agent. 95. The comptroller may, in any case of doubt or difficulty arising Power of in tlie administration of any of the provisions of this Act, ap^ily to comptroller to either of the law officers for directions in the matter (>•)• tfons oMaw (r) See ante, -p. 10. o*^''^^^' 96. A certificate purporting to bo imdcr the hand of the comptroller Certificate of as to any entry, matter, or tiling which he is authorised by this Act, coniiitroller to or any general rules made thereunder, to make or do, shall be prima '^'^ evideucc. facie evidence of the entry having been made, and of the contents thereof, and of the matter or thing having been done or left undone. 97. — (1.) Any application, notice, or other document authorised or Applications required to be left, made or given at the patent oflice or to the comp- aud noticea troller, or to any other person under this Act, may bo sent by a pre- ^y P°*'- paid letter through the post ; and if so sent shall be deemed to have been left, made or given respectively at the time when the letter con- taining the same would be delivered in the ordinary course of post. (2.) In proving such service or sending, it shall bo sufficient to prove that the letter was properly addressed and put into the post. 98. AVhenever the last day fixed by this Act, or by any rule for Trovision as the time being in force, for leaving any document or paying anv fee *« J^^ys for Y 2 leaviujj 324 PATENTS, ETC. ACT, 1883. documents at office. Declaration by infant, lunatic, &c. at tlie patent office sliall fall on Cliristmas Day, Good Friday, or on a Saturday or Sunday, or any day observed as a holiday at tlie Bank of England, or any day observed as a day of public fast or thanksgiving, herein referred to as excluded days, it shall be lawful to leave such document or to pay such fee on the day next following such excluded day, or days if two or more of them occur consecutively. 99. If any person is, by reason of infancy, lunacy or other inability, incapable of making any declaration or doing anything required or permitted by this Act or by any rules made under the authority of this Act, then the guardian or committee (if any) of such incapable person, or if there be none, any person appointed by any^ court or judge possessing jurisdiction in respect of the property of incapable persons, upon the petition of any person on behalf of such incapable person, or of any other person interested in the making such declara- tion or doing such thing, may make such declaration or a declaration as nearly corresponding thereto as circumstances permit, and do such thing in the name and on behalf of such incapable person, and all acts done by such substitute shall for the purposes of this Act be as effectual as if done by the person for whom he is substituted. Transmission 100. Copies of all specifications, drawings, and amendments left of certified at the patent office after the commencement of this Act, printed for printed copies ^^^^^ sealed with the seal of the patent office, shall be transmitted to tio?r &c " tl^e Edinburgh Museum of Science and Ai-t, and to the Enrolments ' ' Office of the Chancery Division in Ireland, and to the EoUs Office in the Isle of Man, within twenty-one days after the same shall respec- tively have been accepted or allowed at the patent office ; and certified copies of or extracts from any such documents shall be given to any person recxuiring the same on payment of the prescribed fee ; and any such copy or extract shall be admitted in evidence in all courts in Scotland and Ireland and in the Isle of Man without further proof or XDroduction of the originals. Power for Board of Trade to make general rules for classifying goods and regulating business of patent office. 101. — (1.) The Board of Trade may from time to time make such general rules and do such things as they think expedient, subject to the provisions of this Act — (a.) Eor regulating the practice of registration under this Act : (b.) For classifying goods for the purposes of designs and trade marks : (c.) For making or requiring duplicates of specifications, amend- ment, drawings, and other documents : (d.) For securing and regulating the publishing and selling of copies, at such prices and in such manner as the Board o£ Trade think fit, of specifications, drawings, amendments and other documents : (e.) For securing and regulating the making, printing, publishing and selling of indexes to, and abridgments of, specifications and other documents in the patent office ; and providing for the inspection of indexes and abridgments and other docu- ments : (f.) For regulating (with the approval of the Treasury) the presen- tation of copies of patent office publications to patentees and to public authorities, bodies, and institutions at home and abroad : (g.) Generally for regulating the business of the patent office, and 46 & 47 Vict. c. 57. 325 all things by this Act placed under the direction or control of the comptroller, or of the Board of Trade. (2.) Any of tlie forms in the First Schedule to this Act may bo altered or amended by rules made by the Board as aforesaid. (3.) General rules may be made under this section at any time after the passing of tliis Act, but not so as to take effect before the commencement of tliis Act, and shall (subject as hereinafter mentioned) be of the same effect as if they were contained in this Act, and shall be judicially noticed (s). (4.) Any rules made in pursuance of this section shall be laid before both Houses of Parliament, if Parliament be in session at the time of making thereof, or, if not, then as soon as practicable after the beginning of the then next session of Parliament, and they shall also be advertised twice in the official journal to be issued by the comp- troller. (5.) If either Ilouse of Parliament, within the next forty days after any rules have been so laid before such Ilouse, resolve that sucli rides or any of them ought to be annulled, the same shall after the date of such resolution be of no effect, without prejudice to the validity of anything done in the meantime under such rules or rule or to the making of any new rules or rule. (s) The Rules in force now are the P. R. 1883, and P. E. 1885, 2^ost, pp. 335, 356, and the Revised Rules (as to drawings) of September 16, 188G. 102. The comptroller shall, before the first day of June in eveiy Annual year, cause a report respecting the execution by or under him of this reports of Act to bo laid before both Houses of Parliament, and therein shall comptrouer. include for the year to which each report relates all general rules made in that year under or for the purposes of this Act, and an accoimt of all fees, salaries, and allowances, and other money received and paid under this Act. International and Colonial Arrangements. 103.— (1.) If Her Majesty is pleased to make any arrangement with International the government or governments of any foreign state or states for J^'^"^'^™'^"^^ mutual protection of inventions, designs, and trade marks, or any o7iS-enHon^ of them, then any person wlio has applied for protection for any designs, and ' invention, design, or trade mark in any such state, shall be entitled to trade marks, a patent for his invention or to registration of his design or trade mark (as the case may be) under this Act, in priority to other applicants ; and such patent or registration shall have the same date as the date of the protection obtained in such foreign state (/)• Provided that his application is made, in tlie case of a patent within seven months, and in the case of a design or trade mark within four months, from his applying for protection in the foreign state with which the arrangement is in force. Provided that nothing in this section contained shall entitle the patentee or proprietor of the design or trade mark to recover damages for infringements happening prior to the date of the actual acceptance of his complete specification, or the actual registration of his design or trade mark in this country, as the case may be. (2.) The publication in the United Kingdom, or the Isle of Man during the respective periods aforesaid of any description of the invention, or the use therein during such periods of the invention, or the exhibition or use therein during such periods of the design, or the publication therein during such periods of a description or representa- 326 PATENTS, ETC. ACT, 1883. Provision for colonies and India. tion of tlie design, or the use therein during sucli periods of the trade mark, shall not invalidate the patent which may be granted for the invention, or the registration of the design or trade mark. (3.) The application for the grant of a patent, or the registration of a design, or the registration of a trade mark under this section, must be made in the same manner as an ordinary application under this Act : Provided that, in the ease of trade marks, any trade mark tlie registration of which has been duly applied for in the country of origin may be registered under this Act. (4.) The provisions of this section shall apply only in the case of those foreign states with respect to which Her Majesty shall from time to time by Order in Council declare them to be applicable, and so long only in the case of each state as the Order in Council shall continue in force with respect to that state. {t) See sect. 6 of Amendment Act of 1885, post, p. 333. 104.— (1.) AVhere it is made to appear to Her Majesty that the legislature of any British possession has made satisfactory provision for the protection of inventions, designs, and trade marks, patented or registered in this country, it shall be lawful for Her Majesty from time to time, by Order in Council, to apply the provisions of the last preceding section, with such variations or additions, if any, as to Her Majesty in Council may seem fit, to such British possession. (2.) An Order in Council under this Act shall, from a date to be mentioned for the purpose in the Order, take effect as if its provisions had been contained in this Act ; but it shall be lawful for Her Majesty in Council to revoke any Order in Council made under this Act, A Offences. Penalty on 105. — (1.) Any person who represents that any article sold by him falsely repre- jg a patented article, when no patent has been granted for the same, artkTef to b °^ describes any design or trade mark applied to any article sold by patented." ^ liii^^ ^^ registered which is not so, shall be liable for every offence on summary conviction to a fine not exceeding five pounds. (2.) A person shall be deemed, for the purposes of this enactment, to represent that an article is patented or a design or a trade mark is registered, if he sells the article with the word " patent," "patented," ''registered," or any word or words expressing or implying that a patent or registration has been obtained for the article stamped, engraved, or impressed on, or otherwise applied to, the article. Penalty on unauthorised Eoyal arms. 106. Any person who, without the authority of Her Majesty, or any of the Eoyal Family, or of any Government Department, assumes T^ ™™^A^^'t °^ or uses in connection with any trade, business, calling, or profession, p^,r,= ^^^^ Royal arms, or arms so nearly resembling the same as to be cal- culated to deceive, in such a manner as to be calculated to lead other persons to beheve that he is carrying on his trade, business, calling, or profession by or under such authority as aforesaid, shall be liable on summary conviction to a fine not exceeding twenty pounds. Saving for courts in Scotland. Scotland; Ireland; Sj-c. 107. In any action for infringement of a patent in Scotland the provisions of this Act, with respect to caUiug in the aid of an assessor, shall apply, and the action shall be tried without a jury, unless the 46 & 47 Vict. c. 57. 327 Court shall otherwise direct, but otherwise nothing shall affect the jurisdiction and forms of process of the Courts in Scotland in such an action or in any actitm or proceeding resjiecting a patent hitherto competent to those Courts. For the purposes of this section " Court of Appeal" shall mean any Court to which sucli action is ajipealed. 108. In Scotland any offence under tliis Act declared to he punish- Summary able on summary conviction may bo prosecuted in tlio sheriff court. proceedings in Scotland. 109. — (1.) Proceedings in Scotland for revocation of a patent shall Proceedings be in the form of an action of reduction at the instance of the Lord ^^.^ revocation Advocate, or at the instance of a party having interest with his con- g^ti^nj'^ "^ currence, which concurrence may be given on just cause shown only. (2.) Service of all writs and summonses in that action shall bo made according to the forms and practice existing at the commencement of this Act. 110. All parties shall, notwithstanding anything in this Act, have Ecservation in Ireland their remedies under or in respect of a patent as if the same of remedies in had been granted to extend to Ireland only, Ireland. 111. — (1.) The provisions of this Act, conferring a special jurisdiction General on the Coiu"t as clefinod by this Act, shall not, except so far as the saving for jurisdiction extends, affect the jurisdiction of any Court in Scotland or jurisdiction of Ireland in any proceedings relating to patents or to designs or to ^^^^ ^' trade marks ; and with reference to any such proceedings in Scotland, the term " the Court " shall mean any Lord Ordinary of the Court of Session, and the term " Court of Appeal" shall mean either Division of the said Court ; and with reference to any such proceedings in Ireland, the terms "the Court" and "the Court of Appeal" respec- tively mean the High Court of Justice in Ireland and Her Majesty's Coui't of Appeal in Ireland. (2.) If any rectification of a register under this Act is recpired in pursuance of any proceeding in a Court in Scotland or Ireland, a copy of the order, decree, or other authority for the rectilication, shall be served on the comptroller, and he shall rectify the register accord- ingly. 112. This Act shall extend to the Isle of Man, and — I^jg Qf Tjan. (I.) Nothing in this Act shall affect the jurisdiction of the Courts in tlio Isle of Man, in proceedings for infringement or in any action or proceeding respecting a patent, design, or trade mark competent to those Courts ; (2.) The punishment for a misdemeanour under this Act in the Isle of Man shall be imprisonment for any term not exceeding two years, with or without hard labour, and with or without a fine not exceeding one hundi'ed pounds, at the discretion of the Court ; (3.) Any offence imder this Act committed in the Isle of Man which would in England bo punishable on summary conviction may be prosecuted, and any fine in respect tlicreof recovered at the instance of any person aggrieved, in the manner in which offences punishable on simimary conviction may for the time being be prosecuted. 328 PATENTS, ETC. ACT, 1883. Repeal; Transitional Provisioiis ; Savi^igs. Repeal and saving for past operation of repealed enactments, &c. 113. The enactments described in tlie Third Schedule to this Act are hereby repealed. But this repeal of enactments shall not — (a.) Affect the past operation of any of those enactments, or any patent or copyright or right to use a trade mark granted or acquired, or application pending, or appointment made, or compensation granted, or order or direction made or given, or right, privilege, obligation, or liability acquired, accrued, or incurred, or anything duly done or suffered under or by any of those enactments before or at the commencement of this Act ; or (b.) Interfere with the institution or prosecution of any action or proceeding, civil or criminal, in respect thereof, and any such proceeding may be carried on as if this Act had not been passed ; or (c.) Take away or abridge any protection or benefit in relation to any such action or proceeding (?/). (m) Compare sect. 45 with this section. See also, (oite, pp. 22, 23, as to the two sections. Under sect. 25 of the repealed Act of 1852, patents obtained here for inventions already patented abroad became void on the expiration of the foreign patent. The new Acts have no similar provision, so that it may be presumed that the duration of a British patent granted thereunder, whether on an application pending at or made since the commencement of the Act of 1883, is unaffected by that of any foreign patent for the same invention. See Lawson, pp. 140, 141 (notes to sect. 45), as to the effect of the above section in respect of sect. 25 of the Act of 1852. Former 114. — (1.) The registers of patents and of proprietors kept under registers to be any enactment repealed by this Act shall respectively be deemed parts conUnued ^^ ^^^ same book as the register of patents kept under this Act (y). (2.) The registers of designs and of trade marks kept under any enactment repealed by this Act shall respectively be deemed parts of the same book as the register of designs and the register of trade marks kept under this Act. {v) See sects. 23 and 87, ayite, and notes thereon. Saving for existing rules. 115. All general rules made by the Lord Chancellor or by any other authority under any enactment repealed by this Act, and in force at the commencement of this Act, may at any time after the passing of this Act be repealed, altered or amended by the Board of Trade, as if they had been made by the Board under this Act, but so that no such repeal, alteration or amendment shall take effect before the commence- ment of this Act ; and, subject as aforesaid, such general rules shall, so far as they are consistent with and are not superseded by this Act, continue in force as if they had been made by the Board of Trade under this Act. Saving for prerogative. 116. Nothing in this Act shall take away, abridge or prejudicially affect the prerogative of the Crown in relation to the granting of any letters patent or to the withholding of a grant thereof. General Definitions. General 117. — (1.) In and for the purposes of this Act, unless the context definitions. otherwise requires, — " Person " includes a body corporate : 46 & 47 Vict. c. 57. "The Court" means (subject to the provisions for Scotland Trc-lanrl, and the Isle of Man) Her Majesty's High Court of Justice m England : " Law officer" means Her Majesty's Attorney-General or Sohcitor- ^'^The^TrSl^'''^ means the Commissioners of Her Majesty's ^''-'comptroller " moans the ComptroUer-General of Patents, Designs, '""^ Prescribed "'means prescribed by any of the Schedules to this Act or by general rules under or within the meaning of this Act : "British possession" means any territory or place situate within Her Majesty's dominions, and not being or forming part ot the Unted Kingdom, or of the Channel Islands, or of the Isle of Man, and all tei4orieL and places under one legislature, as hereinafter defined, are deemed to be one British possession for the purposes of *^- Legislature " includes any person or persons who exercise legis- lative authority in the British possession; ^"^^ ^^^^fthere are local legislatures as well as a central legislature, means the central legis- ^""in'tirJ^appllcation of this Act to Ireland," summary conviction '' means a conviction under the Summary Jurisdiction Acts that is to ^y with reference to the Dublin Metropolitan Pohce District the AJtsTeg^datlng the duties of justices of the peace and of the pohce for such district, and elsewhere in Ireland the Petty Sessions (Ireland) Act, 1851, and any Act amending it. 329 THE FIEST SCHEDULE. TThe Forms A., B. and C. in this are replaced ^^ \^%^S.X^-' ^^J' B and C in the Second Schedule to the Patent Pules, 188d Eorm D. of this Schedule (Form of a Patent) is the lorm I. at pp. 48, 49, ante.'] THE SECOND SCHEDULE. Fees on instruments for ohtaining Patents, ami Renewal {w). (a) Up to Sealing. ^ ^ ^^ ^ ^ ^^_ On application for provisional protection 1 <' On filing complete specification j^ ^ Section 24. or On filing complete specification with first application .... (i) Further before end of four gears from date of patent. On certificate of renewal 4 4 50 .S^Sr^;^1sJrsrr.s!;:^;1^^|a£s-t2■^„tS KerS Schedule totLc Patent Kulcil8S5;^«.<, p. 357 330 PATENTS, ETC. ACT, 1883. (c) Further before end of seven years, or in the case of patents granted after the commencement of this Act, before the end of eight years from date of ixitent. On certificate of renewal , . , , £100 Or in lieu of the fees of 501. and 100/. the following annual fees:— Before the expiration of the fourth year from the date of the patent £10 sixth „ „ seventh ,, „ eighth „ „ ninth „ „ tenth „ „ eleventh ,, ,, twelfth ,, ,, thii'teenth ,, 10 10 10 15 15 20 20 20 20 Section 113. THE THIED SCHEDULE. Enactments repealed. 21 James 1, c. 3 . , [1623.] 5 & 6 Wm. 4, c. 62 [1835.] In part. 5&6Will. 4,c. 83 [1835.] 2 &3 Vict.c. 67.. [1839.] 5 & 6 Vict. c. 100 [1812.] 6 &7 Vict. c. 65.. [1843.] 7&8Vict. c. 69(«) [1844.] In part. The Statute of Monopolies. In part ; namely, — Sections ten, eleven, and twelve. The Statutory Declarations Act, 1835. In part ; namel}', — Section eleven. An Act to amend the law touching letters patent for inventions. An Act to amend an Act of the fifth and sixth years of the reign of KingWilliam the Fourth, intituled ' 'An Act to amend the law touching letters patent for inventions." An Act to consolidate and amend the laws relating to the copyright of designs for ornamenting articles of manufacture. An Act to amend the laws relating to the copyright of designs. An Act for amending an Act passed in the fourth year of the reign of his late Majesty, intituled "An Act for the better administration of justice in his_ Majesty's Privy Council, and to extend its jurisdiction and powers." In part ; namely, — Sections two to five, both included. (a) iYoiJc— Sections six and seven of this Act are repealed by the Statute Law Revision (No. 2) Act, 1874. 40 & 47 Vict. c. 57. 331 13&14Yict.c. 104 [18.30.] 15 &16 Vict.c. 83 [1852.] 16 & 17 Vict. c. 5 [1853.] 16 & 17 Viet. c. 115 [1853.] 21 &22Yiet. c. 70 [1858.] 22 Vict. c. 13 [1859.] 24 & 25 Vict. c. 73 [1861.] 28 & 29 Vict. c. 3 [1865.] 33 & 34 Vict. 0.27 [1870.] 33 & 34 Vict. 0.97 [1870.] 38 & 39 Vict. 0.91 [1875.] 38 & 39 Vict. c. 93 [1875.] 39 & 40 Vict. 0. 33 [1876.] 40 &41 Vict. 0.37 [1877.] 43 & 44 Vict.c. 10 [1880.] 45 & 46 Vict. c. 72 [1882.] An Act to extend and amend the Acts relating to the copyriglit of designs. The Patent Law Amendment Act, 1852. An Act to substitute stamp duties for fees on pass- ing letters patent for inventions, and to pruvide for the purchase for the puldio use of certain indexes of specifications. An Act to amend certain provisions of the Patent Law Amendment Act, 1852, in respect of the transmission of certified copies of letters patent and specifications to certain offices in Edinburgh and Dublin, and otherwise to amend the said Act. An Act to amend the Act of the fifth and sixth years of her present ^lajesty, to consolidate and amend the laws relating to the copyright of designs for ornamenting articles or manufacture. An Act to amend the law concerning patents for inventions with respect to inventions for improve- ments in instruments and munitions of war. An Act to amend the law relating to the copyright of designs. The Industrial Exhibitions Act, 1865. The Protection of Inventions Act, 1870. The Stamp Act, 1870. In part ; namel}', — Section sixty-five, and in the Schedule the words and figures, "Certificate of the registration of a design . , £5 And see section 65." The Trade Marks Registration Act, 1875. The Copyright of Designs Act, 1875. The Trade Marks Registration Amendment Act, 1876. The Trade Marks Registration Extension Act, 1877. The Great Seal Act, 1880. In part ; namcty, — Section five. The Revenue, Friendly Societies, and National Debt Act, 1882. In part ; namely, — Section sixteen. 332 Construction and sliort title. PATENTS, ETC. AMENDMENT ACT, 1885. 48 & 49 Vict. c. 63. A71 Act to amend the Patents, Desiyns, and Trade Mar Jcs Act, 1883. [14th August, 1885.] Be it enacted by tlie Queen's most excellent Majesty, by and -witli the advice and consent of tlie Lords Spiritual and Temporal, and Com- mons, in tliis present Parliament assembled, and by the authority of the same, as follows : 1. This Act shall be construed as one Avith the Patents, Designs, and Trade Marks Act, 1883 (in this Act referred to as the principal Act). This Act may be cited as the Patents, Designs, and Trade Marks (Amendment) Act, 1885, and this Act and the principal Act may be cited together as the Patents, Designs, and Trade Marks Acts, 1883 and 1885. Amendment of sect. 5 of 46 & 47 Vict. c. 57. 5 & 6 W. 4, c. 62. 2. Whereas sub-section two of section five of the principal Act recjuires a declaration to be made by an applicant for a patent to the effect in that sub-section mentioned, and doubts have arisen as to the nature of that declaration, and it is expedient to remove such doubts : Be it therefore enacted that : The declaration mentioned in sub-section two of section five of the principal Act may be either a statutory declaration under the Statu- tory Declarations Act, 1835, or not, as may be from time to time prescribed [a). (a) See Foi-ms A. and Al. under the Patent Rules, 188.5, -whicli are of simple declarations {post, pp. .358, 359). The forms with the same designations, pre- scribed vmder the Patent Rules, 1883, r. 6, were of statutory declarations, but the references to the Act of 1835 were to be omitted if the declarations were to be made out of the United Kingdom. Amendment 3. Whereas under the principal Act, a complete specification is re- ef ss. 8, 9, and qixired (by section eight) to be left within nine months, and (by section v^p° t^^ ^^ nine) to be accepted within twelve months, from the date of applica- tion, and a patent is required by section twelve to be sealed within fifteen months from the date of application, and it is expedient to empower the comptroller to extend in certain cases the said times : Be it therefore enacted as follows : A complete specification may be left and accepted within such ex- tended times, not exceeding one month and three months respectively after the said nine and twelve months respectively as the comptroller may on payment of the prescribed fee allow, and where such extension of time has been allowed, a further extension of four months after the said fifteen months shall be allowed for the sealing of the patent ; and the principal Act shall have eif ect as if any time so allowed were added to the said periods specified in the principal Act. Vict. c. 57. Specrfica- tions, &c. not to be 4. Where an application for a patent has been abandoned, or become void, the specification or specifications and drawings (if any) accom- 48 & 49 Vict. c. 63. 333 panying or left in connection with such application, shall not at any published time be open to public inspection or be published by the comp- ^^^^'^'^ "P- troller(i). P^'^^^^' {l>) See sect. 8 of the X'rinciiml Act {ante, p. 309), aud the notes thereto as to abaudomneut of apijlications. 5 AVlicreas doubts liave arisen whether under the principal Act a Power to jiatent may lawfully be granted to several persons jointly, some or one grant patenta of whom only are or is the true and first inventors or inventor ; be it *" several therefore enacted and declared that it has been and is lawful under P';^"^""'' the i^rincipal Act to grant such a patent (c). ^^^ ^ ' (<•) See sects. 4 and 5 of the principal Act, ante, p. 309. As to what persons may apply for a patent, the devolution of the right to apply, and joinder of applicants by amendments, see ante, pp. 10 — 12. 6. In sub-section one of section one hundred and three of the prin- Amendment cipal Act, the words " date of the application " shall be substituted for of sect. I0;j of the words " date of the protection obtained." ^^ ^ ^^7 Vict. c. 57. PATENTS ACT, 1886. 49 & 50 Vict. c. 37. An Act to remove certain doubts respcctin(j the construction of tJie Patents, Designs, and Trade ]\Iarks Act, 1883, so far as respects the dra icings by which specif cations are required to be accompanied, a7id as respects exhibitions. [2.3th June, 1886.] Whereas by section five of the Patents, Designs, and Trade Marks 46 & 47 Vict. Act, 1883, specifications, whether provisional or complete, must be c. 57. accompanied by drawings if required, and doubts have arisen as to whether it is sufiicient that a complete specification refers to the di'awings by which the pro^visional specification was accomjianied, and it is expedient to remove such doubts : Be it tlierefore enacted by the Queen's most Excellent Majesty, by and witli the advice and consent of the Lords Spiritual and Tem- poral, and Commons, in tliis present Parliament assembled, and by the authority of the same, as follows : 1. This Act may bo cited as the Patents Act, 1880, and shall be Short title construed as one with the Patents, Designs, and Trade Marks Acts, ^^^ construc- 1883 and 188o, and, together with those Acts, may bo cited as the *^'^"' Patents, Designs, and Trade Marks Acts, 1883 to 188G. ^*'.'-- ■*" ^'^*^*- ° ' ' c. 0<. 48 & 49 Vict. 2. The requirement of sub-section foui' of section five of the Patents, c. 63. Designs, and Trade Marks Act, 1883, as to drawings shall not be The same drawings 334 PATENTS ACT, 1886. may accom- pany both specifications. Protection of patents and designs exhibited at international exhibitions. deemed to be insufficiently complied witli by reason only that instead of being accompanied by di-awings the comjdete specification refers to the drawings which, accompanied the provisional specification. And no patent heretofore sealed shall be invalid by reason only that the complete specification was not accompanied by drawings but referred to those which accompanied the provisional specification. 3. Whereas by section thirty-nine of the Patents, Designs, and Trade Marks Act, 1883, as respects patents, and by section fift^'-seven of the same Act as respects designs, provision is made that the exhibi- tion of an invention or design at an industrial or international exhibi- tion, certified as such by the Board of Trade, shall not prejudice the rights of the inventor or proprietor thereof, subject to the conditions therein mentioned, one of which is that the exhibitor must, before exhibiting the invention, design, or article, or publishing a description of the design, give the controller the prescribed notice of his intention to do so : And whereas it is expedient to provide for the extension of the said sections to industrial and international exhibitions held out of the United Kingdom, be it therefore enacted as follows : It shall be lawful for Her Majesty, by Order in Council, from time to time to declare that sections thirty-nine and fifty-seven of the Patents, Designs, and Trade Marks Act, 1883, or either of those sections, shall a2:»ply to any exhibition mentioned in the Order in like manner as if it were an industrial or international exhibition certified by the Board of Trade, and to provide that the exhibitor shall be relieved from the conditions, specified in the said sections, of giving notice to the controller of his intention to exhibit, and shall be so relieved either absolutely or upon such terms and conditions as to Her Majesty in Council may seem fit. 335 PATENTS RULES, 1883. By virtue of the provisions of the Piitonts, Designs, and Trade Marks Act, 1883, the Board of Trade do hereby make the following rules : — Short Title. 1. These rules may bo cited as the Patents Rules, 1883. Short title. COSIMENCEMEXT. 2. These rules shall come into operation from and immediately Commence- after the 31st day of December, 1883. ^'^^t- Interpretation. 3. In the construction of these rules, any words hei'ein used defined luterpreta- by the said Act shall have the meanings thereby assigned to them ^^°°- respectively. Fees. 4. The fees to bo paid under the above-mentioned Act, in addition Fees. to the fees mentioned in the Second Schedule thereto, so far as it relates to patents, shall be those specified in the list of fees in the First Schedule to these rules (a). Forms (i). 5. The Forms A, B, and C in the First Schedule to the said Act Forma, shall be altered or amended by the substitution therefor respectively Alterations, of the Forms A, Al, B, and C in the Second Schedule hereto. 6. — (1.) An application for a patent shall be made either in the Application. Form A or the Form Al set forth in the Second Schedule hereto as the case may be. (2.) The Form B in such schedule of provisional specification and Specification, the Form C of complete specification shall respectively be used. (3.) The remaining forms set forth in such schedide may, as far as Other forms, they are appHcable, be used in any proceedings under these rules. [n) To those fees are to be added those mentioned in the First Schedule to P. R. 1885 (p. 357, post). Sec Rule 3 of the Litter rules. {/)) Rules 5 and G are repealed as froiu the 11th day of Auprust, 1885. See P. R. ]885, rr. 4 and 7, ■wliich substitute other forms for the Forms A, Al, B and C in the Second Schedule hereto. 336 PATENTS RULES, 1883. Hours of business. Agency. Statement of address. Size, &c. of documents. Exercise of discretionary power by comptroller. Notice of hearing. Notice by applicant. Comptroller may require statement, &c. Decision to be notified to parties. Definition of "applicant." Prior and second appli- cant may attend liear- General. 7. The Patent Office sliall be open to tlie public every week-day during the hours of ten and four, except on the days and times following' : — Christmas Day ; Good Friday ; The day observed as her Majesty's birthday ; The days observed as days of public fast or thanksgiving, or as holida3-s at the Bank of England. 8. An application for a patent must be signed by the applicant, but all other communications between the applicant and the comptroller and all attendances by the applicant upon the comptroller may be made by or through an agent duly authorized to the satisfaction of the comptroller, and if he so recj[uire resident in the United Kingdom. 9. The application shall be accompanied by a statement of an ad- dress to which all notices, requisitions, and communications of every kind may be made by the comptroller or by the Board of Trade, and such statement shall thereafter be binding upon the applicant unless and until a substituted statement of address shall be furnished by him to the comptroller. He may in any particular case require that the address mentioned in this rule be in the United Kingdom. 10. All documents and copies of documents sent to or left at the Patent Office or otherwise furnished to the comptroller or to the Board of Trade shall be written or printed in large and legible characters in the English language upon strong wide ruled paper (on one side only), of a size of 13 inches by 8 inches, leaving a margin of two inches on the left-hand part thereof, and the signature of the applicants or agents thereto must be written in a large and legible hand. Duplicate documents shall at any time be left, if reqiiired by the comptroller. 11. Before exercising any discretionary power given to the comp- troller by the said Act adversely to the applicant for a patent or for amendment of a specification, the comptroller shall give ten days' notice, or such longer notice as he may think fit, to the applicant of the time when he may be heard personally or by his agent before the comptroller. 12. Within five days from the date when such notice would be de- livered in the ordinary course of post, or such longer time as the comptroller may appoint in such notice, the applicant shall notify to the comptroller whether or not he intends to be heard upon the matter. 13. Whether the applicant desires to be heard or not, the comptroller may at any time require him to submit a statement in writing within a time to be notified by the comptroller, or to attend before him and make oral explanations with respect to such matters as the comptroller may require. 14. The decision or determination of the comptroller in the exercise of any such discretionary power as aforesaid shall be notified by him to the applicant, and any other person affected thereby. 15. The term " applicant" in Pules 11, 12 and 13 shall include an applicant whose specification bears a title the same as or similar to that of the specification of a prior aj)plicant, and has been reported on by the examiner. 16. Such prior and second applicant respectively may attend the hearing of the cj^uestion whether the invention comprised in both applications is the same, but neither party shall be at liberty to inspect the specification of the other. PATENTS RULES, 1883. 337 17. Any person desirous of cxliibitiiig an invention at an industrial Industrial or or international exhibition, or of publi.sliing any doscripti(jn of the Intemational invention during the period of the holding of the exliibition, or of ^^^ itions. using tlio invention for the purpose of the exhibition in the place where the exliibition is ]ield, shall, after having obtained from the Board of Trade a certificate that the exhibition is an industrial or international one, give to the comptroller seven days' notice of his intention to exhibit, publish, or use the invention, as the case may be. For the purpose of identifying the invention in the event of an application for a patent being subsequently made the applicant shall furnish to the comptroller a brief description of his invention accom- panied, if necessary, b}^ drawings, and such other information as the comptroller may in each case require. 18. Any document for the amending of which no special provision is Power of made by the said Act may be amended, and any irrcgidarity in pro- amendment, cedure, which in the opinion of the comptroller may be obviated '^'^• without detriment to the interests of any person, may be corrected, if and on such terms as the comptroller may think fit. 19. Any application, notice, or other document authorized or required Documents Ly to be left, made or given at the patent office or to the comptroller or to P^st- any other person under these Ivules may be sent by a prepaid letter through the post, and if so sent shall be deemed to have been left, made or given respectively at the time when the letter containing the same would be delivered in the ordinary course of post. In proving such service or sending it shall be sufficient to prove that the letter was properly addressed and put into the post. 20. Affidavits may, except where otherwise prescribed by these Affidavits. Rules, be used as evidence in any proceedings thereunder when sworn to in any of the following ways, viz. : — (1.) In the United Kingdom before any person authorized to administer oaths in the Supreme Court of Judicature or before a justice of the peace for the county or place where it is sworn or made. (2.) In any place in the British dominions out of the United Kingdom before any Court, judge, or justice of the peace or any person authorized to administer oaths there in any Court. (3.) In any place out of the British dominions before a British minister, or person exercising the functions of a British minister, or a British consul, vice-consul, or other person exercising the functions of a British consul, or a notary public, or before a judge or magistrate. 21. "\Miere any statutory declaration prescribed b}' these rules, or Statutory used in any proceedings thereunder, is made out of tlie United King- declarations, dom, the words " and by virtue of the Statutory Declarations Act, 1835," must be omitted, and the declaration shall (unless the context otherwise requires) be made in the manner prescribed in Eide 20, sub- section (3) (i). ApPLICATIOX with rilOVISIOXAL OR COMPLETE SpECIFICATIOX. 22. Applications for a patent sent by prepaid letter through the Order of post shall, as far as may be practicable, be opened and numbered in the recordinj? ■^ ' ^ ir 'J. apiihcations. (i) See now sect. 2 of Act of 1885, ante, p. 332. M. Z 338 PATENTS RULES, 1883. Application for separate patents by way of amendment. Application by representa- tive of deceased inventor. Notice and advertisement of acceptance. Inspection on acceptance of complete specification. order in wliicli tlie letters containing tlie same liave been respectively delivered in the ordinary course of post. Apjilifations left at the patent office otherwise than through the post shall be in like manner nnmbered in the order of their receipt at the patent office. 23. Where a person making application for a patent includes therein by mistake, inadvertence, or otherwise, more than one invention, he may, after the refusal of the comptroller to accept such application, amend tlie same so as to apply to one invention only, and may make application for separate patents for each such invention accordingly. Ever}' such application shall bear the date of the first application, and shall, together therewith, be proceeded with in the manner pre- scribed by the said Act and by these Exiles as if every such application had been originally made on that date for one invention only. 24. An application for a patent by the legal representative of a person who has died possessed of an invention shall be accompanied by an official copy of or extract from his will or the letters of adminis- tration granted of his estate and effects in proof of the applicant's title as such legal representative. 25. On the acceptance of an a2:)plication with a provisional or complete specification the comptroller shall give notice thereof to the apphcant, and shall advertise such acceptance in the official journal of the patent office (c). 26. Upon the publication of such advertisement of acceptance in the case of an application with a complete specification the application and specification or specifications with the drawings (if any) may be in- spected at the patent office upon payment of the prescribed fee (r/). Communica- tion from abroad. Application on Communication from Abroad. 27. An application for a patent for an invention communicated from abroad shall be made in the Form A 1 set forth in the Second Schedule hereto (e). Size of draw- ing's. Copies of dra'wino's. Sizes and Methods of Preparing Drawings accompanying Proyisional or Complete Specifications (/). 28. The drawings accompanying provisional or complete specifica- tions shall be made upon half-sheets or sheets of imperial drawing paper, to be within a border line of 19 inches by 12 inches, or 27 inches by 19 inches, with a margin of half -an -inch aK round. 29. A copy of the drawings will be required upon rolled imperial drawing paper or upon thin Bristol board of the same dimensions as the original drawing or drawings. All the lines must be absolutely black, Indian ink of the best quality to be used, and the same strength or colour of the ink oiaintained throughout the drawing. Any shading must be in lines clearly and distinctly drawn and as open as is con- (c) See sect 10 of the Act of 1883, p. 310, a»tc. {d) Ibid. \c) See now substitiited Form A 1 {jMst, p. 3o9), under P. R. 1885, r. .5 {post, p. 356). As to such applications, see ante, p. 13. (/) See sect. 2 of Act of 1886, ante, p. 333. The above rules, 28— 30, were repealed by Revised Rules of 16th of September, 1886. Copies of the latter are given gratuitously at the Sale branch of the Patent Office. PATENTS RULES; 1883. 339 sistent with the required effect. Section lines should not be too closely drawn. No colour must be used for any purpose upon tlie copy of the drasvinp^s. All letters and figures of reference must be bold and distinct. The border lino should be one fine line only. The drawiugs must not be folded, but must be delivered at the patent office either in a perfectly flat state or rolled upon a roller so as to be free from creases or breaks. 30. AV^here a complete specification is left at the patent office after a provisional specification has been accepted the complote specification and drawing or drawings accompanying the same, as well as the copy thereof, must be prepared in accordance with Eules 10, 28, and 29. Illustrated Jouex^u- (/). 31. Every applicant for the grant of a patent shall, in addition to Additional the drawings to be furnished with his complete specification, furnish tlie drawin^r to bo comptroller with a drawing illustrative of the feature or features of furnished, novelty constituting his invention. Such drawing must be prepared in the manner prescribed for the copy of the original drawing or drawings accompanying the specification, but must not cover a space exceeding 16 square inches. The drawing must be accompanied by a concise explanatory statement on foolscap paper and legibly written or printed. Oppositiox to Grants of Patents {g). 32. A notice of opposition to the grant of a patent shall state the Notice of ground or grounds on which the person giving such notice (hereinafter cpposition. called the opponent) intends to oppose the grant, and shall be signed by him. Such notice shall state his address for service in the United Kingdom. 33. On receipt of such notice a copy thereof shall be furnished by Copy for the comptroller to the applicant. appUcant. 34. Where the ground or one of the grounds of opposition is that Particulars of the invention has been patented in this country on an application of P'ior patent, prior date, the title, number, and date of the patent granted in such prior application shall be specified in the notice. 35. Within fourteen days after the expiration of two months from Opponent's the date of the advertisement of the acceptance of a complete spccifi- evidence, cation, the opponent shall leave at the patent office statutory declara- tions in support of his opposition, and deliver to the applicant a list thereof. 36. Within fourteen days from the delivery of such list the appli- Applicant's cant shall leave at the patent office statutory declarations in answer, evidence, and deliver to the opponent a list thereof, and within seven days from such delivery the opponent shall leave at the patent office liis statutury declarations in reply, and deliver to the applicant a list thereof. Such Evidence iu last-mentioned declarations shall be confined to matters strictly iu reply. repl}'. Copies of the declarations mentioned in this and the last-preceding rule may be obtained either from the patent office or from the opposite party. (/) This rule has been repealed by Revised Rules of IGth of September, 18SC. See la-t note. (y) See sect. 33 of the A<'t of 188:?, p. 318, auir. 340 PATENTS RULES, 1883. Closing of evidence. Notice of licurin":. Disallowance of opposition in certain cases. Decision to be notified to parties. Payment of fees of 50/. and 100/. for continuance of patent. As to patent granted before com- mencement of act. Payment of annual fees in lieu of 50/. and 100/. Certificate of payment. 37. No further evidence shall be left on either side except by leave of the comptroller upon the written consent of the parties duly notified to him, or by special leave of the comptroller on application made to him for that purpose. 38. Either party making such application shall give notice thereof to the opposite party, who shall be entitled to oppose the applica- tion. 39. On the completion of the evidence the comi^troller shall appoint a time for the hearing of the case, and shall give to the parties seven days' notice at the least of such appointment. 40. On the hearing of the case no opposition shall bo allowed in respect of any ground not stated in the notice of ojiposition, and where the ground or one of the grounds is that the invention has been patented in this country on an application of prior date, the ojiposition shall not be allowed upon such ground unless the title, number, and date of the patent granted on such prior application shall have been duly specified in the notice of opposition. 41. The decision of the comptroller in the case shall be notified by him to the parties. Ceetii'icates of Payment or Eenewal. 42. If a patentee intends at the expiration of the fourth or eighth year from the date of his patent to make the prescribed payment for keeping the same in force, he shall seven days at least before such expiration give notice to the comptroller of such intention, and shall, before the expiration of such fourth or eighth year, as the case may be, leave at the patent ofiice a form of certificate of payment, duly stamj^ed, subject as hereinafter provided, with the prescribed fee of 50/. or 100/., as the case may be. 43. In the case of patents granted before the commencement of the said Act, the above rule shall be read as if the words " seventh year " were therein written instead of the words " eighth year." 44. If the patentee intends to pay annual fees in lieu of the above- mentioned fees of 60/. and 100/., he shall seven days at least before the expiration of the fourth and each succeeding year during the term of the patent, until and inclusive of the 1 3th year thereof, give notice to the comptroller of such intention, and shall, before the expiration of such respective periods as aforesaid, leave at the patent office a form of certificate of payment, duly stamped with the fee prescribed to be paid at such periods respectively. 45. On due compliance with these rules, and as soon as may be after such respective periods as aforesaid, or any enlargement thereof respectively duly granted, the comptroller shall give to the patentee a certificate that the prescribed payment has been duly made. Enlargement of time for payments. Enlargement op Time. 46. An application for an enlargement of the time for making a prescribed payment shall state in detail the circumstances in which the patentee by accident, mistake, or inadvertence has failed to make such payment, and the comptroller may require the j)atentee to substantiate by such proof as he may think necessary the allegations contained in the application for enlargement. TATENT.s jai.i:8, 1883. 341 47. The time prescribed ty these Rules for doing any act, or taking In other cases, any proceedings tliereunder, may 1)0 eidargod Ly the ooniptrollor if ho think iit, and ujion sneli notice to otlier parties, and proceedings thereon, and npon sudi terms, as lie may direct. Amexdmext of Specificatiox, 48. A request for leave to amend a specification shall be signed by Reciuest for the applicant or patentee and accompanied by a copj' of the original It-ave to specification and drawings, sliowing in red ink the proposed amend- ''"^''^ ment, and shall bo advertised by ])ublication of the rerpiest and the -A^'^^'^rtise- nature of the proposed amendment in the official journal of the patent office, and in such other manner (if any) as the comptroller may in each case direct. 49. A notice of opposition to the amendment sliall state the ground Nuticc of or grounds on which the person giving such notice (hereinafter called opposition, the opponent) intends to oppose tlio amendment, and sliall be signed by him. Such notice shall state his adcU'ess for service in the Ignited Kingdom. 50. On receipt of such notice a copy thereof shall be furni.shed by the Copy for the comptroller to the applicant or patentee, as the case may be (herein- applicant, after called the applicant). 51. Within fourteen days after the expiration of one month from the Opponent's first advertisement of the application for leave to amend, the opponent evidence, shall leave at the patent olFice statutory declarations in support of his opposition and deliver to the applicant a list thereof. 52. Upon such declarations being left, and such list being delivered. Further pro- the provisions of Eules 3G, 37, 38, and 39 shall apply to the case, and ceedings. the further proceedings therein shall be regulatecl in accordance with such provisions as if they were here repeated. 53. The decision of the comptroller in the case shall be notified by Decision to him to the parties. ^^ notified to ■^ parties. 5i. AVhere lea\e to amend is given the applicant shall, if the comp- Roqnircmenta troller so require, and within a time to bo limited by him, leave at tlie thereon, patent oflice a new specification and drawings as amended, to be pre- pared in accordance with Eules 10, 28, and 29. 55. Where a request for leave to amend is made by or in pursuance Leave by of an order of the Court or a judge, an official or verified cojiy of the order of order shall be left with the recj^uest at the patent office. court. 56. Every amendment of a specification shall be forthwith advertised Advertise- by the comptroller in the official journal of the patent office, and in such ^"^11* of other manner (if any) as the comptroller may direct. Compulsory Licexces (/a). 57. A petition to the Board of Trade for an order upon a patentee to Petition for grant a licence shall show clearly the nature of the petitioner's interest, compidsory and the ground or grounds upon which he claims to be entitled to p''""'' °* relief, and shall state in detail the circumstances of the case, the terms upon which he asks that an order may be made, and the purport of such order. {h) See sect. 22 of the Act of 1883, p. 313, ante. 342 PATENTS KULES, 188^. To be left with evidence at patent office. Directions as to further procecdino's imless petition refused. Procedure. Petitioner's evidence. Patentee's evidence. Evidence in reply. Further proceedings. 58. TliG petition and an examined copy thereof shall be left at tlie patent office, accompanied hj the affidavits, or statutory declarations, and other documentary evidence (if any) tendered by the petitioner in proof of the alleged default of the patentee. 59. Upon perusing the petition and evidence, unless the Board of Trade shall be of opinion that the order should be at once refused, they may require the petitioner to attend before the comptroller, or other person or persons appointed by them, to receive his or their directions as to further proceedings upon the petition. GO. If and when a primu facie case for relief has been made out to the satisfaction of the Board of Trade, the petitioner shall, upon their requisition, and on or before a day to be named by them, deliver to the patentee copies of the petition and of the affidavits or statutory declarations and other documentary evidence (if any) tendered in support thereof. 61. Within fourteen days after the day of such delivery the patentee shall leave at the patent office his affidavits or statutory declarations in opposition to the petition, and deliver copies thereof to the peti- tioner. G2. The petitioner within fourteen days from such delivery shall leave at the patent office his affidavits, or statutory declarations in reply, and deliver copies thereof to the petitioner ; such last-mentioned affidavits or declarations shall be confined to matters strictly in reply. 63. Subject to any further directions which the Board of Trade may give the parties shall then be heard at such time, before such person or persons, in such manner, and in accordance with such procedure as the Board of Trade may, in the circumstances of the case, direct, but so that full opportunity shall be given to the patentee to show cause against the petition. Eegister of Patents (?'). 64. Upon the sealing of a patent the comptroller shall cause to be entered in the register of patents the name, address, and description of the patentee as the grantee thereof, and the title of the invention. 65. Where a person becomes entitled to a patent or to any share or interest therein, by assignment, either throughout the United Kingdom and the Isle of Man, or for any place or places therein, or by trans- mission or other operation of law, a request for the entry of his name in the register as such complete or partial proprietor of the patent, or of such share or interest therein, as the case may be, shall be addressed to the comptroller, and left at the patent office. 66. Such request shall in the case of individuals be made and signed by the person requiring to be registered as proprietor, or by his agent duly authorized to the satisfaction of the comptroller, and in the case of a body corporate by their agent, authorized in like manner. Particulars to 67. Every such request shall state the name, address, and descrip- be stated in tion of the person claiming to be entitled to the patent, or to any request. Entry of arant. Kequest for entry of svib- sequent pro- prietorship. Signature of request. (i) The sections of the principal act referrmg to registration are sects. 23, 85, 87 to 90, and 93. PATENTS RULES, 1883. 343 share or interest therein, as the case naay be (hereinafter called the claimant), and the particulars of the assignment, transmission, or other operation of law, Ly virtue of which he requires to be entered in the register as proprietor, so as to show the manner in which, and the person or persons to whom, the patent, or sucli share or interest therein as aforesaid, has been assigned or transmitted. 68. Every assignment and every other document containing, giving Production of effect to, or being evidence of, the transmission of a patent or affecting documents of the proprietorship thereof as claimed by such request, except such q^^t'" ^^f^ documents as are matters of record, shall be produced to the comp- troller, together with the request above prescribed, and such other proof of title as he may require for his satisfaction. As to a document which is a matter of record, an official or certilied copy thereof shall in like manner be produced to the comptroller. 69. There shall also be left with the reqiiest an examined copy of Copies for the assignment or other document above required to be produced. patent office. As to a document which is a matter of record, an official or certified copy shall be left with the request in lieu of an examined copy. 70. A body corj)orate may be registered as proprietor by its cor- ^oite, pp. 11 — 13, and sect. 5 of the Act of 1883, ante, p. 308. PATENTS RULES, 1885. 3j7 schedule hereto respectively, may, as far as they are applicable, be used in any proceedings under these Rules. Extension of Time. 6. An application for extension of time for leaving or accepting a Extension of complete sjiecification shall be in writing and shall state in detail in time for what circumstances and upon what grounds such extension is applied l^»^'i°7 ^^^ for, and the comptroller may rei^uiro the applicant to substantiate ^^^P^^ such allegations by such proof as the comptroller may think necessary, specification. Eepeal. 7. Rules 5 and 6 of the Patents Rules, 1883, shall be and they are Ecpeal. hereby rejicalod as from the Htli day of August, 1885, without pre- judice, nevertheless, to any application then pending. (Signed) Richmond axd Gordox, President of the Board of Trade. 1.5th August, 1885. FIRST SCHEDULE. (wi) £ s. (I. No. 39. — For enlargement of time for filing comj)lete speci- fication not exceeding one month 2 No. 40. — For enlargement of time for acceptance of complete specification — Not exceeding one month 2 ,, two months 4 ,, three months (> (t 15th August, 1885. (Signed) Richmond and Gordon, President of the Board of Trade. Approved. (Signed) Sidney Hekbekt, W. 11. Walrond, Lords Commissioners of her Majesty's Treasury. 15th August, 1885. (in) For Nop. 1—38. sec First Schedule to V. E. 1883, p. 344, ante. Both sets of fees are in addition to those prescribed in the Second Schedule (p. 329, antt) to the principal Act. Sec Rule 3 of the above Rules (1885). 358 PATENTS RULES, 1885. SECOND SCHEDULE. Patents, Designs, and Trade Marks Acts, 1883 and 1885. [patent.] Form A ('). Applicatiox for Pate>'t. (a) , do hereby declare that in possession of an invention for {b) that (c) the true and first inventor — thereof; and that the same is not in use by any other person or persons to the best of knowledge and belief; and humbly pray that a Patent may be granted to for the said invention. Dated day of 188—. {d) . Note. — Where application is made through an Agent (Eules 8 and 9 of Patents Eules, 1883), the authorization on the back (if used) should be signed by the applicant or applicants. (a) Here insert name and full address and calling of applicant or applicants. (b) Here insert title of invention. (f) In the case of more than one applicant, state whether all, or if not, who is or are the inventor or inventors. {d) To be sig-ned by applicant or api^licants. For the convenience of applicants, suggested forms of authorization to an Agent and statement of address respectively are printed below. They are not, however, to be deemed to be binding iipon applicants, no particular form of these documents having been prescribed by the Act or Rules. (1.) Where application is made through an Agent {Rules 8 and 9 of Patents Rules, 1883). hereby appoint of to act as Agent respect of the within application for a Patent, and request that all notices, requisitions, and communications relating thereto may be sent to such Agent at the above address. day of 188—. * To be signed by applicant or applicants. (2.) Where applicatio7i is made without an Agent {Rule 9 of Patents Rules, 1883). hereby request that all notices, requisitions, and communi- cations in respect of the within application may be sent to at day of 188—. t t To be signed by applicant or applicants. (') For reference to this Form, see sect. 5, sub-s. 1, of the principal Act, ante, p. 308. SECOND SCHEDULE. — FORMS. 359 Patents, Designs, and Trade Marks Acts, 1883 and 1885. [patent.] Form Al ('). Application for Patent fob Inventions Communicated from Abroad. ,^j^^ c- ---<-«. I (o) of in the county of do hereby declare '- that I am in possession of an invention for {Jj) which invention has been communicated to me from abroad by (c) that I claim to bo the true and first inventor thereof ; and that tlie same is not in use within this reahn by any other person or persons to the best of my knowledge and behef ; and I humbly pray that a Patent may be granted to me for the said invention. Dated day of 188—. (r/) . Note. — Whore application is made through an Agent (Eules 8 and 9 of Patents Eules, 1883) the authorization on the back (if used) should bo signed by the applicant or applicants. (rt) Here insert name and full address and calling of ai^plicant. {/() Here insert title of invention. (t) Here insert name, address, and calling of commimicant. \(l) To be signed by applicant or applicants. For the convenience of applicants, suggested forms of authorization to an Agent and statement of address respectively arc printed below. They arc not^ however, to be deemed to be bindiny tqnm applicants, no particular form of these documents haviny been prescribed by the Act or Rules. (1.) Where application is made thronyh an Ayent {Rales 8 and 9 of Patents Rules, 1883). hereby appoint of to act as Agent in respect of the within application for a Patent, and request that all notices, requisitions, and communications relating thereto may be sent to such Agent at the above address. day of 188—. * To be signed by applicant or applicants. (2.) Where aj}plication is made uithout an Ayent {Rule 9 of Patents Rules, 1883). hereby rerpiest that all notices, requisitions, and communi- cations in respect of the within application may bo sent to at day of 188—. t • t To be signed by applicant or applicant;^ (1) For reference to this Form, see sect. 5, sub-s. 1, of the principal Act, anlc, D. 308, and for observations on snch ajiplicatious, tee aiilr, pp. 11 — 13. 360 PATENTS KULES, 1885. To be issued with form A or Al. Patents, Designs, and Trade Marks Acts, 1883 and 1885. Porm B {'). Provisional Specification. (To be furnisbed in duplicate.) (a) , (^i) , do hereby declare the nature of this inven- tion to be as follows (c) : . Note. — No stami^ is required on this document, which must form the commencement of the Provisional Specitication ; the continuation to be upon wide-ruled foolscap paper (but on one side only) with a, margin of two inches on left hand of paper. The Provisional Speci- fication and the " DupHcate " thereof must be signed by the applicant, or his agent, on the last sheet, the date being fu'st inserted as follows : — "Dated this day of , 18 — ." {a) Here insert title as in declaration. (J) Here insert name, and full address and calling of applicant or applicants as in declaration. (c) Hero insert short description of invention. Patents, Designs, and Trade Marks Acts, 1883 and 1885. "Where provisional specification has been left, quote No. and date. No. Date [patent.] Form C (-). Complete Specieication. (To be furnished in duphcate — one unstamped.) (a) , {b) , do hereby declare the nature of this in- vention and in what manner the same is to be performed, to be par- ticularly described and ascertained in and by the following state- ment (c) : . Note. — This document must form the commencement of the Com- plete Specification ; the continuation to be upon wide-ruled foolscap paper (but on one side only) with a margin of tAVO inches on left hand of paper. The Complete Specification and the " DupHcate " thereof must be signed by the appHcant, or his agent, on the last sheet, the date being first inserted as follows : — "Dated this day of , 18—." («) Here insert title as in declaration. {b) Here insert name, and full address, and caUing of applicant or applicants as in declaration. (c) Here insert full description of iii\entioTi wJiich must end with a distinct state- ment of claim or claims, in the folloiving form : "Having now particularly described and ascertained the nature of my said Invention, and in what manner the same is to be performed, I declare that what I claim is : — "(1.) "(2.) "(3.) Here state distinctly the featru-es of novelty claimed. (1) As to provisional specifications, see sects. 5 — 15 of the principal Act, and pp. 4, 12, 13, ante. (-) As to complete specifications, see sects. 5—15 of the principal Act, and a)ite, pp. 5, \i, 15. SECOND SCHEDULi:. — FORMS. Patents, Designs, and Trade Marks Acts, 1883 and 1885. [patent.] Form U ('). Form of Application for Extension of Time for leaving a Complete Specification. Sir, 361 to hereby apply for extension of time for one month in which leave a complete specification upon application No. dated The circumstances in and grounds upmi wIiIcIl tlii.s extension is ap- plied for are as follows {(t): — Sir, Your obedient Servant, w • To the ComptroUer, Fatcjif OJficc, 25, Southampton Buildings, CJianccnj Lane, London, W.C. (a) See Eule G of Patents Rules, 1885. (i) To be signed by applicant or applicants or his or their agent. Patents, Designs, and Trade Marks Acts, 1883 and 1885. [patent.] Form V (^). Form of Application for Extension of Time for Acceptance of a Complete Specification. J hereby apply for extension of time for month — for the acceptance of tlic complete specification upon ax).plication No. dated . , . . . . The circumstances in and grounds upon which this extension is ap- plied for are as foUows(«) : — Sir, Your obedient Servant, {b) . To the ComptroUer, Patent Office, 25, Southampton Buildings, Chancery Lane, London, W.C. (a) Sec Rule G of Patents Rules, 1885. (b) To be signed by ai)plicant or applicants, or his or their agent. (1) As to time for leaving a complete specification, see sect. 8 of the principal Act. ante, p. 309. Extensions are authorised imdcr sect. 3 of the Amendment Act of 1885, ante, p. 332. . • , . i. (•-) As to time for acceptance, see sect. 9, sub-s. 4 of the principal Act, ante, p. 309. Extensions of the time are authorized under sect. 3 of the Amendment Act, 1885, ante, p. 332. 362 PRIVY COUNCIL RULES. EuLES to he observed in Proceedings before the Judicial Committee of the Privy Council under the Act of the 5 S^' 6 IJlll. 4, intituled ^' An Act to amend the Law touching Letters Patent for Inventions.^' (Cap. 83 {a).) EULE l{b). A PARTY intending to apply by petition under sect. 2 of tlie said Act, shall give public notice by advertising in the " London Gazette " three times, and in three London papers, and tliree times in some country paper published in the town where or near to which he carries on any manufacture of anything made according to his sj)ecification, or near to or in which he resides, in case he carries on no such manufacture, or published in the county where he carries on such manufacture, or where he lives, in case there shall not be any paper published in such town, that he intends to petition his Majesty under the said section, and shall in such advertisements state the object of such petition, and give notice of the day he intends to apply for a time to be fixed for hearing the matter of his petition (which day shall not be less than four weeks from the date of the publication of the last of the adver- tisements to be inserted in the "London Gazette"), and that on or before such day notice must be given of any ojiposition intended to be made to the petition ; and any person intending to oppose the said application shall lodge notice to that effect at the Council Office, on or before such day so named in the said advertisements, and having lodged such notice shall be entitled to have from the petitioner four weeks' notice of the time appointed for the hearing. EuLE II. A party intending to apply by petition under sect. 4 of the said Act, shall, in the advertisements directed to be published by the said sec- tion, give notice of the day on which he intends to apply for a time to be fixed for hearing the matter of his petition (which day shall not be less than four weeks from the date of the publication of the last of the advertisements to be inserted in the " London Gazette "), and that on or before such day caveats must be entered ; and any person intend- ing to enter a caveat shall enter the same at the Council Office, on or before such day so named in the said advertisements, and having entered (rt) These rules, except Eule I. (see next note), are stiE in force, as no rules have been made under sect. 25, suh-s. 6, of the Patents, &c. Act, 1883 {ante, p. 314). The Act of 5 & 6 Will. 4, c. 83, is repealed by the Act of 1883 (see Third Schedule, p. 330, aide). {b) This rule related only to sect. 2 of the Act of Will. 4, as to proceedings for confirmation of letters patent. The new Acts do not provide for confirmation. riavY COUNCIL kules. such caveat, shall bo entitlod to have from the petitioner four weeks' notice of the time appointed for the hearing. Note.— This rule refers to proceedings for the prolongation or exten- sion of letters patent. See sect. 25 of the Act of 1883 (p. 314 ante), as to the extension of the term in letters patent, which now takes the place of sect. 4 of the Act of Will. 4. EULE III. Petitions under sects. 2 and 4 of the said Act must he presented within one week from the insertion of the last of the advertisements reciuircd to he published in the " London Gazette." Note. — See previous notes as to sections 2 and 4 of the Act of Will. 4. EULE IV. All petitions must be accompanied with aflftdavits of advertisements having been inserted according to the provisions of sect. 4 of the said Act(c), and the 1st and 2nd of these Kulcs, and the matters in such affidavits may be disputed by the parties opposing upon the hearing of the petitions. EuLE V. All persons entering caveats under sect. 4 {d) of the said Act, and all parties to any former suit or action touching letters patent in respect of which petitions shall have been presented under sect. 2 (e) of the said Act, and all persons lodging notices of opposition under the 1st of these Eules, shall respectively be entitled to be served with copies of petitions presented under the said sections, and no application to fix a time for hearing shall be made without affidavit of such service. EULE YI. All parties served with petitions shall lodge at the Council Office within a fortnight after such service, notice of the grounds of their objections to the granting of the prayers of such petitions. EuLE VII. Parties may have copies of all papers lodged in respect of any api)lication under the said Act at their own expense. EuLE VIII. The Eegistrar of the Privy Council, or other officer to whom it may be referred to tax the costs incurred in the matter of any petition presented under the said Act(/) shall allow or disallow in his_ discre- tion all payments made to persons of science or skill examined as witnesses to matters of opinion chielly. 363 (c) For that section, now read soot. 20 of the Act of 1883, ante, p. 314. \(l) Sect. '25 of the Act of 1883 (p. 31 1, ante) must be hero read for sect. 4 of tho Act of Will. 4. {e) Sec pre^•ious notes as to this section. (/) Or now, xmder the Act of 1883. 30 i PRIVY COUNCIL RULES. EULE IX. A party applying for an extension of a patent under sect. 4 of the said Act (y) must lodge at the Council Office six printed copies of the specification, and also four copies of the balance-sheet of expenditure and receipts relating to the patent in question, which accounts are to be proved on oath before the lords of the committee at the hearing. In the event of the applicant's specification not having been j^rinted, and if the expense of making six copies of any drawing therein con- tained or referred to would be considerable, the lodging of two copies only of such specification and drawing will be deemed sufficient. . All copies mentioned in this rule must be lodged not less than one. week before the day fixed for hearing the application. The Judicial Committee will hear the Attorney-General or other counsel on behalf of the Crown, against granting any application made under either the 2nd or 4th section of the said Act, in case it shall be thought fit to oppose the same on such behalf. {[/) See previous notes as to tliis section. INTERXATIOXAL C0X^T:XTI0N". 365 INTERNATIONAL CONVENTION (a). Article I. The governments of Belgium, Brazil, Spain, France, Guatemala, Italy, Holland, Portugal, Salvador, Servia and Switzerland, constitute them- selves into an Union for the protection of industrial property {b). Article II. The subjects or citizens of each of the contracting states shall in all other states of the Union as regards jiatents .... enjoy the advan- tages that their respective laws now grant, or shall hereafter grant, to their own subjects or citizens. Consequently they shall have the same protection as the latter, and the same legal recourse on any infringement of their rights, provided they observe the formalities and conditions imposed on subjects or citizens by the internal legislation of each state. Article III. Subjects or citizens of states not forming part of the Union, who are domiciled or have industrial or commercial establishments on the territory of any of the states of the Union, shall be assimilated to the subjects or citizens of the contracting states. Article IV. Any person who has duly registered an apj)lication for a patent . . . in one of the contracting states, shall enjoy as regards registration in the other states, and reserving the rights of third parties, a right of priority during the periods hereinafter stated. Consec|ucntly subsequent registration in any of the other states of the Union before expiry of these periods, shall not be invalidated through any acts acconqdished in the interval cither, for instance, by registration, by publication of the invention, or the working of it by a third party . . . The above-mentioned terms of priority shall be six months for patents .... A mouth longer is allowed for countries beyond sea. Article Y. The introduction by the patentee into the country where the patent has been granted of objects manufactured in any of the states of the Union, shaU. not entail forfeiture. (rt) Reference in made to this at p. 3G, ante. {//) Tu these arc now to he added Great Britain, Norway, Sweden, San Domiugo, Tunis, and the colony of Queenshmd. See iViticle XVI., post, as to the adliesion to the Union of States not parties to the Couveutiou. Salvador has since withdra^vn. Ecuador joinetl and afterwards withdrew. 306 INTERNATIONAL CONVENTION. Nevertheless the patentee sliall remain bound to -^ork his patent in conformity with the laws of the country into which ho introduces the patented objects. Article XI. The high contracting parties agree to grant temporary protection to patentable inventions . . . for articles appearing at official or officially recognized international exhibitions. Ar.TiCLE XII. Each of the high contracting parties agrees to establish a special government department for industrial property and a central office for communication to the public of patents .... (c). Article XIII. An international office shall be organized under the name of " Bureau International de I'Union pour la Protection de la Proj)riete Industrielle." This office, the expense of which sliall be defrayed by the Govern- ments of all the contracting states, shall be placed under the high authority of the Central Administration of the 8wiss Confederation, and shall work under its supervision. Its functions shall be deter- mined by agreement between the states of the Union (d). Article XIV. The present Convention shall be submitted to periodical revisions with a view to introducing improvements calculated to perfect the system of the Union. To this end conferences shall be successively held in each of the contracting states by delegates of the said states. Article XV. It is agreed that the high contracting parties respectively reserve to themselves the right to make separately as between themselves special arrangements for the protection of industrial property, in so far as such arrangements do not contravene the provisions of the present Convention. Article XVI. States which have not taken part in the present Convention shall be permitted to adhere to it at their rec[uest. This adhesion shall be notified diplomatically to the Government of the Swiss Confederation, and by the latter to all the others. It shall imply, de Jure, accession to all the clauses and admission to all the advantages stipulated by the present Convention. (c) See next note. {(i) The International Office is at Berne, Switzerland, from which issues the monthly periodical, "La Propriete ITniverselle. " The yearly subscription, includ- ing postage, for all countries within the Postal Union is 5 francs CO centimes, and should be forwarded to MM. Jent and Reinert, Imprimeurs, Berne, INTERNATIONAL CONVENTION. Article XVII. The carrying out of tlio reciprocal engagements contained in the jiresent Convention is suhordinatfd in so far as npoossary to the observance of tlio formalities and rules established Ly the constitu- tional laws of those of the liigh contracting parties, who are obliged to elicit their application, -wliich they engage to do, as early as possible. Article XYIII. The present Convention shall come into operation within one month after exchange of ratifications, and shall remain in force for an xm- limited time, till the expiry of one year from the date of its denuncia- tion. This denunciation shall be addressed to the Government com- missioned to receive adhesions. It shall only affect the state which shall have denounced the Convention — the Convention remaining intact for the other contracting parties. Article XIX. The present Convention shall be ratified, and the ratifications of it exchanged in Paris within one year at the latest. Ix WITNESS whereof the Plenipotentiaries have signed it and thereto affixed their seals. Done at Paris the 20th of March, 1883. Protocol. The Plenipotentiaries of the contracting states, when signing the accompanying Convention, at the same time signed an explanatory Protocol, the substance of which is as follows : — 1. The words " industrial property " are to be understood in their broadest sense ; they are not to apply simply to industrial products properly so called, but also to agricidtural products (wines, corns, fruits, cattle, &c.), and to mineral products emplo^'ed in commerce (mineral waters, &c.). 2. Under the word "patents" are comprised the various kinds of industrial patents recognized by the legislation of the contracting states, such as improvement patents, &:c. 3. The last paragraph of Article II. does not affect the legislation of the contracting states, relating to legal procedure, jurisdiction, &c. 5. Each country of the Union shall publish, if jn-acticable, an official newspaper in connection with the special government depart- ment menti(jned in Article XII. 6. [This paragraph relates to the working of the International Office at Berne, the expense of which is to be divided in a given pro- portion amongst the several states forming the Union.] 7. The present Protocol, which shall be ratified along with tho Convention, shall have tho same force, validity and duration as tho Convention itself. ac7 368 PARTNERSHir LAW AMENDMENT ACT. PAETNERSHIP LAW AMENDMENT ACT, 1865. 28 & 29 Vict. c. 86 («). An Act to amend the Law of Partnershiji. [5th July, 1865.] 1. The advance of money by way of loan to a i^erson engaged or about to engage in any trade or undertaking upon a contract in ■«Titing with such person that the lender shall receive a rate of interest varying with the profits, or shall receive a share of the profits arising from carr}^ing on such trade or undertaking, shall not of itseH constitute the lender a partner with the person or the persons carrying on such trade or undertaking, or render him responsible as such. 2. No contract for the remuneration of a servant or agent of any person engaged in any trade or undertaking by a share of the profits of such trade or undertaking shall of itself render such servant or agent responsible as a partner therein nor give him the rights of a partner. 3. No person being the widow or child of the deceased partner of a trader, and receiving by way of annuity a portion of the profits made by such trader in his business, shall by reason only of such receipt be deemed to be a partner of or to be subject to any liabiHties incurred by such trader. 4. No person receiving by way of annuity or otherwise a portion of the profits of any business in consideration of the sale by him of the goodwill of such business, shall l)y reason only of such receipt be deemed to be a partner of or be subject to the liabilities of the person carrying on such business. 5. In the event of any such trader as aforesaid being adjudged a bankrupt, or taking the benefit of any act for the relief of insolvent debtors, or entering into an arrangement to pay his creditors less than twenty shillings in the pound, or dying in insolvent circumstances, the lender of any such loan as aforesaid shall not be entitled to recover any portion of his principal or of the profits or interest payable in respect of such loan ; nor shall any such vendor of a goodwill as afore- said be entitled to recover any such profits as aforesaid until the claims of the other creditors of the said trader for valuable consideration in money or money's worth have been satisfied. 6. In the construction of this Act the word " person" shall include a partnership firm, a joint stock company, and a corporation. [fi) This Act is referred to ante, pp. 30, 31, 124, 209. CONVlilYAXCING, ETC. ACT, 18S1. -369 CONVEYANCING AND LAW OF rROPERTY ACT, 1881. 44 & 45 Vict. c. 41. {In part.) An Act for simplifijinc/ and improving the practice of Conveyancing ; and for vesting in trustees, mortgagees, and others various powers commonhj conferred hj provisions inserted in settlements, mortgages, wills, and other instruments ; and for amending in various par- ticulars the Law of Property ; and for other purposes. [22ud August, 1881.] I.— PrELTMIXARY. PEELIinXAUY. 1. — (1.) This Act may be cited as the Conveyancing; and Law of short title • Property Act, 1881. commence-' (2.) This Act shall commence and take effect from and immediately ment; extent, after the thirty-first day of December one thousand eight hundred and eighty-one. (3.) This Act does not extend to Scotland. 2. In this Act— (i.) Property, unless a contrary intention appears, includes real and Interpreta- personal property, and any estate or interest in any property, real or tioii of pro- personal, and any debt, and any thing in action, and any other right P"'^-^' ^^°^» or interest : (v.) Conveyance,' unless a contrary intention appears, includes as- signment, appointment, lease, settlement, and other assurance, and covenant to surrender, made by deed, on a sale, mortgage, demise, or settlement of any property, or on any other dealing with or for any property; and convey, unless a contrary intention appears, has a mean- ing corresponding witli that of conveyance : (vi.) Mortgage includes any charge on any property for securing money or money's worth ; and mortgage money means money or money's worth, secured by a mortgage ; and mortgagor includes any person from time to time deriving title under the original mortgagor, or entitled to redeem a mortgage, according to his estate, interest, or right, in the mortgaged property ; and mortgagee includes any person from time to time deriving title under the original mortgagee ; and mortgagee in possession is, for the purposes of this Act, a mortgagee who, in right of the mortgage, has entered into and is in possession of the mortgaged property : (vii.) Incumbrance includes a mortgage in fee, or for a less estate, and a trust for securing money, and a lien, and a charge of a portion, annuity, or other capital or annual sum ; and incumbrancer lias a meaning corresponding with that of incumbrance, and includes every person entitled to the beneiit of an incumbrance, or to require pay- ment or discharge thereof : M. . B 1? 370 CONVEYANCING, ETC. ACT, 1881. (viii.) Piii-cliaser, unless a contrary intention appears, includes a lessee or mortgagee, and an intending purchaser, lessee, or mort- gagee, or other person, who, for valuable consideration, takes or deals for any property ; and purchase, unless a contrary intention appears, has a meaning corresponding with that of purchaser ; but sale means only a sale properly so called : (ix.) Eent includes yearly or other rent, toll, duty, royalty, or other reservation, by the acre, the ton, or otherwise ; and fine includes premium or fore-gift, and any payment, consideration, or benefit in the nature of a fine, premium, or fore-gift : (xii.) AVill includes codicil : (xiii.) Instrument includes deed, will, inclosure award, and Act of Parhament : (xiv.) Securities include stocks, funds, and shares : (xv.) Bankruptcy includes liquidation by arrangement, and any other act or proceeding in law having, under any Act for the time being in force, effects or results similar to those of bankruptcy ; and bankrupt has a meaning corresponding with that of bankruptcy : (xvi.) Writing includes print ; and words referring to any instru- ment, copy, extract, abstract, or other document include any such in- strument, copy, extract, abstract, or other document being in writing or in print, or partly in writing and partly in print : (xvii.) Person includes a corporation: (xviii.) Her Majesty's High Court of Justice is referred to as the Court. Covenants for Title. Covenants for title to be implied. On convey- ance for value, by- beneficial owner. Right to convey. Quiet enjoy- ment. Covenants for Title. 7. — (1.) In a conveyance there shall, in the several cases in this section mentioned, be deemed to be included, and there shall in those several cases, by virtue of this Act, bo implied, a covenant to the effect in this section stated, by the person or by each person who conveys, as far as regards the subject-matter or share of subject-matter ex- pressed to be conveyed by him, with the person, if one, to whom the conveyance is made, or with the persons jointly, if more than one, to whom the conveyance is made as joint tenants, or with each of the persons, if more than one, to whom the conveyance is made as tenants in common, that is to say : (A. ) In a conveyance for valuable consideration, other than a mort- gage, the following covenant by a person who conveys and is expressed to convey as beneficial owner (namely) : That, notwithstanding anything by the person who so conveys, or anyone through whom he derives title, otherwise than by purchase for value, made, done, executed, or omitted, or kno^nngly suffered, the person who so conveys, has, with the concurrence of every other person, if any, conveying by his direction, full power to convey the subject-matter expressed to be conveyed, subject as, if so expressed, and in the manner in which, it is expressed to be conveyed, and that, notwithstanding anything as aforesaid, that subject-matter shall remain to and be quietly entered upon, re- ceived, and held, occupied, enjoyed, and taken, by the person to whom the conveyance is expressed to be made, and any person deriving title under him, and the benefit thereof shall be received and taken accordingly, without any lawful interruption or disturb- ance by the person who so conveys or any person conveying by his direction, or rightfully claiming or to claim by, through, under, or in trust for the person who so conveys, or any pei^son conveying by his direction, or by, through, or under any one not 44 &45 Vict. c. 41. 371 being a person claiming in respect of an estate or interest subject whereto the conveyance is oxj)ressly made, through whom the person who so conveys derives titk', otlierwise than by jiurchaso for vahie ; and that, freed and disoliargcd from, or otherwise by Frcodom from the person who so conveys sufficiently indoninifiod against, all incumbrance, such estates, incumbrances, claims, and demands other than tliose subject to which the conveyance is expressly made, as either before or after the date of the conveyance have been or shall be made, occasioned, or suffered by that person or by any person conveying by his direction, or by any person rightfully claiming by, through, under, or in trust for the person who so conveys, or by, through, or under any person convejdng by his direction, or by, through, or under any one through whom the person who so conveys derives title, otherwise than by purchase for value ; and Further further, that the person who so conveys, and any person conve}'- assurance, ing by his direction, and every other person having or rightfully claiming any estate or interest in the subject-matter of conveyance, other than an estate or interest subject whereto the conveyance is expressly made, b}^, through, under, or in trust for the person who so conveys, or by, through, or imder any person conve3-ing by his direction, or by, through, or under any one through whom the person who so conveys derives title, otherwise than by pur- chase for value, will, from time to time and at all times after the date of the conveyance, on the request and at the cost of any person to whom the conveyance is expressed to be made, or of any person deriving title under him, execute and do all such lawful assurances and things for further or more perfectly assur- ing the subject-matter of the conveyance to the person to whom the conveyance is made, and to those deriving title under him, subject, as if so expressed, and in the manner in which the con- veyance is expressed to be made, as by him or them or any of them shall be reasonably required : (in which covenant a luirchase for value shall not be deemed to include a conveyance in consideration of marriage) : (C.) In a conveyance by way of mortgage, the following covenant On mortjrasre, by a person who conveys and is expressed to convey as beneficial by beneficial owner (namely) : owner. That the person who so conveys, has, with the concurrence of every Riyht to other person, if any, conve^'ing by his direction, full power to convey, convey the subject-matter exjjressed to bo conveyed by him. Quiet enjoy- subjeet as, if so expressed, and in the manner in which it is ment. expressed to be conveyed ; and also that, if default is made in payment of the money intended to be secured by the conveyance, or any interest thereon, or any part of that money or interest, contrary to any provision in the convej'ance, it shall be lawful for the person to whom tlio conveyance is expressed to be made, and the persons deriving title under him, to enter into and ujion, or receive, and thenceforth quietly hold, occupy, and enjoy or take and have, the subject-matter expressed to be conveyed, or any jiart thereof, without any lawful interruption or disturbance by the person who so conveys, or any person conveying by his direction, or any other person not being a person claiming in respect of an estate or interest subject whereto the conveyance is expressly made ; and that, freed and discharged from, or other- Freedom "V\'ise by the person who so conveys sufficiently indemnified against, from incum- all estates, incumbrances, claims, and demands whatever, other brances. B 1? 2 372 CONVEYANCING, ETC. ACT, 1881. Further assvirance. On settle- ment. For further assurance, limited. On convey- ance by- trustee or mortsraafee. Against in- cumbrances. tlian tliose subject -svhereto the conveyance is expressly made ; and further, tliat the person who so conveys and every person convej'ing by his direction, and every person deri-\dng title under any of them, and every other person having or rightfully claiming any estate or interest in the subject-matter of conveyance, or any part thereof, other than an estate or interest subject whereto the conveyance is expressly made, will from time to time and at all times, on the request of any person to Avhom the conveyance is expressed to be made, or of any person deriving title imder him, but, as long as any right of redemption exists under tlie convey- ance, at the cost of the person so conveying, or of tliose deriving title under him, and afterwards at the cost of the person making the request, execute and do all such lawful assurances and things for further or more perfectly assuring the subject-matter of con- veyance and every part thereof to the person to whom the con- veyance is made, and to those deriving title under him, subject as, if so expressed, and in the manner in which the conveyance is expressed to be made, as by him or them or any of them shall be reasonably required : (E.) In a conveyance by way of settlement, the following covenant by a x^erson who conveys and is expressed to convey as settlor (namely) : That the person so conveying, and every person deriving title under him by deed or act or operation of law in his lifetime subsequent to that conveyance, or by testamentary disposition or devolution in law, on his death, will, from time to time, and at all times, after the date of that conveyance, at the request and cost of any person deriving title thereunder, execute and do all such lawful assurances and things for further or more perfectly assuring the subject-matter of the conveyance to the persons to whom the con- veyance is made and those deriving title under them, subject as, if so expressed, and in the manner in which the conveyance is expressed to be made, as by them or any of them shall be reason- ably required : (F.) In any conveyance, the following covenant by every person who conveys and is expressed to convey as trustee or mortgagee, or as personal representative of a deceased person, or as committee of a lunatic so found by inquisition, or under an order of the Court, which covenant shall be deemed to extend to every such person's own acts only (namely) : That the person so conveying has not executed or done, or know- ingly suffered, or been party or privy to, any deed or thing, whereby or by means whereof the subject-matter of the convey- ance, or any part thereof, is or may be impeached, charged, affected, or incumbered in title, estate, or otherwise, or whereby or by means whereof the person who so conveys is in anywise hindered from conveying the subject-matter of the conveyance, or any part thereof, in the manner in which it is expressed to be conveyed. (2.) Where in a conveyance it is expressed that by direction of a person expressed to direct as beneficial owner another person conveys, then, within this section, the person giving the direction, whether he conveys and is expressed to convey as beneficial owner or not, shall be deemed to convey and to be expressed to convey as beneficial owner the subject-matter so conveyed by his direction ; and a covenant on his part shall be implied accordingly. 44 & 45 Vict. c. 41. 373 (3.) Where a 'wife conveys and is expressed to convey as beneficial owner, and tlie husljand also conveys and is expressed to convey as beneficial owner, then, within this section, the Avifo shall be deemed to convc}' and to be expressed to convey bj' direction of thu husband, as beneficial owner ; and, in addition to the covenant implied on the part of the wife, there shall also be implied, first, a covenant on the part of the husband as tho person giving that direction ; and secondly, a covenant on the part of the husband in the same terms as the covenant implied on the part of the wife. (4.) Where in a conveyance a person conveying is not expressed to convey as beneficial owner, or as settlor, or as trustee, or as mortgagee, or as personal representative of a deceased person, or as committee of a lunatic so found by inquisition, or under an order of the Court, or by direction of a person as beneficial owner, no covenant on the part of the person conveying shall be, by virtue of this section, implied in the conve3'ance. (6.) The benefit of a covenant implied as aforesaid shall be annexed and incident to, and shall go witli, the estate or interest of the implied covenantee, and shall be capable of being enforced by every person in whom that estate or interest is, for the whole or any part thereof, from time to time vested. (7.) A covenant implied as aforesaid may be varied or extended by deed, and, as so varied or extended, shall, as far as may be, operate in the like manner, and with all the like incidents, effects, and conse- quences, as if such variations or extensions were directed in this section to be implied. (8.) This section applies only to conveyances made after the com- mencement of this Act. Execution of Purchase Deed. Execution of 8.— (1.) On a sale, the piu-chaser shall not be entitled to require ;^S^'"** that the conveyance to him be executed in his presence, or in that of T?io-h\- * his solicitor, as such ; but shall be entitled to have, at his own cost, purchaser as the execution of the conveyance attested by some person appointed by to execution, him, who may, if he thinks fit, be his solicitor. (2.) This section applies only to sales made after the commencement of this Act. Production and Safe Custody of Title Deeds. Troditction 9. — (1.) Where a person retains possession of documents, and gives "custw/uof to another an acknowledgment in writing of the riglit of that other to Title Leeds. production of those documents, and to delivery of copies thereof (in Acknowle*!"-- this section called an acknowledgment), that acknowledgment shall mcut of right have effect as in this section provided. to proiluetion, (2.) An acknowledgment shall bind the documents to which it f "u- ""'1'^'^' relates in the possession or under the control of the person who safe°nist^odv retains them, and in tho possession or under the control of every of documieuts. other person having possession or control thereof from time to time, but shall bind each individual possessor or jierson as long oidy as he has possession or control thereof ; and every person so having pos- session or control from time to time shall be bound specifically to perform the obligations imposed under this section b}- an acknow- ledgment, unless prevented from so doing by fire or other inevitable accident. (3.) The obligations imposed under this section by an acknow- ledgment are to be performed from time to time at the request in writing of the person to whom an acknowledgment is given, or of any 374 CONVEYANCING, ETC. ACT, 1881. person, not being a lessee at a rent, liaving- or claiming any estate, interest, or right throngh. or nncler that person, or otherwise becoming through or under that person interested in or affected by the terms of any document to which the acknowledgment relates. (4.) The obligations imposed under this section by an acknow- ledgment are — (i.) An obligation to produce the documents or any of them at all reasonable times for the piu'pose of inspection, and of com- parison with abstracts or copies thereof, by the person entitled to request production or by any one by him autho- rized in writing ; and (ii.) An obligation to produce the documents or any of them at any trial, hearing, or examination in any court, or in the execu- tion of any commission, or elsewhere in the United Kingdom, on any occasion on which production may properly be re- quired, for proving or supporting the title or claim of the person entitled to request production, or for any other purpose relative to that title or claim ; and (iii.) An obligation to deliver to the person entitled to request the same true copies or extracts, attested or unattested, of or from the documents or any of them. (5.) All costs and expenses of or incidental to the specific perform- ance of any obligation imposed under this section by an acknowledg- ment shall be paid by the person requesting performance. (6.) An acknowledgment shall not confer any right to damages for loss or destruction of, or injury to, the documents to which it relates, from whatever cause arising. (7.) Any person claiming to be entitled to the benefit of an acknow- ledgment may apply to the Court for an order directing the production of the documents to which it relates, or any of them, or the delivery of copies of or extracts from those documents or any of them to him, or some person on his behalf ; and the Court may, if it thinks fit, order production, or production and delivery, accordingly, and may give directions respecting the time, place, terms, and mode of jproduc- tion or dehvery, and may make such order as it thinks fit respecting the costs of the application, or any other matter connected with the application. (8.) An acknowledgment shall by virtue of this Act satisfy any liability to give a covenant for production and delivery of copies of or extracts from docixments. (9.) Where a person retains possession of documents and gives to another an undertaking in writing for safe custody thereof, that under- taking shall impose on the person giving it, and on every person having possession or control of the documents from time to time, but on each individual possessor or person as long only as he has posses- sion or control thereof, an obligation to keep the documents safe, whole, uncancelled, and undefaced, unless prevented from so doing by fire or other inevitable accident. (10.) Any person claiming to be entitled to the benefit of such an undertaking may apply to the Court to assess damages for any loss, destruction of, or injury to the documents or any of them, and the Court may, if it thinks fit, direct an inquiry respecting the amount of damages, and order payment thereof by the person liable, and may make such order as it thinks fit respecting the costs of the application or any other matter connected with the application. (11.) An undertaking for safe custody of documents shall by virtue of this Act satisfy any liability to give a covenant for safe custody of documents. 44 & 45 Vict. c. 41. 375 (12.) The rights conferred by an acknowledgment or an undertaking under this section shall be in addition to all such other rights relative to the production, or inspection, or thu obtaining of copies of documents as are not, by virtue of this Act, satisfied by the giving of the acknow- ledgment or undertaking, and sliall have effect subject to the terms of the acknowledgment or undertaking, and to any provisions therein contained. (13.) Tliis section applies only if and as far as a contrary intention is not expressed in the acknowledgment or undertaking. (14.) This section applies only to an acknowledgment or undertaking given, or a liability respecting documents incurred, after the commence- ment of this Act. rV. — Mortgages. Moetgages. • 15.— (1.) ■\\niere a mortgagor is entitled to redeem, he shall, by oLlicr"^non virtue of this Act, have power to ref[uire the mortgagee, instead of re- mortgajjec to conveying, and on the terms on which he would be bound to re-conve}-, transfer to assign the mortgage debt and convey the mortgaged property to instead of re- any third person, as tlio mortgagor directs ; and the mortgagee sliall, conveying, by virtue of this Act, bo bound to assign and convey accorclingly. (2.) This section does not apx)ly in the case of a mortgagee being or having been in possession. (3.) This section applies to mortgages made either before or after the commencement of this Act, and shall have effect notwithstanding any stipulation to the contrary (a). 16. — (1.) A mortgagor, as long as his right to redeem subsists, Power for shall, by virtue of this Act, be entitled from time to time, at reasonable mortgagor to times, on his request, and at his own cost, and on payment of the ^'Jfl^'^*' ^^^^'^ mortgagee's costs and expenses in this behalf, to inspect and make copies or abstracts of or extracts from the documents of title relating to the mortgaged property in the custody or power of the mortgagee. (2.) This section applies only to mortgages made after the com- mencement of this Act, and shall have effect notwithstanding any stipulation to the contrary. 17. — (1.) A mortgagor seeking to redeem any one mortgage, shall, Restriction on by virtue of this Act, bo entitled to do so, without paying any money consolidation due imder any separate mortgage made by him, or by any person ^^ mortgages, through whom he claims, on property other than that comprised in the mortgage which he seeks to redeeni. (2.) This section applies only if and as far as a contrary intention is not expressed in the mortgage deeds or one of them. (3.) This section applies only where the mortgages or one of them are or is made after the commencement of this Act. Sale; Insurance; Receiver; Timber. Sale; 1 1 J 1 1 n Iiisu ranee; 19. — (1.) A mortgagee, where the mortgage is made by deed, shall, p,,reiirr; by virtue of this Act, have the following powers, to the like extent as Timber. if they had been in terms conferred by the mortgage deed, but not fo^f^a » . , "^ , 1 x meidont to further (namely) : i , ii estate or (i.) A power, when the mortgage money has become due, to sell, or ^jterestof mortgagee. {a) See sect. 12 of the Conveyancing Act, 1882 {post, p. 384), extending the above section. 37'6 CONVEYANCING, ETC. ACT, 1881. to concur -with any other person in selling, the mortgaged property, or any part thereof, either subject to prior charges, or not, and either together or in lots, by pubKc auction or by private contract, subject to such conditions respecting title, or evidence of title, or other matter, as he (the mortgagee) thinks fit, with power to vary any contract for sale, and to buy in at an auction, or to rescind any contract for sale, and to re-sell, without being answerable for any loss occasioned thereby ; and (iii.) A power, when the mortgage money has become due, to ajjpoint a receiver of the income of the mortgaged property, or of any part thereof. (2.) The provisions of this Act relating to the foregoing powers, comprised either in this section, or in any subsecjuent section regu- lating the exercise of those powers, may be varied or extended by the mortgage deed, and, as so varied or extended, shall, as far as may be, operate in the like manner and with all the like incidents, effects, and consequences, as if such variations or extensions were contained in this Act. (3.) This section applies only if and as far as a contrary intention is not expressed in the mortgage deed, and shall have effect subject to the terms of the mortgage deed and to the provisions therein contained. (4.) This section applies only where the mortgage deed is executed after the commencement of this Act. Eegulation of 20. A mortgagee shall not exercise the power of sale conferred by exercise of this Act unless and until — sale*^^ ^^'^ Notice requiring payment of the mortgage money has been served on the mortgagor or one of several mortgagors, and default has been made in payment of the mortgage money, or of part thereof, for three months after such service ; or (ii.) Some interest xmder the mortgage is in arrear and unpaid for two months after becoming due ; or (iii.) There has been a breach of some provision contained in the mortgage deed or in this Act, and on the part of the mort- gagor, or of some person concurring in making the mortgage, to be observed or performed, other than and besides a covenant for payment of the mortgage money or interest thereon. Conveyance, 21. — (1.) A mortgagee exercising the power of sale conferred by onTaf ' ^^' *^^^ '^^^ ^^^^^ ^^^^ power, by deed, to convey the property sold, for such estate and interest therein as is the subject of the mortgage, freed from all estates, interests, and rights to which the mortgage has priority, but subject to all estates, interests, and rights which have priority to the mortgage ; except that, in the case of copyhold or customaiy land, the legal right to admittance shall not pass by a deed under this section, unless the deed is sufficient otherwise by law, or is sufficient by custom, in that behalf. (2.) Where a conveyance is made in professed exercise of the power of sale conferred by this Act, the title of the purchaser shall not be impeachable on the ground that no case has arisen to authorize the sale, or that due notice was not given, or that the power was otherwise imi)roperly or irregularly exercised ; but any person damnified by an unauthorized, or improper, or irregular exercise of the power shall have his remedy in damages against the person exercising the power. U & 4:0 Vict. c. 41. 377 (3.) The money wliich is received by the mortgagee, arising from the sale, after discliarge of prior incumljrances to which the sale is not made subject, if any, or after payment into Court under this Act of a sum to meet any prior incumbrance, shall bo held by him iu trust to be ai)plied by him, first, in payment of all costs, charges, and expenses, properly incun-ed by him, as incident to the sale or any attempted sale, or otherwise ; and secondly, iu discharge of the mortgage money, interest, and costs, and other money, if any, due under the mortgage ; and the residue of the money so received shall be paid to the person entitled to the mortgaged property, or authorized to give receipts for the proceeds of the sale thereof. (4.) The ijower of sale conferred by this Act may be exercised by any person for the time being entitled to receive and give a discharge for the mortgage money. (5.) The power of sale conferred Tjy this Act shall not affect the right of foreclosure. (6.) The mortgagee, his executors, administrators, or assigns, shall not be answerable for any involuntary loss happening in or aliout the exercise or execution of the power of sale conferred by this Act or of any trust connected therewith. (7.) At any time after the power of sale conferred by this Act has become exerciseablo, the person entitled to exercise the same may demand and recover from any person, other than a person having in the mortgaged property an estate, interest, or right in priority to the mortgage, all the deeds and documents relating to the property, or to the title thereto, which a purchaser under the power of sale would be entitled to demand and recover from him. 22. — (1.) The receipt in writing of a mortgagee shall be a sufficient Mortgagee's discharge for any money arising under the power of sale conferred by receipts, dis- this Act, or for any money or securities comprised in his mortgage, or ^^^rges, &c. arising thereunder ; and a person paying or transferring the same to the mortgagee shall not be concerned to iuc[uire whether any money remains clue under the mortgage. (2.) Money received by a mortgagee under his mortgage or from the proceeds of securities comprised in his mortgage shall be applied in like manner as in this Act directed respecting money received by him arising from a sale nnder the power of sale conferred by this Act ; but with this variation, that the costs, charges, and expenses payable shall include the costs, charges, and expenses properly incurred of recovering and receiving the money or securities, and of conversion of securities into money, instead of those incident to sale. 24. — (1.) A mortgagee entitled to appoint a receiver under the Appointmcut, power in that behalf conferred by this Act shall not appoint a receiver po^^tr-S re- until he has b(>come entitled to exercise the power of sale conferred by j^^^ diities of this Act, but may then, by writing under his hand, appoint such receiver, person as he thinhs fit to be receiver. (2.) The receiver shall be deemed to be the agent of the mortgagor; and the mortgagor shall be solely responsible for the receiver's acts or defaults, unless the mortgage deed otherwise provides. (3.) The receiver shall have power to demand and recover all the income of the property of which he is appointed receiver, by action, distress, or otherwise, in the name either of the mortgagor or of the mortgagee, to the full extent of the estate or interest which the mort- gagor could dispose of, and to give cft'ectual receijits, accordingly, for the same. 378 CONVEYANCINGj ETC. ACT, 1881. (4.) A person pa3'ing money to the receiver sliall not be concerned to inquire wlietlier any case lias happened to authorize the receiver to act. (5.) The receiver may be removed, and a new receiver may be appointed, from time to time, by the mortgagee by writing under his hand. (6.) The receiver shall be entitled to retain out of any money received by him, for his remuneration, and in satisfaction of all costs, charges, and expenses incurred by him as receiver, a commission at such rate, not exceeding five per centum on the gross amount of all money received, as is specified in his appointment, and if no rate is so specified, then at the rate of five per centimi on that gross amount, or at such higher rate as the court thinks fit to allow, on application made by him for that purpose. (7.) The receiver shall, if so directed in writing by the mortgagee, insure and keep insiu'ed against loss or damage by fire, out of the money received by him, any building, effects, or property comprised in the mortgage, whether affixed to the freehold or not, being of an insurable nature. (8.) The receiver shall apply all money received by him as follows (namely) : (i.) In discharge of all rents, taxes, rates, and outgoings whatever affecting the mortgaged property ; and (ii.) In keeping down all annual sums or other payments, and the interest on all principal sums, having priority to the mort- gage in right whereof he is receiver ; and (iii.) In payment of his commission, and of the premiums on fire, life, or other insurances, if any, properly payable under the mortgage deed or under this Act, and the cost of executing necessary or proper repairs directed in writing by the mort- gagee ; and (iv.) In payment of the interest accruing due in respect of any principal money due under the mortgage ; and shall pay the residue of the money received by him to the person who, but for the possession of the receiver, would have been entitled to receive the income of the mortgaged property, or who is otherwise entitled to that property. Action respectwg Mortgage. Sale of mortgaged property in action for foreclosure, &c. Action re&iiect'mg Mortgage. 25. — (1.) Any person entitled to redeem mortgaged property may have a judgment or order for sale instead of for redemption in an action brought by him either for redemption alone, or for sale alone, or for sale or redemption, in the alternative. (2.) In any action, whether for foreclosure, or for redemption, or for sale, or for the raising and payment in any manner of mortgage money, the Court, on the request of the mortgagee, or of any person interested either in the mortgage money or in the right of redemption, and, notwithstanding the dissent of any other person, and notwith- standing that the mortgagee or any person so interested does not appear in the action, and without allowing any time for redemption or for payment of any mortgage money, may, if it thinks fit, direct a sale of the mortgaged property, on such terms as it thinks fit, in- cluding, if it thinks fit, the deposit in Court of a reasonable sum fixed by the Court, to meet the expenses of sale and to secure performance of the terms. 44 &45 Vict. c. 41. 379 (3.) But, in an action brought by a person interested in the right of redemption and seeking a sale, the Court may, on the application of any defendant, direct tlie plaintiff to give sucli security f '■* 9 332. 49 & 50 Vict. c. 37 (PatentsAct, 1886), 2, 9, 333. repealed by new Act, 328. list of, 330, 331. ADDITIONS, to an invention, 33. ADDRESS, of applicant, to be stated with application, 336. in register, form of notice of alteration of, [352]. ADMINISTRATORS, of deceased applicant or inventor, 11, 12, 311, 317, 338. ADOPTION, of contract by company after formation, [801. trustee of (so called), to be discharged, [80]. liability of trustee until, 80, n. ADVANCES, agreement for, by instalments, to obtain and work patent, [59]. by manufacturer, who is to work patent, [64]. to a firm, payable only out of profits, [67]. observations on, 31 — 33. IXDKX. 387 ADVANCES— continifrd. interest on, according to or out of profits, 29 — 31. at fixed rate, and also according' to profits, [Gl, 173, 174]. mortgages, of licence to secure repayment of, [175 — 177]. observations on, 131, 132. of jmtcnts also, [167, 172]. observations on, 128 — 131. not payable personally, but only out of profits, 31 — 33. provision as to, [67]. to two or more on joint account, 380. See Ixstaljiext3. ADVERSE, application for patent, 309, 311, 315, 336. effect of, on sealing of patent, 311. business, covenant not to engage in, where not against public policy, 211, u. ADVERTISEMENT, of acceptance of application, 338. complete specification, 310. of amendment of specification, 313. AFFIDAVITS, sworn in United Kingdom or abroad, before whom, 337. AGENCY, for sale of patent articles, agreement as to, [104]. AGENT, agi'eement for appointment of, to sell patent articles, [104]. assignment by him (j)atentee) of patent to inventor (foreign principal), [160], bankruptcy of, reputed ownership clause qua property of firm, 105, n. del credere, only liable to principal as surety for piirchasers, 107, n. employment of, for a]iplication for patent, 336. lien of, on goods, will prevail on bankruptcy of principal, 108, n. may sue in own name, when, 106, n. mere, not at liberty to sell at any price, 105, n. of inventor, must reside here if apply for patent, 13, 160, n. of patentee, cannot sue for infringements, 200, n. "AGREED AND DECLARED," in a deed, makes the provisions covenants, 255, n. AGREEMENT, adoption of, by company, where made with trustee, [80]. between co-applicants for, or co-owners of, patent as to rights under, [64, 70, 82, 142, 144, 148, 154]. observations on, 71, n., 118 el seq. between inventor and manufacturer, [64]. by deed, 40. to be executed as such, when, 83, n. determination of, generally, 44 — 46. analysis of cargo, unsatisfactory, where, [85]. bankruptcy or act of bankruptcj-, where, [54]. death of one party, on, [80]. default in covenants, where, [54]. failirre to supply articles, if, [88]. non-adoption by company, [81]. non-delivery of cargo, 'i^'Ti'\- non-piu'chasc of cargo, [86]. notice in writing by cither party, [53]. patent void, [85]. piu-chascr of jiatent employs vendor, [75]. sale of future imiirovements, [91]. shares in syndicate not subscribed, [98]. various events, [94]. vendor delaj's obtaniiiig patent, [54]. Note. — Jie/crcuces to the rrfcaleitts and Forms are j^riuted thus [04]. c c 2 388 INDEX. AGcREE'ME^T— continued. executory merely, not now registered, 23. for appointment of agent to sell patent articles, [104]. for assignment of future patents for improvements not against public policy, 43. for borrowing money. Statute of Frauds not to apply to, 43. for grant of exclusive licence, [84, 87]. for loan, by instalments, to take out and work patent, [59]. specific performance of, 43. to firm, repayable out of profits but not personally, [67J. observations on, 31, 32. forming sy^idicate to purchase patent, [96]. for partnership, for worldng patent, [99]. for sale of, moiety of patent, [70]. patents, after acceptance of complete specification, [72]. colonial and foreign, [76]. on hire system, [89, 93]. observations on, 37 — 39. to trustee for company, [79]. registration of, 23—25, 63, n., 87, n. specific perfoi-mance of, 41 — 44. stamp duty on, where equitable mortgage, 63, n. to share gross returns, does not constitute a partnership, 210, n. what to be in writing under the Statute of Frauds, 40. See Conteact. ALIEN, am)/, could have been grantee of a patent, 11. application for patent by, where resident abroad, 13, n. can now apply for patent, 11, 307. See Foeeignee. AMBIGUOUS, words in a deed, taken against grantor, 182. AMENDMENT, of appHcation for patent, 12,^29, 308^, 33J, 338. co-applicant made by, [51, 60, 70, 73]. observations on, 12, 29. of drawing, form of application for, [347]. included in " Amendment of Specification" (see next). of specification, 6-8, 18—22, 312, 313, 341. action for infringement, in, 18, 313. consent as to, not to be " arbitrarily withheld," 202. covenants as to, 115, 116, 199. forms of, [141, 236]. damages in action, for infringements committed before, 19, 313. disclaimer, by (late practice), 6 — 8. (present practice), 18—22, 312, 341. in action for infringement, 18, 313. form of application for, [347]. opposition to, form of, [347]. retrospective, effect of, 19. AMENDMENTS, certified copies of, sent to Edinbui-gh, Dublin, and Isle of Man, 324. ANALYSIS, of cargo of raw material by chemists, [85, 254]. contract determined if unsatisfactory, [83]. ANNUAL, reports of comptroller, 325. ANNUITY, bond to secure, as consideration for licence, [294]. recital of, [271]. exclusive licence in consideration of, [271]. monies paid for, not recoverable if patent void, 272, n. INDEX. 389 APPEAL, from comptroller to law officer, 10, 13, 14, 308, 300. form of, [353]. rules as to practice in, 3.>1, 3oo. from judgment in revocation, pajTnents to be suspended pending, 38, 209. provision as to, [55, 94, 233, 2G8]. APPLICANT, for a patent, death of, before sealing, grant to his representatives, when, 12, 311. definition of, in P. R. 1883. .336. may be required to f ui-nish MTitten statement, or give oral explana- tion, 336. who may be. See Application. APPLICANTS, joint, for a patent, agreement defining their powers inter se, [64, 70, 82]. who may be, 11—13, 29, 307, 333. rival, 309, 311, 315, 336, 339, 340. attendance of, before comptroller, 336. See Application. APPLICATION, for letters patent, abandoned. 13, 14, 64, n., 309, 332. new, when may be made after, 14, 309, n. public inspection of specification and drawings not allowed on, 13, 309 332 amendment of," 12, 29, 308, 337, 338. colonial and foreign, 36, 37, 77, n., 365 — 367. forms in, [346—353, 358—361]. lender to be joined in, [50]. observations on, 29. mode of (old practice), 3 ct saj. (new practice), 12—16, 307—312, 335 et scq, 356 ct seq. new, not allowed after acceptance of complete specification, 64, n. pending at commencement of new Act, 22, 328. persons entitled to make, administrators of inventor, 11, 12, 311, 317, 338. agents, 13, 336. alien aMtj, 11. resident abroad, who obtained from another alien resident abroad, 13, n. body corporate, 328. British subject or not, 307. executors of inventor, 11, 12, 311, 317, 338. foreign inventor, 11, 13, 307. infant, 11, 324. joint, 11, 12, 29, 307, 308, 333. purchaser to join in, by amendment, [50]. obseixations on, 29. recitals of, [50]. referee appointed by Act of Parliament, when not entitled to make, 11. forms of, after grant of patent, for, certificate of payment or renewal, [349]. compulsory grant of licences, [348]. duplicate of letters patent, [351]. enlargememt of time for payment, [350]. entry of order of Privy Council, [353]. APPOINTMENT, of agent to sell patent articles, [104]. of new trustees by majority of owners, power of, [152]. APPORTIONMENT, of consideration in contract, 45, 46. none as to entu"e contract, 46. Note. — References to the Precedents cutd Forms are printed thus [64]. 390 INDEX. APPORTIONMENT— co«i;f«««/. of income or periodical payments of like nature only, 92, n., 269, n., 271, n., 281, n., 29i, n. cf royalty, limit to, [270]. APPOUTIONMENT ACT, 1870 (33 Vict. c. 35), income or jieinodical payments in nature of income only apportioned, 92, n., 269, n., 271, n., 281, 'u., 291, n. ARBITRATION, by chemists, by analysis of material, [85, 256]. clause, [55]. ARREAR, instalment of purchase -money in, balance or part demanded, payable, [267]. ARTICLES, agreement for licence to sell, [87]. delivered to sub -licensees, royalties to licensor on, 216, n. delivery of, to common earner to be deemed delivery to piirchascr, [261]. to railway company, [261]. to sub-licensees to be deemed sales, [234]. observation on, 216. deterioration in transit of, liability for, 261, n. determination of agreement on failure to supply, [88]. expenses of carriage of, by whom borne, 261, n. provision as to, [284]. good manufacture or may be returned, [261]. guarantee by licensee of prices, where nominees supplied, [261]. licence merely to sell, 221. licensee on notice to supply foi-eign customers of licensor with, [284]. licensor to supply licensee "vvith, [241, 260]. manufactured by sub-licensees, royalties to licensor on, 216. covenant as to, [234]. not manufactured according to specification, royalties on, 212, covenant as to, [236]. partnership of, for working patent, form of, [99]. recital of, [266]. patent mark to be used on, [234 — 236]. observations as to, 210 — 212. penalty for false representation as to their being patented, 326. prices of, [74, 85, 242, 274, 275, 285]. sale by licensee of, what rights to vendee in, 84, n., 117, n., 194, n. reservation in licence as to existing orders, [283]. risks in transit of, 261, n. royalties on, although not made according to specification, 212. covenant as to, [236]. sale of, by licensee at not less than fixed prices, [274, 275]. meetings to regulate prices, [242]. through brokers only, [242]. when effected, 74, n., 204. sold, who nudertakes carriage of, 261, n. stamping of, [234—236]. observations on, 210 — 212. supply of, by licensor to licensee, [88, 284]. by licensee to other licensees, [275]. unsold at end of licence to bear lesser royalties, [75, 147, 157 229]. observations on, 203. See Goods. ' ARTICLES OF ASSOCIATION, recital of preparation of, [79 J. INDEX. -i-'i ARTICLES OF PARTNERSHIP, precedent of, for working' patent, [99]. recital of, [206]. ASCENDING, scale, royalties iu, 208, [232]. ASSETS, of firm, letters patent beinj,', 100, u., 260, n. ASSIGNABILITY, of covenants made with licensor, 103, n. of licence, only if it so iierraits, 103. of patent, if terms of grant permit, 110. as to distinct part of invention, 110. for a tlistrict, 110. of share of patent, 110. ASSIGNMENT, covenant in lea.se against, effect of, 214, n. of chattel, cannot at law be limited to mere interest in, 118. of choses in action, 163, n. between husband and wife, 380. by a person to self and another, 380. of invention, as well as patent, 113. to Secretary for War, 319, 320. of licence, 184. covenant against, [237]. observations, 213, 214. licensor should join in, to obtain covenants, 128, 187, n. not usual where only selling licence, 213, n., 221. operates (so held) only by estopi>el, 18o, n. precedents of, [161, 163]. of patent, before granb or sealing, qtj., valid, 24, 311. by deed, passes legal interest, 110. by e.xecutors before registration of probate, 133, n. by instrument not under seal is only a contract, 111.^ by one co-patentee to the other of his interest in, [158]. contents of ordinary deed of. 111 ct .scy. covenant or undertaking, &c., as to production of letters patent, 116, 373—375. covenant for, operates as, when, 110. covenants for title in, 114. effected by covenant merely, when, 110. effect of proviso for dcfcazance in, US. estops assignor from disputing validity of patent. 111. exclusive licence amounts to, when, 38, 91, n., Ill, n., 183, 19/, n., :.08. for Channel Islands is valid, scmbk, 318. for district, 17, Uo el seq., 317. can be made for old patent, scmhk, 139. comparison between exclusive licence and, 110. contents of, 115 vt .vc/. precedent of, [139]. when all monies paid imder licence, [269]. for future improvements, covenant as to, not against pubhc policy, 43. mode of, 110. on sale on hii-e system, how far necessary, 91, n. ordinary fonn, [130]. provision as to, after grant, [73]. , ,. . mn purchaser entitled to, on pajnuont of monies under hu-e system, |.JIJ. recital of title by, [51]. recitals in ordinary deed of, \\\ ct scq. registration of, 23-25, 132, 133, 313, 314, 321. 322, 342-344. not compulsory except as against third parties, 132. will relate back to date of execution, stmbli. 133. reservation in licence to prevent its being an, what, 183, n. Note.— iif/ercnces to the Precedents and Forms are printed thus [64]. 392 INDEX. ASSIGNMENT— co« i /T^ • n riiles already issued by, P. R. 1883 and 188o, and Revised Rules (Drawings) 1886.. 335— 353, 338, n., 356, 357. superintendence of, over comptroller, 10, 321. BODY CORPORATE, included in new Act in term " person, 328. may api^ly for a patent, 1 1 . registered as proprietor of patent, 343. BOND, . ,, r.-,n exclusive licence for life annuity secured by, [2* IJ. heirs bound, though not mentioned, 294, n. recital of, [271]. to secure hfc annuity to licensor, [294]. to two or more "jointly," 381. , , , , j • • ■where heirs not mentioned, real estate formerly reached only by admims- tration, 294, n. ■i^OTY,.—Befcrences to the Pncedaiis and Forms are printed thm [64]. 394 INDEX. BOOKS OF ACCOUNT, 51, 52, 146, 1.51. Sec AccomiT. BORROWING MONEY, specific performance of agreements for lending and, 43. Statute of Frauds not apply to agreements for, 43. BRAZIL, is member of International Union, 36, 365. BREACH, of contract or covenant, by licensee not to assign, not alone render assignment void, 193, n. determination of agreement, &c., on, [54, 239, 269]. observations on, 200, 220. form of notice to make good, [297]. must be essential to allow rescission, 45. no forfeiture of licence on, unless power given to revoke, 219. not to assign, &c., licence, consequence of, 214. notice to repair to be given, before jjower to revoke exercised, 219. particulars of, inspection of jiremises ordered in action, to furnish, 213, n. BREVET B'lXVENTIOX (French patent), recital of, [50, 87]. BRITISH, minister, affidavits out of United Kingdom and colonies sworn before, 337. possession, definition of, 329. subject, applicant for patent may be, or not, 11, 307. BROKERS, sales only through, and meetings to regiilate prices, [242]. BUSINESS, adverse, covenant not to engage in, not against public pohcy, when, 241, n. forms of such a covenant, [53, 241]. licence to be granted, when party established in, [88]. licensee to commence, within certain period, [284]. registration of association under Companies Act, 1862, if more than ten persons (banking), or twenty engaged in, 96, n. to establish a, [88]. CALENDAR MONTH, "month" means, 309. CALLS, on shares in syndicate, [97]. CARGO, of raw material, analysis of, by chemists, [85, 254]. power to determine contract if not delivered or pm-chased or analysis im satisfactory, [85, 86]. pm-chase of, condition precedent to grant of licence, [84]. recital of expected arrival of, [84]. CARLOADS, royalties on, [230]. CARRIAGE, of goods, expenses of, [284]. by whom borne, 261, n. to agent, to be borne by firm, [105]. who undertakes, buyer or seller, 261, n. i\L»i:x. 305 CAVEAT, against extension of term of patent, 314. entry of, in opposition to disclaimer (late practice), 6. CERTIFICATE, of comptroller, fonii of, [352]. payment of fees for, 310. form of api)lication for, [349]. to be evidence, 323. of validity of patent having been questioned in prior action, 31G. CERTIFIED COPIES, of entries in register, documents, &c., 9, 343. CESSER, of payments, if patent become void, [233]. observations on, 209. to be in lieu of damages, [o5, 94, 233, 2G8]. observations on, 39, 209, 2G8. of rent, while licensor fails to supply material, [233]. observations on, 207. CHANNEL ISLANDS, are excepted from patents under new Act, IG, 311. old patents semblc may be assigned for, 318. CHARGE, included in term "mortgage " in Conveyancing Act, 1881 . .G3, n., 369. on licence, consent of licensor as to creation of, may be given on terms, when, 213. covenant by licensee against creation of, [237]. observations on, 213. on patent or patent rights, [G2, G8, 71, 140, 143, 141, 151, loG]. to be kept on foot (in mortgage deed), [174]. CHATTEL, assignment of, cannot at law be limited to a mere interest, 118. CHEMICALS, licensee not to sell material except in fomi of, [256]. CHEMISTS, analysis of cargo of raw material by, [85, 254]. CHOSE IN ACTION, assignment of, 1G3, n. by a person to self and another, 380. CLAIM TO INVENTION, complete spocificatiou must end in distinct statement of, 12, n , 308. conflicting, as between master and servant, 35. no recital in licence usually as to, 192. recital of, [50, G4]. CLAUSE, arbitration, 221. form of, [55] . average, 193. forms of, [230]. for distress, none in licences since Bills of Sale Acts, 203. transmission, "assigns" imported, {/>(>}. Note. — References to the Precedents and Forms arc j^rintcd thus [64]. 396 INDEX. CLERICAL ERRORS, correction of, by comptroller, 322. form of request for, [352]. CO-APPLICANTS, agreement between as to mutual rights, registration of, 24. by amendment of application, 29. clauses in agreements as to, [ol, 60, 64]. ■wbomaybe, 11, 12, 307, 308, 317, 333. COLONIAL, arrangements for protection of inventions, &c., 325, 326. patents, 36, 62, n., 77, n., 78, n., 167, n., 365—367. agreement for sale of, [77]. See Foreign. COLONIES, provisions for, as to inventions, 325, 326. COMMISSION, articles to be supplied by licensor to licensee to be sold on, 284. del credere, [106, 107]. to agent on sales, [106]. COMMITTEES, declaration by, on applications for patents, 324. COIMIMON CARRIER, delivery to, to be deemed delivery to purchaser, [261]. observations on, 261, n. COMMON EORMS, [48-55]. COMMON LAW PROCEDURE ACT, 1854 (17 & 18 Vict. c. 125), 56, n. COMMUNICANT, of invention, name of, must be stated in declaration of importer, 13, n. COMMUNICATION, of invention, confidential, 27, 28. _ from abroad, shown in application, 4, 11, n., 359. provision against, [51]. COMMUTATION OF ROYALTIES, 207. covenant as to, [234]. deed of, [295]. COMPANIES ACT, 1862 (25 & 26 Vict. c. 89).. 80, 96, 278, 282. COMPANY, agreement to sell patent to tiiistee for, [79]. contracts for piu-chase by, different kinds of, 79, n. exclusive licence to, [278]. inability of, to pay debts, 282, n. registration of, 96, n. service of notices on, [282]. syndicate is a partnership or, 96, n. vendors also promoters of, 97, n. COMPLETE SPECIFICATION, acceptance of, advertisement of, 14, 310. confers what rights, 15, 311. may be a bar to obtaining patents abroad, 77, n. not conclusive as to sufficiency, 20, 310, n. recitals as to, [50]. time for, 14, 309, 332. appeal from refusal to accept, 14, 309. application deemed abandoned, if not left in time, 14, 309. comparison of, with provisional, 14, 309. INDEX. -397 COMPLETE SPECIFICATION— fow^i/ii/erf. coudition as to preparation of, by patent a^ent, [GO, n.]. filing- of, under late practice, i5. ,- o,, infringements committed only after acceptance of, can be sued for, Ij, .ill. inspection by public after acceptance of , 14, 310, 338. insufficiency of, a jrmuud for revocation, 21, 310, n. may be left in lieu of provisional, 14, 308. must end with distinct statement of invention, 12, n., 308. nature of, 5, 12, 308. need not bo under liand and seal, 12, 3G0. new initiatory application not after acceptance of, 64, n. non-acceptance of, renders applicati'jn void, when, 309. publication ensues on acceptance of, 14, 310, 338. purchase of patent to be abandoned, if not accepted withm given time, [< 1 j. recital as to filing of (late practice), [50]. time for leaving, 14, 309, 332. extension of, 14, 332. See Spectfication. COMPLETION, of pui-chase, time fixed for, [74, 78, 80, 91, 91]. COMPTROLLER, (Comptroller General), , ^^ duties and powers of, 10, 12, 13, 308, 309, 321-323, 32^, 329, 330— 337, 341, 314. form of application for hearing by, [347]. certificate of, 352. COMPTROLLER GENERAL OF PATENTS. See Cosipxeollee. COMPULSORY LICENCES, ordered by Board of Trade, when, 22, 145, n., 313, 341. form of application for, [348]. form of opposition to, [349]. form of petition for, [348]. not granted as to old patents, or applications pending at commencement of new Act, 22, 320. CONCESSION, foreign, to obtain raw material ; recital of, [84]. CONCLUDED, contract, distinguished from executory, 204, n. CONDITIONS, in licence, _ _. _ covenant as to futui-e perfonnancc of, [1G2,_1G3, 175, 1<8]. past performance of , [IGl, 175]. in other licences, covenant in licence as to, [2G0]. in patent, covenant by licensor to perform, 199. form of, [238]. of separate working of patent, between co-applicants or co-owners, 71, 122 et seq. precedents containing same, [70, 82, 142, 144, 148]. CONFIDENTIAL DISCLOSURE, of invention, 27, 28. provision as to non-communication of, [51, 59]. CONFLICTING APPLICATIONS, for patent, 309, 311, 315, 33G, 339, 340. CONSENT, for amendment of .specification, 202. form of covenant, [23G]. for assignment, &c. of licence, 213, 214. form of covenant, [237]. XoTE.— i?^/ereJici-n labels, plates, &c. bearing patent mark, to purchase, [24 (J. manufacture according to specification, 212. fomi of, [236]. held not in restraint of trade, 212. material, purchase of, only from licen.sor, [256]. material, sale of, only in form of chemicals, [256]. open contract, where, 195. form of such licence, [245]. ordinary, 202, 223—225. patent mark, to use, 210. forms of, [234—236, 247_]. payment by instalments, [267]. pm-chase of plant, machinery, &c. [284]. rent, to pay, 203. fonn of, [229, 250, 255]. royalties, to pay, 203. forms of, [228-232, 255, 264, 274, 275, 279, 284, 289]. sub-licences, not to grant, without consent, 213 et scq. forms of, [237]. validity of patent, not to dispute, 216. fonn of, [238]. by licensor, 194—200, 203 ei scq., 223—225. conditions of patent, to perform, 199. form of, [238]. defence of patent, as to, 198-201, 205, 206, 217. form of, [231, 233, 238]. determination by licensee, 200, 219, 220. forms of, [240, 257, 269, 281]. factorj', inspection by licensee of (mutual), [286]. fees, payment of, 199, 200. form of, [238]. grant of other licences, 207, 208. conditions as to, [231, 236, 238, 200, 205]. improvements, as to, 199, 218. forms of, [240, 269, 276]. infringements, as to, 199—201, 205, 217. forms of, [231, 238]. _ invention, not to use, in district, 183, 198. forms of, [236, 205, 276, 286, 290]. to assist licensee in use of, 212. material, as to supply of, 207, 220. fonn of, [255]. open contract, where, 195. form of such licence, [245]. ordinary, 196—200, 223—225. patent articles, to supj^ly, [200, 201, 284]. patent mark, to send person to affix, 211. form of, [235]. patent void, power to licensee to determine, 219, 220. forms of, [233, 240]. power for licensee to determine, 219, 220. forms of, [233, 239, 240]. J^^oii:..— References to the Precedents and Forms are printed thus [64]. M. ^ ^ 402 INDEX. COVENANTS IN LICENCES -contimced. by licensor — continued. premium reserved, where, 197, 200, 224. iirior licences, as to no subsisting, 183, 198. fomis of, [230, 290]. production and custody of patent,^ 199, 200. form of undertaking, &c., [253]. rent reserved, where, 199, 200, 224. rent, cesser or suspension of, 205, 207. forms of, [231—233]. rival business, not to engage iu, [241]. such a covenant not against public policy, 241, n. royalties only reserved, where, 198, 223, 224. royalties, remission or suspense of, 204 — 206. forms of, [232, 233]. specification, not to amend, 199, 202. foi-mof, [236]. stamping of articles, 211. form of, [235]. subsisting licences, none, 200. foi-m of, [236]. title, as to, 195—197, 224. form of covenant for right to grant, [247]. validity of patent, as to, 195—197, 224. foi-m of, [247]. how far binding on assigns of licensee, 185, 186. list of ordinary, 223—225. on sale on hke system, 39, 208, 209. passive, as to user of invention probably bind assigns, 186. COVENANTS IN MORTGAGES, 128. forms of, 167 — 179. COVENANTS IN SUB-LICENCES, 214, 216, 289, 290. foi-ms of, [289, 290]. CEEDIT, ^,^,^ limitation of, to be given by agent, [lOoJ. CROWN, .. s „ , grant of letters patent by (late practice), 2 et seq. licence not luider seal is contempt of, 184, n. patent to bind, 315. prerogative of, saved in new Act, 328. use of invention by servants of, 316. undertaking, &c. as to, under Conveyancing Act, 1881. .373— 375. forms of, [253, 291]. CUSTOMERS, _ 1 .. roqoi foreign, reservation m licence as to supply to, L^^^J- DAMAGES, action for infringement, in, 19, 312, 313. nominal, awarded where no real injury, 201, n. cesser of pajTnents to be in lieu of, [55, 94, 233, 268]. observations on, 39, 268, n. n , , ^^ oni r, distinction between, as to loss of royalties, and manufacturer s profit, 201, n. DATE OE PATENT, 15, 311. DEATH, . ^,^ of applicant before sealing, lo, 311. of inventor before making application, 12, 31 / . to cancel agreement, [86]. INDEX. 403 DEBTS, bud, remission of royalties iu case of, [loo, 232]. oLservations on, 204. inability of conii>auy to pay, 282, n. DECLARATION, application for patent now made by, 12, 308, 332. forms A, Al, of, [3o8, 3o9]. by committees, g-uardians, &c., 12, n., 324. executors or administrators of inventor, 12, 317. persons appointed by Court on petition, 12, n., 324. of importer, must state fact of communication, 4, 11, n., 13. form Al of, [3o9]. of trust of patent, in view of the Trustee Acts, C3, n., G9, n. until mortgage executed, [62, 68]. statutory, not made out of the kingdom, 337. DEED, agreement or contract by, 40. ri ro -r s-j cq oo o:; relating to patents to be executed as, when, 03, 09, (0, b6, bb, 9/, Jo. ambiguous words iu, taken against grantor, 182. binding on assigns from their acts, although they do not execute, llo. co-partner not bound by, of other partner, when, 101, n. covenants in, . , ^ .-, ■ o-- by one party alone, where stated that ho alone is to do a thing, ioo, n. by use of expression " agreed and declared," 255, n. delivery of, attestation claxii^e prima facie evidence of, 184, n. what held sufficient, 184, n. estoppel by, 41, 111, n., 184, n , ,,, . ..,. execution of, by every person who should become an assignee, llo. provisions as to, [148, 149]. failui-e of consideration for hccnce immaterial, if by, 190. inspection of, by mortgagor, 375. licence not stamped as a, 184, n. partition of a patent, of, [165]. partnership for working a patent, of, [99]. _ . ^ o-o o-- production and safe custody of, under Conveyancing Act, 3/3—3(0. purchase, execution of, under Conveyancing Act, 371. receipt indorsed on, or in body of, 380. requisite at law to assign things created by deed, 111. for assignment of ijatent, 110, HI. supplemental or annexed, 380. in payments, determination of agreement or licence on, 37, 38, 218—220. provisions as to, [54, 239]. DEFEASANCE, in assignment of patent, effect of proviso tor, lib. DEFENCE OF PATENT, covenant bv licensor as to, 199 ct seq., 20o, 20G. forms of, [233, 238]. DEFINITIONS, general, iu new Act, 328. applicant, 336. average clause, 193. British possession, 329. comptroller, 329. Court, 21, n., 329. estoppel, 41. exclusive licence, 182. fine, 193. invention, 321. law officer, 329. Note.— i?e/erences to the Precedents and Forms arc i^rintcd thus [G4J. D D 2 404 INDEX. DEFINITIONS— coM/., 184, n. not required for a licence, 184. what held sufficient, 184, n. of particulars in action for infringement, 316. DEMISE, mortgage of patent need not be by, 17o, n. DESCENDING SCALE, royalties in, [232]. observations as to, 208. DESTRUCTION, of patent, duplicate granted, 318. DETECTION OF INFRINGEMENTS, covenant as to, 217. form of, [239]. DETERIORATION, of goods in transit, liability for, 261, n. DETERMINATION, of agreements, 44 — 46. provisions for, [53, 54, 75, 85, 86, 88, 91]. of licences, 190, 200, 218—220. forms of notices for, [296—298]. provisions for, [239, 240, 262, 268, 269, 296]. DEVOLUTION, of right of application for patent, 12. DIE, provision as to, [235]. stamping articles with, [235]. DIRECTORS, distinction between trustees and, as to registi-ation of company, 96, n. INDEX. 405 DISABILITY, declarations on behalf of persons under, 324. DISCLAIMER, of part of specification or title, old practice, G — 8. new practice, 18, 19, 312, 313. DISCLOSURE, of invention, confidential, 27, 28. p^o^•i.sion as to, [-Jl]. DISCONTINUANCE, of use of invention, power to revoke licence on, 218. proA-iso as to, [239]. DISCOVERY, of new process. Sec Iitteovejients. DISHONOUR, of bills, etc., iiower to revoke on, [262]. DISPOSITION, of articles unsold at end of agreement, [75]. DISSOLUTION, of partnership, accounts directed in action, 102, n. effect of, as to separate working of patent, 206, n. rights of partners to patent after, 100, n. DISTRESS, no clause for, m licences, since Bills of Sale Acts, 203. DOCUMENTS, amendment of, by comptroller, 12, 322, 337, 341. copies of, to be furnished to Patent Office, 336, 337, 343. registration of, 8, 9, 23—25, 83, n., 132, 133, 313, 342—344. DRAFTS, dishonoiu" of, power to revoke on, [262]. payments by, [260]. DRAWINGS, 13, 308, 324, 332, 333. amendment of, form of application for, [347]. revised rules of 1886 as to, 338, 339. DUPLICATE, of letters patent gi'anted where lo.st, &c., 318. fonn of application for, [351]. DURATION, of letters patent, 17, 311. ECUADOR, no longer member of International Union, 36, n. EMOLUIMENTS, assignment of, with patent, 113. ENLARGEMENT, of time for acceptance of complete specification, 14, 332, 357. leaving complete specification, 14, 332, 357. payment of fees, 312, 340, 345. power of comptroller as to, 34 1 . Note. — lleftrences tu the Precedents and Furms are printed thus [04]. 406 INDEX. ENTRIES, in register of patents, 24, 25, 322, 323, 343. certified copies of, 343. expungement of, 24, 2o. falsification of, 323. sealed copies of, as evidence, 322. EQUITABLE, assignees of licence, when not estopped from disputing patent, 190, n. mortgage, stamp duty on, 63, n. EQUITIES, between assignees under registered and unregistered assignments, 9, 25, 133. may be enforced, 322. EQUITY OF EEDEMPTION, purchaser of, bound to indemnify vendor, 121, n. ERRORS, correction of clerical, by comptroller, 322. form of request for, [352]. ESTATE, subject to liabilities, purchaser of, bound to indemnify vcndoi', 121, n. ESTATE CLAUSE, 382. ESTOPPEL, 41, 111, 112, n., 184, 185, n., 187 ct seq., 191. EVIDENCE, certificate of comptroller to be, 323. copies or extracts from register to be received as, 322. dispensation of, by comptroller, 344. of delivery of a deed, 184, n. register to be, as to matter directed, &c., 23, 313. EXAMINER, duties and reports of, as to applications and specifications, 13, 14, 308, 309. production of report of, in legal proceedings, 309. EXCLUSIVE LICENCE, agreements to grant, [84, 87]. amounts to an assignment, when, 111, n., 19G. company, to a, [278]. definition of, 182. district, for a, comparison between assignment and, 117. equitable assigns of, not estopj^ed from disputing patent, when, 190, n. life annuity, in consideration of, [271]. non- exclusive, to become, [242]. partially, 183. precedents of, [263, 273, 283]. premium and royalties, at, 199 et scq. precedents of , [273, 278]. rent and royalties, at, 193 ct scq. precedents of, [250, 254, 2G3, 278, 283]. sale on hire system, 208. precedents of, [89, 93, 260]. trustees for owners, to be gxanted by, [149]. warranty of title to invention not implied in, 188. See Licence. EXECUTION, of deed, under Conveyancing Act, 1881 . .373. EXECUTORS, of applicant or inventor, application for patent by, 11, 12, 311, 317, 338. assignment of patent by, before registration of probate, 133, n INDEX. 407 EXECUTOEY CONTRACT, distinguished from concluded one, 204, n. EXHIBITION, . , ,.,. . ... „, „„- of invention at industrial or intoniiitional exhibitiuns, 318, 3J4, 6^i. form of notice of intended, [351]. EX-PARTNER, dispute of validity of patent by, 100, n. working of patent by, 2GG, n. EXPENSES, ^ ^ of carriage of goods, borne by whom, 201, n. provisions as to, [75, 284]. preparation and execution of licence and countei-part, L^'^J- trusts of patent, contribution by beneficiaries, [125]. EXTENSION of term of 'patent, 19, 20, 114-116, 140, n., 142, n., 314. covenants as to, [137, 140, 152, 171]. of time, acceptance of complete specification, 332. leaving of complete specification, 332. payment of fees, 340. form of application for, [350]. EXTENT OF PATENT, 311. EXTRACTS, from register received as evidence, 322. royalties per shuttle according to width of, [230]. FACTOR, action by, lOG, n. care of goods by, what, 107, n. insm-ance of goods by, 107, n. liability as to robbciy of goods, 107, n. FACTORY, inspection of, 212, 213, u. provisions as to, [238, 286]. licensor to send person to, to atfix patent marks, [23oJ. FAILURE, of consideration, 44—46, 187, 190. FALSE REPRESENTATION, as to article being patented, penalty for, 326. FALSIFICATION, of entries in register, 323. FAST DAYS, „ , . , , a ■ t -xoi public, excluded as to time for Icavmg documents and paynig tecs, 626. FEES, assignment for district, covenant as to payment of, [140]. observations on, 116. proviso as to nonpayment of, if assignee ceases to work, [140]. certificates of payments of, 340 form of api>lication for, [3491. charge of, on interest in patent, [140]. co-OAvners, payment of, by, 116, 122. provisions as to, [71, 140, 142, 144]. Note.— iif/erences to the Precedents and Forms are xirinted thus [G4]. 40a- INDEX.. FEES — continued. covenants to pay, in agreements and assignments, [71, 140, 142, 144, 156]. in licence, [238]. observations on, 199, 200. in mortgage, 169. enlargement of times for payment of, 312, 340. form of application for, [350]. holidays, public, Sundays, &c. not counted in times for payment, 323. licence, on registration of, 222, 345. lists of, under new Act and the rules, 329, 344, 345, 351. reduction of, 314. remedy on nonpayment of, by co-owner of patent against the other, 116, 122. by licensee against licensor, 200. where not paid, damages in action for infringements may not bo allowed, 312. FINES, 193. FIRM, appointment by, of agent to sell patent articles, [104]. assets of, when patent is, 100, n. licence to, [263]. FIRST IIVIPORTER, of invention from abroad is an " inventor," 2, 10. FOOT-WARMERS, royalties on, to which invention is to be applied, [231]. FORECLOSURE, action for, sale may be directed in, 378. power of sale under Conveyancing Act not to affect right of, 377. FOREIGN, concession held by licensor, recital of, [84, 254]. customers, of licensor, licensee on notice to supply, [284]. reservation in licence as to supplying, [283]. patents, 36, 62, n., 77, n., 78, n., 167, n., 365. agreement for sale of, [77]. expiration of, formerly rendered British patents void, 17, n. not so now, scmblc, 17, n., 328. mortgage of, 62, n., 167, n. power of attorney to take out, [393]. vessels in British waters, use of invention in, 319. FOREIGNER, assignment to bim (inventor) of patent, by his agent the patentee, [160]. may apply for a patent, 11, 307. See Alien. FORFEITURE, of licence, none on breach, if no power of revocation, 219. of moneys paid, liberty to withdraw from contract on, [55]. FORMS, common, [48 — 56]. issued bv Board of Trade, in P. R. 1883, second schedtde, 346—353. P. R. 1885, second schedule, 358—361. of letters patent, [48]. FRANCE, ) is member of International Union, 36, 365. ;'- "^ 3 '^ FRAUD, how affect priority of registration, 25. may enable licensee to dispute patent, 190, n. moneys paid under licence returnable where, 191, INDEX. '^'-'^ "'""^^nutSlttventor not invalidntod in case appUcation made in, 21, 317. 31.5. FKENCH PATENT (brevet d'invcntion), recital of, [oO, 87]. FUTURE IMPROVEMENTS, covenants as to, [o2, f, 02, 8^, 13', 1 1-^- ^ ^-. J observations on, 6^—6o, lio, ^lo, — i. ^^'e word does not in a grant imply a covenant, 192. GOODS, -u , in- ^ care of, by factor, what, 1U(, n. Sg'e ol to agent, expenses boz^e by fir-m, [lOo]. expenses of, by whom borne, 261, n. pro^'ision as to, [284]. when sold, who undertakes 261 n. deterioration of, in transit, liability for, 261, n. irr^gent on^, not^ffectld^y bankruptcy of principal, 108, n. repuK^^v^hip of 'i'^^^^^^^ of agent, where principal banknipt,. 108, n. ^"^^Sfilnt, rescission of co-tract where 44-46 monthly, to agent for sale, [lOo]. See Aiiticles. ^^^ patentee of a sub-term is a licence 196 n. uo impUed covenant from use of word, 192. '' "^romPlsory, by order of Board of Trade, 313. forms as to, [348, 349]. ^ ,-■ co-owners, by, provisions as to, [6o, ,1, 8., 11 J, i^^J- observations on, 118, 119. mortgagee, by, provisions as to, [1<0]. observations on, 129— i^i- mortgagor, by, provisions as to, L16JJ. observations on, 129— 131. not imder seal, is contempt of Crown, 184, n. of patent, 2, 5, 15, 307— 311. ^assignment before, whether valid 24, 311. assignment to be made after, [j 3J. jointly, to persons, 10—12, 30^, ood- leo-al personal representatives to, 1 1 , 1 2 , 3 1 1 . no new! if former revoked, or void from breach, 113, n. opposition to, 15, 310, 339. proceX^'fortSringement not until after, 15, 311. recitals of, [49, 50]. registration of , 23-2o, 313, 321, oil. of sub-licences, express power for, [2 J / J. observations on, 214—210. form of, [288]. ^^"""^Suous words in deed taken against, 182. GREAT BRITAIN, „.. is member of International Union, 36, 37, 3bo, n. N0TE.-iJe/ere«ces . J , release of share of one to the others to obtain release from obliffations 123, n. ° Crown is bound by, 315. date of, 311. declaration of trust of, until mortgage executed, [63, 68]. observations on, 63, n., 69, n. definition of, 2, 320. dissolution of partnership, right of partners to, 100, n. duplicate, 318. form of application for, [351]. duration of, 17, 311. estoppel of assignor from disputing validity of, 111. of licensee also, \^1 ct scq. existing at commencement of new Act, law governing, 10, 22, 320. extension of term of, 19,314. time for sealing of, 15, 310, 311, 332. foreign, 36, 365. agreement for sale of, [76]. application for, must generally be before acceptance here of complete specification, 77, n. expiration of, not now scnthle affect home patent, 328. International Union, 36, 365. INDKX. 425 TATENT—contimud. foreign — con t in iicd. power of attorney to take out, [293]. recital of French (brevet d'iiiveutiou), [87]. grant of, 15 — 17, 307— ;5ll. fur one invention only, 317. no proceedings for infringements can be taken until after, lo, 311. not where use of invention is contrary tu hiw or morality, 322. opposition to, 15, 310, 339. form of, [340]. indorsement on, of notice of agreement, [G9]. infringement of, proceedings for, 31G, 317. .St'c Infringements. monies returned, if not obtained, [55, 72]. mortgage of, C2, n., 128 — 131. precedents of , 167, 172. option to purchase share of co-owner in, [G6, 103, 241]. partition of, by agreement, [82]. deed of, [IGo]. partnership, deed of, for working, [99]. penalty for false representation as to an article being subject of, 326. power to rescind, if delay in obtaining, [54]. purchaser by power of attorney to take out, [54]. re-assignment of, in certain events, [102]. registration of, 23—25, 313, 342—314. revocation of, 20, 21, 206, 315—317. royalties to be paid to trustees dui'ing proceedings for, [233]. observations on, 206. suspension of payments during proceedings for, [268]. observations on, 205. where company licensees, [281]. sale of, on hire system, [89, 93, 266]. observations on, 37—39, 208, 209, share of, [70, 142, 144, 148, 154]. assignee bound to indemnify assignor, 121. by one intending partner to the other, [100]. sealing of, 15, 310, 311, 332, 338. term of, 17, 311, 312, 314. to be taken m joint names, and then vested in party (not inventor), [87]. to bo vested in licensor, subject to covenant to grant licence, [87]. to first inventor, not invalidated by fraudulent application, 317. trust for sale of. at request of majority of o\vners, [149]. validity of, assignor estopped from disputing, 111. certificate of question having been raised in prior action as to, 316. covenant as to, 39, 114, 129, 196, 197, 216. forms of, [137, 169, 238, 247]. equitable assigns of licence, when not estojiped from disputhig, 190, n. ex-partner not cstopj^ed from disputing, when, 100, n. licensee so estopped, how far, 187 ct scq. trustee in banliuptcy of assignor not so estopped, 112, n. void, cesser of payments if, [55, 85, 233, 268]. observations on, 3S, 39, 189—191, 209, 219, 220. how licensee should relieve himself from obligations if, 190. licensee restrained from using invention contrary to covenant, although, monies not recoverable if, 44 et seq., 190, 272, n. on non-payment of fees, 10, 49, 312. power to determine if, [240]. observations on, 3S, 39, 200, 219, 220. return of part premium if, when, 220. waiTanty of title not implied in contract to assign, 112. working of, by co-owners, 120 et seq. by ex-partners, 266, n. Note, — Befcrences to the Precedents and Forms are jirinted thus [64]. 42(5 INDEX. TATENT—confunicr?. ■working of — contbuted. compulsory licences ordered by Board of Trade Avliere insufficient, 313. licensee to commence by certain date, [284]. power to revoke licence where, 218. form of such power, [239]. PATENT AGENT, condition as to preparation of complete specification by, [60, n.]. PATENT ARTICLES, appointment of agent to sell, [104]. future discoveries of new j)rocesses should be comprised in contract, 33—35. licence merely to sell, 221. precedent of, [259]. licensor to supply "selling " licensee with, [260]. mere agent cannot sell at any prices he pleases, 105, n. monthly supply to agent for sale of, [105]. to be sujaplied for service of Crown, condition as to (late practice), 6. sale of, confers what right of user in vendee, 84, n., 117, n., 194, n. limit of credit to be given by agent in, [i05]. See Articles, Goods. PATENTEE, agent of, cannot sue for infringements, 200, n. definition of, in new Act, 321. who may be. See Application — Patent. PATENT LAW AMENDMENT ACT, 1852 (15 & 16 Vict. c. 83), 3 et seq. PATENT MARK, use of, by licensee, 210 — 212. covenants as to, [234—236, 247, 285]. PATENT MUSEUM, 319. PATENT OFFICE, 10, 321—325, 336 et seq. PATENTS RULES, 1883. .335— 353. 1885.. 350— 361. 1886 (revised), as to drawings, 338, n. PENALTY, false representation as to articles being patented, 326. unaixthorized use of royal arms, 326. PENDING, applications at commencement of new Act, 10, 22, 320, 328. proceedings also, 10, 22, 320, 328. PERFORMANCE, of conditions in a licence, covenant as to, [161, 162, 175, 178]. observations on the conditions, 16, 17, 199, n. of contract, partial, is a bar to rescission, when, 46. "PERMITTED ASSIGNS," 193, n. "PERSON," in new Act, includes "body corporate," 328. PERSONAL, estate, right or privilege in patent is, 2. liability, loan payable out of profits but no, [67]. thing, no covenant created by law respecting, 116, 122, n., 192, 196, 212, n. INDEX. 427 TETITION, fur compulsory licence to be granted, 22, 313. forms of, and of application, [348]. extension of term of patent, I'J, 314. Privy Council rules as to, 3G2 — 3G4. grant of letters patent (late pi"ietii-e), 4. revocation of letters jiatent, 21, 315. PLANT, licensee to purchase, [284]. recital as to possession of, [73]. PLATES, covenant to purchase and use, bearing jiatent marks, [234, 235]. observations on, 210, 211. PORTUGAL, is member of International Union, 3G, 3G5. POSSESSION, by mortgagee of licence, covenant by him with licensor to perform conditions duiing, [178]. of invention, declaration as to, on application, 308. foi-ms A, A I, [358, 359]. POST, applications for patent, documents and notices made and sent by, 323, 337. provision as to service of notices by, [242]. POWER, of attorney, purchaser may take out patent by, [54]. to take out foreign patents, [293]. attestation of, 293, n. imder Conveyancing Act, 1881 . . 379. 1882.. 384. of comptroller, amendment, 337. discretionary, 323, 336. Sec Compteollee. of licensee, to assign licence, includes power to grant sub-licences, 187. to detcrmiae licence, 200, 219, 220. form of, [239, 240, 269]. to grant sub-Licences, 187, 214, 215. forms of express, [237]. of licensor, to revoke licence, 218, 219. fonns of, [239, 2G2, 281]. of mortgagor and mortgagee respectively, 128 ct scq., 375 — 377. fomis of, [169 e< seq-l. of purchaser, to rescind contract if vendor delays obtaining patent, [54]. of trustees, of appointment of new, in majority of o^^'ners of patent, [152]. to give receipts, 150, n. grant licences, [150]. POWERS, of co-o\snicrs of iiatcnt inter sc, 118 ct scq. assignments defining, [142, 144, 154]. of joint ajiplicants uiter sc, agreements defining, [70, 82]. PRACTICE, of conveyancers, 196. Note. — References to the Precedents and Forms are printed thus [64], 428 INDEX. PEEMISES, inspection of, covenant by licensee as to, [238, 286 (mutual)]. observations on, 212. covenant (mutual) between licensor and licensee as to, [286]. ordered in action for, breach of covenant in licence, 213, n. infringement, 213, n. of agency, designation on front of, [lOo]. PREMIUM, definition of, 193. exclusive licence for, at a premium only, amoimts to assignment, when, 196. in cash and shares of a company, [278]. hcence at, only, (Sale on Hire), [89, 93, 266]. observations on, 37—39, 196, 208, 209. royalties and, [273]. observations on, 196 et seq. royalties, rent and, [278]. observations on, 196 e< scq. return of part of, if patent become void, 206, n., 220. when made payable for non-exclusive licence, 193, n. PEEROGATIVE, of Crown, saA'ed in new Act, 328. "PRESCRIBED," definition of, in new Act, 329. PRESUMPTION, from recitals in simple contract, but not estoppel, 4 1 . PRICES, mere agent cannot sell at any, he pleases, 105, n. of articles, [74, 85, 242, 274, 275, 285]. guarantee of, 106 {del credere), 261. of material according to amount of acid in it, [85, 256]. quasi-partnership from agreement to receive share of, 210. royalties in fixed sums increased to a percentage on selling, [274]. sale by licensee of articles to be not less than certain, [274, 275]. sales thi-ough brokers, and meetings to regulate, [242]. PRIORITY, by registration, 25. of apphcation, 4, 13, 311, 316, 317. PRIOR LICENCES, assignment of patent includes benefit from, 113. licence subject to, [273]. PRIVILEGES, given by letters patent are an incorporeal chattel, 2. PRIVY COLT^CIL, judicial conunittee of, entry on register of orders of, 343. foi-m of application for, [353]. extension of term of patent by petition, heard before, 19, 314 rules of, 20, 314, 362—364. PROBATE, registration of, by executors who had assigned patent, 133, n. PROCEEDINGS, abandoned, as to apialication for patent, provision as to costs of, [64]. before law ofiicer, and costs of, 318. disclaimer of part of specification during, 18, 313. IXDKX. 429 rROCEEDINGS— fOH<(«Kfrf. for infringements, 7, 15, 18, 311, 31:5, 310, 317. covenant by licensee to assist licensor in, 217. foi-ni oif, [239]. covenant by lieensur to take, or pernait licen.see, 199, 217. form of, [238, ..dS*^. 2 57 1 form of, in sub-licence as to, [290]. exclusive licensee can take, 201. inspection of premises during, order for, 213, n. licensee cannot take, if licence be not under seal, 181. licensor can take, in district of cxi-lusivo licence, wlicu, 217, n. none allowed as to acts committed before publication of complete .specification, 1.5, 311. non- exclusive licensee cannot take, unless special damage, 200. none until patent sealed, 18, 311. suspension of payments while licensor omits to take, [231]. observations on, 205. for revocation of patent, 20, 21, 316, 317. payments to cease, or pending appeal be suspended, during, [55, 94, 233, 268]. observations on, 38, 39, 209. royalties and rent to be paid to trustees during, [233]. observations on, 20G. in Scotland, summary, 327. pending at commencement of new Act, 10, 22, 328. production of report of examiner in legal, 309. remcd}- where groundless threats of legal, 317. revival of suspended payments after successful appeal in, 9 1 . suspension of payments during, [55, 94, 233, 268]. observations on, 38, 39, 209. PROCESS, discovery of new, for making patent article, 33. PRODUCTION, of account books, [51, Go, 146, 246, 275, 280, 285]. deeds generally, acknowledgment, &:c. as to, 373 — 375. to mortgagor by mortgagee, 375. letters patent, [92, 253]. licence to sub-licensee, [291]. report of examiner, in legal proceedings, 309. PROFITABLE WORKING, what is lowest limit of, 240, n. PROFITS, assigns of patent, when bound to observe assignor's covenant to pay share of, 33, 121, 185. interest by reference to or out of, [61, 173, 174]. observations on, 29 — 31. liability as partner from sharing, 30, 31, GO, n., 124, 209. of licensor are distinct from that of manufacturer, 201, n. loan only payable out of, and not personally, [67]. observations on, 31. mode of ascertaining, wliere no partnership, 68, n. purchase -money of share of patent, part of, to come out of, [100]. right to share, gives right to accounts, 33. royalties on sale monies after satisfaction of cost price and manufacturer's, [228]. share of, as royalties, 209. ■working invention at, the lowest limit of, 240, n. PROMISSORY NOTES, dealings with, by partners separately, 101, n. pro:moters, vendors to company, who are also, 97, n. Note. — References to the Precedents and Forms are printed thus [64]. 430 INDEX. PKOPRIETOR, entry of name of legal, on register, 23, 322. registration of body corporate as, 3i3. PEOTECTIOiSr, by accei^tance of complete specification, 5, lo, 311. of inventions exhibited at industrial or international exhibitions, 318, 334. provisional, 4, 13, 311. PROTOCOL, of International Convention, 36, 367. PROVISIONAL PROTECTION", 4, 12— 14, 311. recital as to, [50]. PROVISIONAL SPECIFICATION, 4, 308, 309. abandonment of, 13, 14, 64, n., 309, 332. register of documents relating to, 24, n. PUBLIC, inspection, abandoned drawings and specifications not open to, 14, 309, 332. acceptance of complete specification after, 14, 310, 338. report of examiner not open to, when, 309. policy, agreement to assign patents for future iraprov^ements not against, 43. covenant not to engage in adverse business is not against, when, 241, n. use of invention, within kingdom prior to protection or grant, effect of, 4, G, 15. PUBLICATION, of invention, after acceptance of complete specification, 14, 64, n., 310, 318. during time of provisional protection, 4, 14, 311. not made where application abandoned, 14, n., 332. of report of examiner, 309. PURCHASE, completion of, time fixed for, [80]. contracts to, by company, kinds of, 79, n. deed, execution of, 371. of cargo of raw material, condition precedent for licence, [84]. of contract to sell patent, by syndicate, agreement as to, [96]. of labels, plates, &c. bearing patent mark, covenant as to, [247]. of material by licensee from licensor only, [256]. of patent, improvements, &c. should be comprised in, 33 — 35. options as to, or of share in, [66, 103, 241]. recital of agreement to, [50]. of patent article, right of use after, 84, n., 117, n. of plant, machinery, &c., [284]. of raw material, determination of agreement if no, [86]. of share of patent by intending partner from the other, [100]. withdi-awal from, if complete specification not accepted in time, [71]. PURCHASE-MONEY, by instalments, 37—39, 208, 209. covenants to pay, [70, 89, 103, 267]. if any in an-ear, balance or part demanded, at once payable, [268]. observations on, 37, 38, 209. payments of, to cease, if patent void, [55, 268]. observations on, 38, 39, 209. suspense of, during appeal proceedings, [55, 233, 268]. observations on, 38, 39, 209. in cash and shares of company, [80]. interest on, in shape of interim royalties, 94, n. of share in patent to come only from profits, [100]. INDIA'. 431 rURCHASER, a.ssiguiiient to, on sale on hire system, provision for, [91]. co-applieaut by amendment, to be, [51]. observations on, "JO. einplo}-inent of vendor to manufacture for, [7-')]. extent of his rifj^ht to use patent article, 81, n., 117, n. liberty to withdraw, on forfeiting monies paid, [oo]. of equity of redemption, bound to indemnify vendor, 121, n. of estate subject to liabilities, bound to indemnify vendor, l'l\, n. protection of, as to receipt in, or indorsed on, deed, 380. to take out foreign patents by power of attorney, [54]. foim of power, [293]. QUANTUM MERUIT, [46]. QUANTUM VALKBAXT, [46]. QUASI-PARTXERSHIP, from sharing net profits, 30, 31, 124, n., 209. selling prices, 210. QUEENSLAND, is member of International Union, 36, 365. RAILWAY COMPANT, deliver}' to, of articles to bo deemed good delivery, [261]. RAW MATERIAL, analysis by chemists of cargo of, [So, 256]. determination of agi'eement if no purchaser of, [86]. prices of, according to amount of acid, [85, 256]. purchase of cargo of, condition precedent for a licence, [84]. recital of foreign concession for obtaining, [84]. of expected arrival of cargo of, [84]. See Mateeial (Raw). RE-ASSIGNMENT, of patent in certain events, [102]. RECEIPT, in body of, or indorsed on deed, 380. power of, mortgagees to give, 376, 377. trustees to give, 150, n. RECEIVER, appointment of, by mortgagee, 377, 378. RECITAL, construed as a covenant, 112, n. estoppel by, 40, 41, 111, n., 184, 191. in assignments of patents. 111 — 113, 115. in licences, 191, 192. in mortgages of patents, 128, 129. of acceptance of complete specification, [50]. of application for patent, [59]. of articles of partnersliip, [2G0]. of assignor being absolutely entitled to patent, 113, n. of assignor representing himself as inventor, 112. of bond, [271]. of cargo of material from abroad expected, [841. of complete specification having been filed, [50^. of desire to purchase patent, [73]. of foreign cnccssion for obtaining raw material, [84]. of formation of company, [79]. Note. — Rvftrcncns io the FrecedenU ami Furms are iiriuied thus [64]. 432 INDEX. Ii'ECITAL—co)itb!md. of French jiatent (brevet d' invention), [87]. of grant of letters patent, [49, 50]. of invention, or claim or title to, 111. forms of, [50]. of inventor, claim to be, [50]. of licence, [161, 288, 295]. of payment of royalties and satisfaction of other conditions in licence, [295]. of plans, drawings, &c. being possessed, [99]. of jjlant and machinery being possessed, [73]. of provisional protection obtained, [50]. of specification i/i toto iu patent (former practice), 17. of title by assignment, [51]. of title or claim to invention not usiial iu licences, 192. of trial of invention, [51, 64]. overridden by express covenant, 112, u. RECONVEYANCE, as to mortgage, 384. EECTIFICATION, of register, 24, 25, 322. EEDDENDUM, 194. form of, [245]. REDEMPTION, action for, 378. proviso for, [168, 174]. REDUCTION, of fees, by Board of Trade, 314. of interest on mortgage debt on punctual payment, [168]. of royalties, on articles, iSrc. in hand at end of agreement or licence, 203. provisions as to, [75, 229, 264, 277]. to equal lowest in other licences, [231]. observations as to, 207. REFEREE, appointed by Act of Parliament cannot obtain patent for discovery made in course of duty, 11. REFERENCE, of application for patent to examiner, 13, 308. See Examinee. to arbitration, 56, n. form of clause as to, [56]. REFUSAL, of application, by comptroller, but he may require amendment, 308. REGISTER, at Patent Office, 23—25, 313, 321, 322 ; P. R. 1883, 342—344. copies or extracts from, received as evidence, 23, 322. entry on, of what docimicnts, 23, 24, 322, 343. falsification of, 323. of orders of Privy Council or Court, 343. form of application for, [353]. form of, notice for alteration of address in, [352]. request to enter name on, [350]. request for notification of licence on, [351]. former, to be deemed part of present, 23, 328. memorandum as to revocation of licence for entry on, [296]. rectification of, by expungement, &c., 24, 322. searches iu, 113, n., 173, n., 197, 322, 343. trusts not to be noticed in, 23, 321. Sec Registeation. REGISTERS OF PATENTS AND PROPRIETORS (FORMER), 8, 328. INDEX. 433 REGISTRATION, at Patent Office, 23—25, 313, 321, 322 ; P. R. 1883. .342— 341. effect of, 23, 322. equities enforced not%vith standing, 23, 322. none of documents affecting provisional specifications only (late practice), 8, n. of agi-ocmcnts, 23, 24, 63, n., 76, n., 83. n., 87, n., 92, n., 103, n. of assij,'nmonts, 23— 2o, 132, 133, 313, 322. a.ssiyTice not able to sue for infringements until, 133. not compulsory except as against third parties, semble, 132. reservations in, 1'54, n. will relate back to dates of instruments, semble, 133. of body corporate as proprietor, 328, 343. of legal interests or rights, 23, 83, n., lo4, n. of licences, 23—25, 222, 313, 343. executed before grant of patent, 24, 87, n. none, semble, if not under seal, 184. of mortgages, 23-25, 132, 133, 313, 322. of probate by executors who had assigned patent, 133, n. of trusts not effected, 9, 23, 321. prioritj' obtained by, 25. under Companies Act, 1862, not of trust investment, 96, n. where ten or more persons (bankers) or twenty or more (except bankers) are associated in business for gain, 96, n. what documents are fit subjects of, 23, 24, 83, n., 313, 321, 322. under old law, 8. See Registee. RELEASE, by one co-grantee to the other of interest in patent, [158]. from future royalties (deed of commutation), [295]. of covenantor, on procuring substituted covenant, [178]. of demand by one partner will bind the others, 101, u. of power, or contract for (Conv. Act, 1881), 380. of share of patent by owner to the others on being released from covenants, 123, n. of vendor of licence from obligations, provision against, [164]. REMEDY, of co-owners of patent utter se, none as to payment of fees, 116, 122. of licensee, none against licensor for non-payment of fees, 200. when patent becomes void, 190. of licensor, where assigns of licensees not bound, 186. where groundless threats of legal proceedings, 317. REMISSION, of royalties in case of bad debts, 204. form of proviso, [232]. REMUNERATION, to trustees of patent, [152]. RENT, average clauses as to, [230, 250, 279]. observations on, 193. cesser of, while insufficient supplj' of material, [233, 255]. covenant to paj-, [229, 250, 279]. definition of, 193. paid to trustees during proceedings for revocation, 206. provision as to, [233]. suspension of, 205. provision as to, [231]. REPAIR, of breach of covenant, notice as to, before power of revocation exercised, 219. form of, [297]. Note. — References to the Precedents and Forms are jn-i'nted thus [64]. M. F F 434 INDEX. REPEAL, of acts by Patents, &c. Act, 1883. .328. list of such acts, 330, 331. of past patent rules, 344. REPEALED ACTS, 3, 330, 331. saving in new Act as to past operation of, 3, 10, 22, 328. REPORTS, of comptroller, annual, 325. of examiner, as to applications, 13, 14, 309. conflicting applications, 309. not published, when, 309. on comparison of specifications, 13, 14, 309. production of, in legal proceedings, 309. REPRESENTATION, penalty for false, as to article being patented, 326. REPRESENTATIVES, legal, of deceased inventor, applications for patents by, 12, 311, 317, 318. declaration by, 317. REPUTED OWNERSHIP, of principal, when bankrupt, goods held by agent are not in, 108, n. under Bankruptcy Act, 1883 (46 & 47 Vict. c. 52), s. 44. . 105, n., 108, n. REQUEST, forms of, for correction of clerical errors, [352]. to enter name on register, [350]. to enter notification of licence on register, [351]. RESCISSION, of agreements or contracts, generally, 44 — 46. in various events, [94]. if certain number of shares not subscribed, [81]. if not adojited by company, [81]. if vendor delays in obtaining patent, [54]. part performance by one party bars power of other, when, 45, 46. to supply goods, 44 — 46. See Determination ; Revocation. RESERVATION, by patentee who assigns a share, as to alone working patent, [154]. observations on, 126, 154, n. in licence, as to existing orders for articles, [283]. as to supi^ly of articles to foreign customers, [283]. as to supply of articles to other licensees, [274]. of right to grant limited number of " selling " licences, [263]. what should be made, to prevent licence becoming an assignment, 1 83, n. in Patents, &c. Act, 1883, of remedies in Ireland, 327. RESIDENCE, of agent of inventor must be here, if agent is to apply for patent, 13, 160, n. of importer must be here, if he is to apply for patent, 13, 160, n. RESTRAINT OF TRADE, covenant to manufacture only according to specifications held not in, 212. RETURNS, gross, partnership is not result of agreement to share, 210, n. REVISED RULES, of 1886, as to di-awings, 338, n., 339, n. INDEX. 435 REVOCATION, of assignment of patent, effect of proviso for, 118. of licence, 218—220. forms of notice of, [296. 298]. memorandiua as to (to be notified on reg'ister), [296]. no forfeiture can arise, wliere no power of, 219. powers of, [239, 262, 269, 281]. of patent, 20, 21, 313, 315—317, 320. disclaimer durin<,' proceedings for, 18, 313. licences good until, 206. proviso for return of part premium in event of, 206, n. royalties and rent paid to trustees dui'ing proceedings for, [233]. observations on, 206. suspense of paj-ments during proceedings for, [55, 205, 268]. obsei-vations on, 38, 39, 209. RIGHT, of application for a patent, devolution of, 12. of insjiection, in action fnr infringement, 213, n. of licensee to sue for infringements, 200, 201, 221. of licensor to sue for infringements in district of exclusive licence, 217, n. reserved by patentee to use a share assigned by him is a legal one, 154, n. to grant licence, covenant as to, [247]. observation on, 197. to grant sub -licence, 185, n., 187, 214. covenant as to, [289]. to manufacture, includes right to sell patent article, 53, 84, n., 194. to use patent article -within area of patent, 84, n., 117, n., 194, n. RIGHTS, assignment of patent together with powers, emolimieuts and, 113. legal, documents only conferring, can be registered, 83, n. of partners to use patented invention after dissolution, 100, n. of vendee in patent article, 84, n., 117, n., 194, n. RISKS, in transit of goods, 261, u. RIVAL, applicants, 309, 311, 315, 336. business, covenant not to engage in, in district, is not against public policy, 241, n. form of covenant, [241]. ROYALTIES, ascending or descending scale, in, 208. form of covenant to joay, [232]. between co-owners of patent, 123, 125, 127. pro\-isions as to, [65, 71, 83, 143, 145, 149, 1551. cesser of, to be in lieu of damages, [55, 94, 233, 268]. observations on, 39, 209, 268. commutation of, 207. precedent of deed of, [234]. covenant to pay, 203. fixed sums, [228]. rent and, [229, 255]. damage from loss of, distinct from damage to mauufactiu'cr, 201, u. decreasing 5 per cent, aimually, [279]. definition of, 193. different kinds of, 209. in fixed sums increased to a per centage on selling prices, [271]. interim, by way of interest on purchase-money, 94, n. k'sser, on articles, &c. unsold at cud of agreement or licence, [75, 229, 277]. licensee may deduct from, for payment of fees, [238]. on articles delivered to sub -licensees, 216. provision as to, [234]. Note. — Jlefercnces to the Precedents and Funns are pr into! thus [G4]. F F 2 436 INDEX. ROYALTIES— eontiiiued. on articles manufactured by sub-licciisces, payment of, to licensor, 216. on articles not manufactured according to specification, 212. pro^'ision as to pajTuent of, [236]. on carloads, [230]. on different products, [279]. on manufactiu-e and sale (both), [228]. on "manufacture" preferable to those on "sale," 123, 203. on manufacture, sale, or both, 203. on railway foot-warmers, to which the invention is to be applied, [231]. on sale moneys after satisfaction of cost price and manufacturer's profit, [228]. option to pay on sale instead of manufacture, or vice versa, or on both, 204. pro'ST.sion as to, [228]. paid to trustees during jjroceedings, 206. provision as to, [233]. payment of fixed minimum sum in, to entitle licensee to assignment (sale or hire), 37—39, 208. provisions as to, [9-i, 269]. per shuttle, according to width of fabric and period of use, [230]. power of revocation on non-payment of, 218, 219. form of power, [239, 262, 281]. recital of payment of, and satisfaction of other obligations, [295]. reduced on articles unsold at end of agreement or licence, 203. provisions as to, [75, 147, 157, 229, 231]. reduced to lowest in other licences, 207. pro\asion as to, [231]. release from payment of future, [295]. remission of, in case of bad debts, 204. pro^asion as to, [232]. share of profits, by way of, 209. suspension of, while licensor omits to proceed for infringements, 205. provisions as to, [94, 231]. to trustees pending proceedings, 206. provision as to, [233]. under licences granted by one co-owner, licensees not bound to see to dis- tribution of, 119. varied as sales continue, [232]. what covenants by licensor, where no rent or premium reserved, 198. EXILES, existing at commencement of new Act to continue until altered by Board of Trade, 328. repeal of, 344. of Board of Trade, 10, 324 ;-P. R. 1883. .335— 346 ; P. R. 1885. .356— 361 ; Revised Rules of September, 1886 (drawings), 338, n., 339, n. of Judicial Committee of Pri\'y Council, 20, 314, 362 — 364. SALE, of articles, by licensee, not to be at less than fixed prices, [274, 275]. carriage, who undertakes, 261, n. delivery to sub-licensees to be deemed, [234]. observations on, 216. moneys, royalties from, [228]. on commission, [106, 107, 284]. option to pay royalties on manufacture, not sale, or rice versa, or both, 204. provision as to, [228]. rights of vendee in, 84, n., 117, n., 194, n. royalties on, [228]. observations as to, 203. royalties on manufacttu'e usually preferred to royalties on, 123, 203. royalties varied on progress of, [232]. supply monthly by j)riucipal to agent, [105]. to be only through brokers, and meetings to regidate prices, [242]. when efi'ected, 74, n., 204. of mortgaged property in action, 378, 379. INDEX. SALE — continued. of pateut, agreements for, -c .• ^-.y^ after acceptance of complete specification, lilj. colonial and forcijm, [76]. moiety of, [70, 100]. on liire system, [89, 93, 2CG]. observations on, 37 — 3'J, 208. power of, in mortgafre, 375 — 377. to tnisteu of inchoate company, [79]. trust for, at request of majority of owners, [149J. SALVADOR, „ ^ , ,. , TT ■ tr ^ 'ifi=i formerly, but not now member of International Union, 3b, n., 3Go. SAN DOMINGO, . is member of Intemational Union, 6b, 6bo. SAVINGS, in new Act, 32G — 328. SCIRE FACIAS, 20, 21. SCOTLAND, savings in new Act as to, 326. summary proceedings for offences imder new Act m, 6J.1. SEAL, agreements under, 40. _ , . r. ^Q^ ^ Ri-ant of licence not under, is contempt of Crown, 184, n. heii-s bound by covenant or bond under, though not named, 294 n. licence may be good as between parties, although not under, 184. but cannot be registered, 184. nor can licensee proceed for infrmgements, 184. nor will estoppel arise from recitals, 184. shouldbeunder hand and, 184. of the Patent Office now used on letters patent, 2, 321. SEALING, of letters patent, 15, 310. death of applicant before, 311. extension of time for, 332. proceedings for infringements after, 15, 311. where adverse api^lication, 311. 437 SEARCHES, ^.<^ty^^t-^*^, S-<^(tJ^ in register, 113, n., 173, n., 197. SECRETARY FOR WAR, .^. , oo -jiq assignment to, of inventions as to instruments or munitions of war, 22, 319. invention kept secret, 22, 319. proceedings for revocation not lie, when, 320. SECURITIES, ^ * ,7, „ charge to be kept on foot to prevent merger ot, 1/4, n. ST' PIT RIT Y for costs', licensee suing in name of licensor should give, 201, n. "SELLING" LICENCES, 195, 221. covenant agauist not assigning, &c., not usual in, 213, n. form of, [259]. ,,..,, v * rorii reservation in licence to grant limited number of, [263]. SEPARATE WORKING, of patent, agreements as to, [64, 70, 82]. v„.„, ^.y^ conditions where patent is divided into equal or unequal shaie*, 121 et scq. precedents, [70, 82, 142, 144, 148]. Note.— iie/erences to the Precedents and Forms are printed thiis [64]. 438 INDEX. SEPAKATE WOBKmG—confinHed. of patent — cotttinued. co-owners not partners where, although sharing royalties, 124. difficulties as to, 120. powers and obligations of co-owners where, 118, 119. SEEVANT, conflicting claims to invention between master and, 35. 8cc Mastee and Servant. SERVIA, is member of International Union, 36, 365. SERVICE, of notices, [242, 282]. under Conv. Act, 382. SHARE, of patent, assignee of, bound to indemnify assignor, 121. covenant by, to perform obligations, 121. assignment of, by patentee, where he alone is to work, 126. precedent of, [154]. of one tweKth, [144]. observations on, 122 et seq. to co-owners, on being released from obligations, 123, n. is assignable, 110. option to purchase deceased partner's, [103]. purchase-money of, to come partly from profits, [100]. of gross returns, no partnership arises where agreement to receive, 210, n. of profits, as royalties, 209. assigns of patent bound by assignor's covenant to pay, when, 32, 33, 69, 120, 185. » > » in specie, quasi partnership, 209. right to, gives right to accomits, 33. of selling prices, not quasi partnership, 210. SHARES, in company, agreement to sell patent for, [79]. contract as to issue of fully paid, to be filed, 80, n. licence to company in consideration of royalties and cash and premium in, [278]. in patent, assignment to trustees of owners of unequal, [148]. division into equal or unequal, 121 et seq. precedents, [70, 82, 142, 144, 148]. in syndicate, formed for piirchasing patent, [96]. SHUTTLE, royalties per, according to width of fabric, &c., [230]. SIMPLE CONTRACT, no estoppel as to, but presumptions from, recitals, 41. requisites of, 40. SOLICITOR- GENERAL, for England, is one of the law ofiicers, 10. SOLICITORS, of licensor to prepare licence and coimtei-part, [85]. payment to, if receipt in or indorsed on conveyance, 380. SPAIN, is member of International Union, 36, 365. INDEX. 439 SPECIAL DAMAGE, . licensor may sue for, as to district of exclusive licence, 201. "selling " licensee (exclusive) not probably entitled to sue for infrmgements in manufacture, unless for, 221. SPECIFICATION, accomimnied by di'a wings, 333. complete, abandonment ensues if not left in tune, 14, 309. acceptance of, advertisement of, 14, 310. appeal from refusal, 309. application void where not in time, 14, 309. ettectof, 15, 311. . if not within certain time, purchaser may withdraw, [71 J. inspection by public after, 14, 338. time for, 14, 309. extension of, 14, 332. agreement for sale of patent after acceptance of, [72]. amendment of, 18, 19, llo, IIG, 199, 202, 312, 313, 341. advertisement of, 313, 341. covenants against, without consent, llo, 110, 199. foi-ms of, [141, 23G]. form of application for, [347]. form of opposition to, [347]. application to be accompanied by provisional or, 12, 308. comparison of, with i)rovisioual, 14, 309. covenant, to manufacture only according to, 212. form of, [236]. held not in le.stramt of trade, 212. indexes and abridgments of, published by comptroller, 318. investigation of, at Patent Office, not conclusive as to its sufficiency, 310. must end with distinct statement of invention, 308. natui-e of, 308. of inventions held by Secretary for "War, 22, 319. publication of, by comptroller, 318. recitals as to, in patent, 17, 20. time for leaving, 14, 309. extension of, 14, 332. must commence with title, 308. not published if application abandoned, 14, 332. provisional, nature of, 4, 12, 308. protection by, on acceptance of application, 13, 311. to accompany (or complete) applicatitm, 12, 14, 308. transmission of certified copies to Edinburgh, Dubhn and Isle of Man, 324. SPECIFIC PERFORMANCE, of contracts generally, 41 — 43. lending and borrowing money, 43. sale of patents, 42. to execute mortgage, 43. STAMP DUTY, on agreement where money advanced, G3, n. on licence, 184, n., 222. STAMPING, articles with a die. Sec Patent Maek. STAMPS. See Fees. STATUTE OF FRAUDS (29 Car. II. c. 3), agreements subject to sc(;t. 4 of, 40. not applies to agi-eemeuts to borrow money, 43. STATUTE OF MONOPOLIES (21 Jac. I. c. 3), 3, 10, 303, 301. Note.— iit/erences to the Precedents and Forms are j^rinted thus [64]. 440 INDEX. STATUTES, 21 Jac. I. c. 3 (Statute of Monopolies), 3, 10, 303, 304. 29 Car. II. c. 3 (Statute of Frauds), 40, 43. 5 & 6 Will. IV. c. 62 (Statutory Declarations Act, 1835), 13, 337, 382. c. 83 (Patents Amendment Act, 1835), 6, 330. 2 & 3 Vict. c. 67 (Patents Amendment Act, 1839), 330. 7 & 8 Vict. c. 69 (Administration of justice, &c., by Tvivj Council), 6, 330. 15 & 16 Vict. c. 83 (Patent Law Amendment Act, 1852), 3 et seq., 8, 17, n., 20, n., 331. 17 & 18 Vict. c. 125 (Common Law Procedure Act, 1854), 56, n. 28 & 29 Vict. c. 86 (Partnership Law Amendment Act, 1865), 30, 31, 124, 209, 368. 33 & 34 Vict. 0. 35 (Apportionment Act, 1870), 92, n., 269, n., 271, n., 281, n., 294, n. c. 97 (Stamp Act, 1870), 63, n., 09, n., 158, n., 173, n., 222, 331. 44 & 45 Vict. c. 41 (Conveyancing, &c. Act, 1881), 63, n., 92, n., 114, n., 117, 119, n., 129—132, 137, n., 141, n., 145, n., 253, 291, 309—382. 45 & 46 Vict. c. 39 (Conveyancing Act, 1882), 383. c. 75 (Married Women's Property Act, 1882), 11, n. 46 & 47 Vict. c. 52 (Bankruptcy Act, 1883), 105, n., 108, n. c. 57 (Patents, Designs and Trade Marks Act, 1883), 2,9 e^seg'., 307—330. 48 & 49 Vict. c. 63 (Patents, Designs and Trade Marks (Amendment) Act, 1885), 2, 9, 332. 49 & 50 Vict. c. 37 (Patents Act, 1886), 2, 9, 333. repealed by new Act, 328. list of, 330, 331. STATUTORY DECLAEATIONS, applications not at present made with, 12, n., 358, 359. verification of accounts by, [52, 247, 280]. STATUTORY DECLARATIONS ACT, 1835 (5 & 6 Will. IV. c. 62), 13, 337, 382. SUB-LICENCES, 187, 213—216. covenants in licences as to, not to grant, without consent, 213. forms of, [237]. not usual in " selling licences," 213, n. to grant, on certain terms, 214 — 216. forms of, [237]. to pay royalties in respect of, 216. forms of, [234, 264, 274, 284]. express powers to grant, 214 — 216. forms of, [237]. form of notice to hcensor giving contents of, [299]. power to grant, implied when, 187. not usual in non-exclusive licences, 115, n. precedent of, [288]. SUB-LICENSEES, delivery of articles to, to be deemed sales, 216. provision as to, [234]. included generally in licence in term " assigns," 185, n. SUBSTITUTED COVENANT, to release covenantor, [178]. SUB-TERM, grant of, by patentee, is a licence, 196, n. SUPPLEMENTAL OR ANNEXED DEEDS, 380. SWEDEN, is member of International Union, 36, 365. SWITZERLAND, is member of International Union, 36, 365. INDEX. 441 SYNDICATE, agreement forming-, to purchape contract to sell patent, [90]. is a partnership or company, Ly Companies Act, 18G2. .96, u. TERM, certain, monej's to remain on mortgage for, CI, 1C8, 174. of partnersliip for working patent, [99]. of patent, 17, 311, 312. articles unsold at end of, how disposed of, [7-3]. to bear reduced royalties, [147, lo7, 229]. observations on, 203. extension of, 19, 314. caveat against, 314. TERMS, of other licences not to be more favourable, [238]. observations on, 207, 208. of power to grant sub-licences, 214, 215. provisions as to, [237]. TESTATOR, covenant as to acts and omissions of, 197, n. THANKSGIVING DAYS, excluded from days for leaving documents and paying fees, 323. THREATS, of legal proceedings, remedy where gi'oundless, 317. TIME, for acceptance of complete specificatiou, 14, 309. extension of, 14, 332. for completion of purchase, [80]. for leaving complete specification, 14, 309. extension of, 332. for leaving document excludes Sunda)'s, holidays, &c., 323. TITLE, covenants for, in assignments of i^atents, 114, 11-5. in licences, 196 ct scq. re'ference to text-book -wi-iters as to, 197, n. usually unimportant, 197. to invention, no recital in licences usually as to, 192. no waiTantj"- of, implied in contract to as.sigu patent, 112. nor in exclusive licences, 188. specification should commence ■with, 308. under Conveyancing Act, 370 — 373. TITLE DEEDS, acknowledgment, kc. as to, 373, 374. fonn of, as to patent or licence, [141, 291]. TRADE, restraint of, covenant to manufacture only according to specification is not in, 212. rival, covenant not to engage in, [53, 241]. TRANSIT or GOODS, liability for deterioration in, 261, n. TRANSMISSION, clause, "assigns" imported, [56]. of copies of documents to Ediubui-gh, Dublin, and Isle of Man, 324. TRIAL OF INVENTION, 27. provisions as to, [51, 59, 64]. Note. — References to the Precedents and Forms are jninted tlnis [(i4]. M. G G 442 INDEX. TRUST, declaration of, as to patent until mortgage executed, [62, G8]. in view of Trustee Acts, 63, n., 69, n. for sale of patent by trustees for co-owners, [1-19]. obsei'vations on, 125, 126. moneys, divisible according to shares in patent, [150]. TRUSTEE, covenants for title (implied), by, 371. liability of, until contract adopted by company, 80, n. provision as to discharge of, [80]. TRUSTEE ACTS, 1850, 1852 (13 & 14 Vict. c. 60, and 15 & 16 Vict. c. 55), declaration of trust of patent in view of, 63, n., 69, n. form of, [62, 68]. TRUSTEES, assignment of patent to, for owners, 124 — 126. form of deed, [148]. in bankruptcy, of assignors of patents are not estopjjed from disputing the patents, 112, n. of a syndicate for purchase of patent, [97]. power of, to give receipts, 150, n. remuneration of, in trust deed of a patent, [152]. royalties and rent paid to, during proceedings, 206. provision as to, [233]. to grant exclusive licences to beneficial owners of patent, [149]. TRUSTS, not entered in register, 9, 23, 321. TUNIS, is member of International Union, 36, 365. UNDERTAKING, as to custody of deeds, 373 — 375. forms of, [92, 253, 291]. UNPATENTED INVENTION, exhibition of, at international or industrial exhibition, fonn of notice of intention of, [351]. UNPROFITABLE WORKING, of invention, exclusive licence to become non-exclusive if, [242]. power of revocation if, 218. form of, [239]. UTILITY OF INVENTION, 4, 6, 15. covenant not to object to, [238]. not touched by qualified covenant as to validity of patent, 39, 114. otherwise as to unqualified covenant, 114. want of, formerly ground of opposition to grant of patent, but not so now, 15. VALIDITY, of licence, covenants as to, [161, 175, 289]. of patent, certificate of question having been raised in jn-ior action as to, 316. covenants as to, 39, 112, 114, 128, 196, 197, 216. fonns of, [137, 169, 247]. not to dispute, 216. form of, [238]. reference to text book writers as to, 197, n. dii-pute by ex-partner of, 100, n. estoppel of, equitable assigns from disputing, 190, n. licensee from disputing, 187 e^ scq. partner of assignor from disputing, 112, n. INDEX. 443 VENDEE, of patent article, rights of, 84, n., 117, n., 194, n. VENDOR, not to engage in rival business, [o3]. of equity of redemption is entitled to indemnity, 121, n. of estate subject to liabilities, entitled to indemnity, 121, n. of patent, employed by purchaser to manufacture, [74]. promoter also of company, 97, n. VERIFICATION, of accounts, o'l, 247. observations on, 210. VESSELS, foreign, in British waters, use of invention iu, 319. VICE-CONSULS, affidavits abroad sworn before, 337. VOTES, of members of syndicate, [97]. WAR, instruments or munitions of, inventions as to, may be held by Secretary for War, 22, 319. WARRANTY OF TITLE, to invention, not implied in contract to assign patent, 112. nor in an exclusive licence, 188. WIFE, assignments between her and husband, 380. WORKING OF PATENT, by co-owners separately, 118 et seq. agreements and assignments as to, [64, 70, 82, 142, 144, 148, lo4]. by ex-partners, 100, n., 266, n. compulsory licences by Board of Trade where insufficient, 313. forms as to application for or opposition to grant of, [348, 349]. to commence at certain date, [284]. unprofitable, exclusive licence to become non-exclusive where, 242. power of revocation where, 218. fomi of, [239]. WORKMEN, instruction of, in invention, [-53]. Note. — References to the Precedents and Forms are printed thus [64]. LOXDOX : PErXTEI) BY C. F. KOWOETH, GEEAT NEW STREET, FETTEE LANE. TELEGRAPHIC ADDRESS— Anril IQflQ TELEPHONE— "RHODRONS, LONDON." >l[illllOUO. No. 1386 (HOLBORN) CATALOGUE OF LAW WORKS PXTBLISHED BY STRYMS AND SONS, Ltd. 119 & 720, Chancery Lane, London. 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Sixth Edition. By L. D. Powles, Er^q., Barri.ster-at-Law. Demy 8vo. 1897. !'• *^*' "The practitioner's standard work on divorce practice."— iaw Quar, Rev. Kelly's French Law.— Vide "Marriage." DOGS.— Lupton's Law relating to Dogs,— By Fehdkbick Luptow, Solicitor. Royal Timo. 1888. 5». DOMESDAY BOOK AND BEYON D.— Three Essays in the Early History of England, By Pro lessor Maitland. 1897. 8vo. \os. EASEMENTS.— Campbell's Ruling Cases. Vol. X. Xet, 2.5«. Goddard's Treatise on the Law of Easements.— By Johw Let- BOUEN GoDDAED, Esq., Barristcr-at-Law. Fifth Edition. Demy 8vo. 189G. ^'- ^*- "No-w}iere has the subject been treated so exhaustively, and, we may add, BO scientilically, as by Mr. Goddard. We recommend it to the most careful study of the law student, as well as to the library of the practitioner."— iaw Times. innes' Digest of the Law of Easements, Sixth Edition. By L. C. Innes, lately one of the Judges of Her Majesty's High Court of Judicature, Madras. Royal r2mo. 1900. 7«. 6i. " Constructed with considerable care and pains."— Z.a«c Journal. " We have only the pleasinfr duty remaining of recommending^ the book to those in search of a conci.se treatise on the law of Ea.sements."— inif Xotes. ECCLESIASTICAL LAW.— Phillimore's Ecclesiastical Law of the Church of England. By the late Sir Robeet Phillimoee, Bart., D.C.L. Second Edition, by his son Sir Waltee Geoeoe Frank PniLLmoEE, Bart., D.C.L., assisted by C. F. Jeioiett, B.C.L., LL.M., Barrister-at-Law. 2 vols. Royal 8vo. 1895. 3/. 3». " The task of re-editing Phillimore's ' Ecclesiastical Law ' was not an easy one. Sir Walter Phillimore has executed it -svilh brilliant success. He has brought to the work all liis father's subdued enthusiasm for the Church, he h;is omitted nothing that lent value to the origin.al treatise, lie has expunged from it wliat could be spared, and has added to it everj thing that the ecclesiastical lawyer can possibly need to know."— />au) Journal. Whitehead's Church Law.— Being a Concise Dictionary of Statutes, Canons, Regulations, and Decided Cases affecting the Clergy and Laity. Second Edition. By Benjamin Whitehead, Esq., Barrister- at-Law. Demy Svo. 1899. 10«- 6rf. " A perfect mine of learning on all topics ecclesiastic;U."— iJaiVy Telegraph. " Mr Whitehead has amassed a great deal of information which it would be ven- ditficult to ftnd in any otlier book, and he has presented it m a clear and concise form. It is a book which will be useful to la-\\Ters and laymen. —Law Timts. ELECTIONS.— Day's Election Cases in 1892 and 1893,— Being a Collection of the Points of Law and Practice, together with Reports of the Judgments. By S. H. Day, Esq., Barri.ster-at-Law, Editor of " Rogers on Elections." Royal r2mo. 1804. 7s. 6d. Hedderwick's Parliamentary Election Manual : A Practical Handbook on the Law and Conduct of Parliamentary Elections in Great Britain and Iiujland, designed fur the Instruction and Guidance of Candidates, Agents, Canvassers, Volunteer Assistants, &c. Second Edition. By T. C. H. Heddebwick, Esq., Barnster-at- Law. Demy Time. 1900. 10»- 6rf. " The work is pre-eminently practical, concise and clear."- .Solicitors' Journal. " One of thebest books of the kind that we arc acquainted with.' —Law Journal. Hunt's Metropolitan Borough Councils Elections: A Guide to the Election of the Mayor, Aldermen, and Councillors of Metropolitan Boroughs. By John' Hunt, Esq., Barrister-at-Law, Demy Svo. 1900. 2'- ^''• •** All standdrd Law Works are kept in Stock, in late calf md other bindv^gs. * b2 12 STEVENS AND SONS, LIMITED, ELECT I O N S — continued. Rogers' Law and Practice of Elections. — Vol. I. Eeqisteation, including the Practice in Registration Appeals; Parliamentary, Municipal, and Local Government; with Appendices of Statutes, Orders in Council, and Forms. Sixteenth Edition ; with Addenda of Statutes to 1900. By Maubich Poweix, Esq., Barrister-at-Law. Royal 12mo. 1897. H. 1». "ITiepractitioner will find within these covers everything which he can be expected to know, well arranged and carefully stated." — Law Times. _ Vol. II. Paeliamentaet Elections and Petitions ; with Appen- dices of Statutes, Rules and Forms. Seventeenth Edition. Revised by S. H. Day, Esq., Barrister-at-Law. Royal 12mo. 1900. \l.\s. " The acknowledged authority on election law."— iai/j ./oMraai. "The leading book on the difficult subjects of elections and election peti- tions." — Law Times. " We have nothing but praise for this work as a trustworthy guide for candi- dates and agents." — Solicitors^ Journal. _ Vol. III. Municipal and other Elections and Petitions, with Appendices of Statutes, Rules, and Forms. Seventeenth Edit. By SamttelH.Dat, Esq., Barrister-at-Law. Royal 12mo. 1894. H. Is. EMPLOYERS' LIABI LITY.— Mozley-Stark.— ni^ n^« CHANCERY. Seton's Forms of Judgments and Orders in the High Court of Justice and in the Court of Appeal, having especial reference to the Chancery Division, with Practical Notes. Sixth Edition, with references to the Seventh Edition of Daniell's Chancery Practice, and the Fifth Editititied by its aim at l>eing ' in as .short a form as po.ssible, a summarj- of the law of legiil representatives as modilied by the Land Tmnsfer Act, mJl.'"—rM Mall Gazttte. •,* All standard law Works are kept in Stock, in law calf and other bindings. 14 STEVENS AND SONS, LIMITED, FACTORIES AND WORKSHOPS.— Ruegg and Mossop's Law of Factories and Workshops, By A. H. Rtxego, Esq., K.C., and L. Mossop, Esq., Barrister-at-Law. Demy 8vo. 1902. 12s. 6d. " We -welcoine this book, for it is, in our opinion, one of the best treatises on the law of factories which have lately appeared."— /:««• Journal, March 29, 1902. " Prepared with an evident intention of saj-ing all there is to be said on the legal aspect of the subjfct. . . . Destined to take its place as the book on the Acts."—Saturdai/ Review, May 3, 1902. FARM, LAW OF.— Dixon's Law of the Farm: includiiig the Cases and Statutes relating to the subject ; and the Agricultural Customs of England and Wales. Fifth Edition. By Aubrey J. Spenceb, Esq., Bairister-at-Law. Demy 8vo. 1892. 1^. 6s. " A complete modem compendium on agricultural matters."— iaw Times. FIXTU RES.— Amos and Ferard en the Law of Fixtures and other Property partaking both of a Real and Personal Nature. Third Edition. By C. A. Feeaed and W. Howland Robeets, Esqrs., Bar- risters-at-Law. Demy 8vo. 1883. 18«. FORMS.— Chitty's Forms of Civil Proceedings in the King's Bench Division of the High Court of Justice, and on Appeal therefrom to the Court of Appeal and the House of Lords.— Thirteenth Edition. By T. W. Chitty, Esq., a Master of the Supreme Court, Heebeet Chitty. Esq.. Barrister-at-Law, and P. E. Vizaed, Esq., of the Central Office. Royal 8vo. 1902. U. 16s. " The book is accurate, reliable and exhaustive."— SoZiCiiora' Journal. "Ihe foi-ms are practically exhaustive, and the notes very good, so that this edi'.ion wiU be invaluab'e to practitionf rs who^e work is of a litigious kind "— Lnii' Jonrrinl. Daniell's Forms and Precedents of Proceedings in the Chan- cery Division of the High Court of Justice and on Appeal therefrom. — Fifth Edition, with summaries of the Rules of the Supreme Court ; Practical Notes ; and references to the Seventh Edition of Daniell's Chancery Practice. By Chaeles Bueney, B.A., a Master of the Supreme Court. Royal 8vo. 1901. 21. 10s. " The standard work on Chancery Pi'ocedure."- Xaiy Quarterly Review. Seion,— Vide " Equity." FRENCH LAW. — Cachard's French Civil Code. — By Heney Cachaed, B.A., and Counsellor -at -Law of the New York Bar, Liccncie en Droit de la Faculte de Paris. Demy 8vo. 189-5. 1^. Goirand's Treatise upon French Commercial Law and the Practice of all the Courts. — With a Dictionary of French Judicial Terms. Second Edition. By Leopold Goieand, Licencie en di-oit. Demy 8vo. 1898. 1^. Goirand's Treatise upon the French Law relating to English Companies carrying on Business in France.— By Leopold Goieand, French Si)licitor. Crown 8vo. 1902. Net, 2s. Qd. Sewell's Outline of French Law as affecting British Subjects.— By J. T. B. Sewell, LL.D., Solicitor. Demy 8vo. 1897. 10s. Qd. GAMBIA.— Ordinances of the Colony of the Gambia. With Index. 2 Vols. Folio. 1900. Net, 2,1. GAME LAWS. — Warry's Game Laws of England. With an Appendix of the Statutes relating to Game. By G. Tayloe Waeey, Esq., Barrister-at-Law. Royal 12mo. 1896. 10s. Qd. GOODV/ILL.— Allan's Law relating to Goodwill.— By Chaeles E. Allan,M.A. ,LL.B., Esq., Barrister-at-Law. DemySvo. 1889, Is.Qd. Sebastian. — Vide "Trade Marks." HIGHWAYS— Chambers' Law relating to Highways and Bridges. By Geoege F. Chambees, Esq., Barrister-at-Law. 1878. 7s. &d. HOUSE TAX.— Ellis' Guide to the House Tax Acts, for the use of the Payer of Inhabited House Duty in England. — By Aethue M. Ellis, LL.B. (Lond.), SoUcitor, Author of "A Guide to the Income Tax Acts." Royal 12mo. 1885. 6s. " Accurate, complete and very clearly expressed." — Solicitors' Journal, %* All standard Law Works are kept in Stock, in latv calf and other bindings. 119 & 120, CHANCERY LANE, LONDON, W.C. 1.5 HUSBAND AND WIFE.— Lush's Law of Husband and Wife, within the jurisdiction of the Queen's Bench and Chancery Divisions. By C. MoxTAOuii Lusn, Esq., Banistor-at-Law. Hccond Edition. By the Autlior aud W. If. GfiiFFirii, E.'-q., BarrLitor-at- Law. Domy 8vo. 189G. 1/. 5». "To the practising luwyer tlie work will be of the utmost importance." — T.aw Tim't. " This book will t-ei-tiiiiily be consiiUfd wh. Redman's Law of Landlord and Tenant. — Including the Practice of Ejectment. Fifth Edition. By Joseph H. Redman, E.sq., Barrister-at-L;iw. Demy 8vo. 1901. 1/. as. " We can ccjiitidontly recommend the prcj^ont edition." — Law Journal. Woodfall's Law of Landlord and Tenant. — With a full Collection of Precedents and Forms of Procedure ; containing also a collection of Leading Propositions. Seventeenth Edition. By J. M. Lelt, E.sq., Barrister-at-Law. Roy. Svo. 1902. 1/. 18s. " AVoodfall is really indispensable to the practising lawyer, of whatever dcprec lie niav \ii\" — f,inr Journnl, Xov. 15, 19C2. LANDS CLAUSES ACTS.— Jepson's Lands Clauses Acts; with Decisions, Fonus, and Tabks of Costs. Second Edition. By J. M. LioiiTV/ooD, Esq., Barrister-at-Law. Demy 8vo. 1900. 1/. l.«. " This work, in its new and practically re-written form, may be described aa a handy and well-arranged treatise on the Lands Clauses Acts." — Holtcilors' Jn„rn,d. LAW JOURNAL REPORTS.— Edited by John Mews, Esq., Barrister- at-Law. Published monthly. Annual Subscription : — Reports and Public General Statutes Ket, 3/. 4«. Reps. Stats. & Mews' Annual Dige.st (Insued Quarterly) Net,Zl. 10«. linn paper Edition, forming one handy Vol. for the year Xct, 3/. As. Or, •without the Statutes jNV/, 3/. The Law Journal weekly, 1/. extra. 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Compiled, so far as relates to Special Pleaders, Conveyancers, Solicitors, Proctors and Notaries, by Ernest Cleave, Controller of Stamps, and Registrar of Joint Stock Companies, and Published by the Authority of the Commissioners of Inland Revenue and of the Incorporated Law Society. 19J3. ..Vt^ 10». 6d. *,* All standard Law Works are kept in Stock, in law calf and other bindings. IS STEVENS AND SONS, LIMITED, LAW QUARTERLY REVIEW— Edited by Sir Feedeeick Pollock, Bai-t., D.C.L., LL.D. Vols. I.— XVIII. (with General Indices to Vols. I. to XV.) Royal 8vo. 18S5-1902. Each, Vis. |^° Annual Subscription post fi-ee 12«. &d.,net. Single numbers, each 5s. " A little criticism, a few quotations, and a batch of anecdotes, aiford a sauce that makes even a quarter's law reporting amusing reading." — Zair Journal. 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LAWYER'S OFFICE. — The Modern Lawyer's Office: being Suggestions for Improvements in the Organization of Law Offices and for the adoption of certain American Appliances and Business Methods. By A Solicit oe of the Supeeme Couet. Royal 12mo. 1902. 6s. " We strongly recoimnend every solicitor who attaches importance to the organization of bis office to make himself acquainted with the system explained so clearly in this little work." — Law Jmirnal. LEAD! NG CASES.— Ball's Leading Cases. Vide " Torts." Shirley's Selection of Leading Cases in the Common Law. With Notes. By W. S. Shieley, Esq., Barrister -at -Law. Sixth Edition. By RiCHAED "Watson, Esq., Ban-ister-at-Law. DemySvo. 1900.16.?. "A sound knowledge of common law can be gleaned from Shirley." — Law Notes. " The selection is veiy large, though all are distinctly ' Leading Cases,' and the notes are by no means the least meritorious part of the work."— iaiy Journal. " Calculated to be of great service to students." — Laxv Students' Journal. " Will so long as Mr. Watson remains the Editor retain its hold on the student world." — Law Notes. Warburton's Selection of Leading Cases in the Criminal Law, With Notes. By Heney Waebtjeton, Esq., Barrister-at-Law. [Founded on " Shirley's Leading Cases."] Second Edition. Demy Svo. 1897. ^'^et, 10s. 6d. " The cases have been well selected, and arranged, . . . We consider that it will amply repay the student or the practitioner to read both the cases and the notes." — Justice of the Peace. LEGAL INTERPRETATION.— Beal's Cardinal Rules of Legal Interpretation. — Collected and Arranged by Edwaed Beal, Esq., Barrister-at-Law. Royal 8vo. 1896. 12s. &d. " Invaluable to the student. To those with a limited library, or a busy practice, it will be indispensable." — Justice of the Peace. LEGISLATIVE METHODS.— Ilbert's Legislative Methods and Forms. — By Sir Couetenay Ilbeet, K.C.S.I., C.I.E., Parliamentary Counsel to the Treasury. DemySvo. 1901. I6s, LEXICON.— Vide ' « Dictionary. ' ' LIBEL AND SLANDER.— Odgers on Libel and Slander.— A Digest of the Law of Libel and Slander : with the Evidence, Pro- cedure, Practice, and Precedents of Pleadings, both in Civil and Criminal Cases. Third Edition. By W. Blake Odgees, LL.D., one of His Majesty's Counsel. Royal 8 vo. 1896. 1/. 12s. " The best modem book on the law of libel." — Dail;/ News. " The most scientific of all our law books In its new dress this volume is secure of an appreciative profes^^io^al welcome." — Law Times. " The general opinion of the profession has always accorded a high place to Mr. Blake Odgers' learned work." — Law Journal. *f* All standard Law Works are kept in Stock, in law calf and other bindings. 119 & 120, CHANCERY LANE, LONDON, W.C. 19 LICENSING.— Lathom's Handy Guide to the Licensing Acts. By H. \V. Lathom, Solicitor. Royal Vlino. 1894. 5». " The mass of confusing statute and case law on thia wide subject haa been most ably codiUed."— /..««' Times. Talbot's Law and Practice of Licensing.— Being a Digest of the Law regulating the Sale by Retail of Intoxiiating Liquor. With a full Appendix of Statutes and Forms. With Addendum wntaiiung the decision of the House of Lords in Boulter v. Jwitkes of Kent. By Geoeoe John TiO-BOT, Esq., Barrister-at- Law. 12mo. 1896. 7«. 6rf. " His method gives professional men a gruide to the legislation afforded by no other book." — Law Journal. LOCAL AND MUNICIPAL GOVERNMENT.— Bazalgette and Humphreys' Law relating to County Councils.— Thud Edition. By Georgk HuMi'iiREYS, Esq. Royal 8vo. 1889. 7«. Gi. Bazalgette and Humphreys' Law relating to Local and Muni- cipal Government. Compri.sing the Statutes relating to PubUo Health, Municipal Corporations, Highways, Burial, Gas and Water, Public Loans, Compulsory Taking of Lands, Tramways, Electric Lightinsr, &c. With Addenda. By C. Norman Bazalgette and G.HuMPHEEYS.Esqrs., Barristors-at-Law. Sup. royalSvo. 1888. 3/. 3». Chambers.— Vide " District Councils." Humphreys. — Vide " Parish Law." LONDON LOCAL GOVERNMENT. — Hunt's London Local Government. The Law relating to the London County Council, the Vestries and District Boards elected under the Metropolis Management Acts, and other Local Authorities. By John Hunt, Esq., Barrister-at-Law. 2 vols. Royal 8vo. 1897. 3?. 3s, " This very comprehensive and well-arranged code of London Local Govern- ment will be invaluable to local authorities, the legal profession and others directly interested in the subject."— Lo;idon. " Concise, accurate and useful."— /^ou) Journal. „-,„,. " We heartily recommend Mr. Hunt's work."— County Council Times. LUNACY.— Heywood and Massey's Lunacy Practice.— By AETnuE Heywood and Arnold Massey, Solicitors. Deniy8vo. 1900. "J.s.Qd. " A very useful little handbook, which cont^iins a clear accovmt of the practice in lunacy."— /.'<»• Joun.al. ,. , , ^- „ t- ^- , " An exceedingly useful handbook on lunacy practice. —Law SoUs. "A clear and able handbook. . . . A feature of the work are the precedents given, which have nearly all stood the test of actual practice."- Law Times. MAGISTRATES' PRACTICE and MAGISTERIAL LAW.— Hie "Justice of the Peace." MARINE INSURANCE.— nic. _ NOTARY.— Brooke's Treatise on the Office and Practice ot a Notary of England.— "\Vit}i a full collection of Precedent.s. Si-xth EiHtiou. By James Ckanstoun, Esq., Barrister-at-Law. Demy Sv(j. 1901. ^'•,°*- "The book is an eminently practical one, and contains a very complete cll.ction (if notarial precedents. The editor is to be con'.,Tatulated upon the cxeriition of a very tlioioii^rh piei'P of work."— A.iK' Joxr/i-i/. „ .. . . OATHS.— Stringer's Oaths and AffirmatiDns in Great Britain and Ireland; beiuf,' a Collection of Statutes, Cases, and Forms, vrith Notes and Practical Directions for the use of Commissioners for Oaths, and of all Courts of Civil Procedure and Oifices attached thereto. By Ekancis a. Steinoeb, of the Central Office, Royal Courts of Justice, one of the Editors of the "Annual Practice." Second Edition. Crown 8vo. 1893. 4«- •' Indi.spenaable to all commissioners."— ^o'lCTfor** Journal. ORANGE RIVER.— The Statute Law of the Orange River Colony. — Transkto.l. Royal Svo. I'.fOl. ^ 2''- -'• OTTOMAN CIVIL LAW.— Grigsby's Medjelle, or Ottoman Civil Law. — Transliitcd into Eiiirlish. By W. E. Geiosby, LL.D., Esq., Ban-istir-at-Law. Demy 8vo. 189.'). II. U. PARISH LAW.- Humphreys' Parish Councils.— The Law relating to Pari.sh Councils, being the Local Government Act, 1894 ; with an Appendix of Statutes, toorcther with an Introduction, Notes, and a Copious Index. Second Edition. By Geoeoe Humpheets, Esq., Barri.ster-at-Law, Author of "The Lawrelating to County Councils," &c. Royal 8vo. 189.5. 10»- Steer's Parish Law. Being a Digest of the Law relating to the Civil and Ecclesiastical Government of Parishes and the Relief of the Poor. Sixth Edition. By W. H. Macnamaea, Esq., Assistant Master of the Supreme Court, Registrar of the Court constituted under the Benefices Act, 1898. Demy 8vo. 1899. H. " Of irreat service both to lawyers and to parochial officers."— 5»?icitor»' Jour. " A most useful book of reference on all matters connected with the paruh, both civil and eccle.-iiastical."- Low Journal. PARTNERSHIP.— Pollock's Digest of the Law of Partnership. Seventh Edition. With an Appendix of Forms. By Sir Feedeeick Pollock, Bart., Barri,ster-at-Law, Author of "Principles of Con- tract," "The Law of Torts," &c. Demy 8vo. 1900. 10*. " Of the execution of the work we can speak in terms of the highest praise. Tlie lanuniapre is simple, concise, and clear."— /.'If .l/- work." — Lato Quarterly lifview. "A moniunent of well-directed industiy and knowledge directed to the elucidation of the most comprehensive and complicated Act." — Law Journal. SLAN DER.— Odgers,— rtrf« " Libel and Slander." SOLICITORS.— Cordery's Law relating to Solicitors of the Supreme Court of Judicature. With an Appendix of Statutes and Rules, the Colonial Attornies Relief Acts, and Notes on Appoint- ments open to Solicitors, and the Right to Admission to the Colonies, to which is added an Appendix of Precedents. Third Edition. By A. CoEDEEY, Esq., Barrister-at-Law. Demy Svo. 1899. 1/. 1». " The leading authority on the law relating to .solicitors." — Law Journal. "A complete compendium of the law." — Law Thins. "Thoroughly up to date m eveiy respect." — Latv Quarlerli/ Review. Turner. — Vide "Conveyancing" and " Veudora and Purchasers." SPECIFIC PERFORMANCE.— Fry's Treatise on the Specific Performance of Contracts. By the Right Hon. Sir Edward Fey. Fourth Edition. By W. D. Rawlins, Esq., K.C. Royal Svo. 1903. 1/. 16«. " The leading authority on its subject." — Law Journal. %* All standard Law Works are kept in Stock, in late calf and other bindings. 28 STEVENS AND SONS, LIMITED, STAMP LAWS. — Highmore's Stamp Laws. — Being the Stamp Acts of 1891 : with the Acts amending and extending the same, in- cluding the Finance Act, 1902, together with other Acts imposing or relating to Stamp Duties, and Notes of Decided Cases ; also an Introduction, and an Appendix containing Tables showing the com- parison with the antecedent Law. Second Edition. By Nathaniel Joseph Highmobe, Assistant- Solicitor of the Inland Revenue. Demy 8vo. 1902. 10s. 6d. " The reeog-nized work on the suhject." — Lcnv Quarterly Beview, Jan., 1903. " Mr. Hig-hmore has incovporated in the new edition of this work the legislation of the last three years, so far as it atfoi ts the Stamp Laws, including the Finance Act, 1902. He has revised the text, added the new authorities, and increased the notes upon departmental practice, a suhject which he is peculiarly qualified to discuss. This edition, like the former one, will be found of the greatest use by Eolicitors, officers of companies, and men of business." — Lmv Journal, Deo. 6, 1902. "A very comprehensive volume, fultilling' eveiy requirement. . . . The various notes to the sections of the several Acts incorr orated in the volume are fully and accurately set out, the points of the decided cases clearly expressed, and the effect and object of the enactment indicated ; and what must he of especial value to the practitioner, the practice at Somerset House with regard to all matters coming before that institution is stated." — Justice nf the Peace. "Mr. Highmore's ' Stamp Laws' leaves nothing undone." — The Civilian. STATUTES, and vide " Acts of Parliament." Chitty's Statutes. — The Statutes of Practical Utility, from the earliest times to 1894, with Supplemental Volume to 1901 inclusive. Arranged in Alphabetical and Chronological Order ; with Notes and Indexes. Fifth Edition. By J. M. Lely, Esq., Barrister-at-Law. Royal Svo. Complete with hidsx. In 14 Tohnnes. 1894-1902. \bl. \bs. The Supplementary Volume, 1895 to 1901. Consolidated with Index. By J. M. Lely, Esq. May be had separately. 11. 2s. "To those who already possess 'Chitty's Statutes' this new volume is indispensable."— Z-nw Notes, June, 1902. The Annual Supplements. Separately: — 1895, .5s. 1896,10s. 1897, 5.S-. 1898, 7s. 6f/. 1899, 7s. 6f?. 1900, 7s. 6f?. 1901, 7s. 6«^. 1902, 7s. 6d. "It is a hook which no public library should be without." — Spectator. "A work of permanent value to the practising lawyer." — Solicitors^ Journal. "The profession will feel grateful both to the editor and the publishers of a work which will be found of the highest value." — Law Journal. " A legal work of the very highest importance. . . . Few besides lawyers will, we suspect, realise the amount of work which such an undertaking involves to the editor, who appears to have spared no pains to give a clear, orderly, and methodical character to the com- pilation." — Daihi Xcics. "This collection has fulfilled a purpose of usefulness only to be understood by those who are acquainted with the amazing com- plexity of English statute law. with its bewildering incoherence and painful heterogeneity." — Fall Hall Gazette. " Indispensable in the library of every lawyer." — Saturday Review. "To all concerned with the laws of England, Chitty's Statutes of Practical Utility are of essential importance, whilst to the practising lawyer they are an absolute necessity." — Late Times. "It is apparently the belief of some popular novelists that lawyers in their difficulties still uniformly consult daily Coke upon Littleton and Blackstone. Those who know better are aware that the lawyer's Bible is the ' Statutes of Practical Utility ' — that they are his working tools, even more than accredited text-books or 'authorised reports.' More than one judge has been heard to say that with the ' Statutes of Practical Utility ' at his elbow on the bench he was apprehensive of no difficulties which might arise." — The Times. *^* All standard Law Works are kept in Stock, in law calf and other bindings. 119 & 120, CHANCERY LANE, LONDON, W.C. 29 STATUTE LAW,— Wilberforce on Statute Law. The Principlea which govern the Construction and Operation of Statutes. By E. WiiBEEFOECE, Esq., a Master of the Supreme Court. 1881. 18». SUCCESSION.— Holdsworth and Vickers' Law of Succession, Testannentary and Intestate. Demy Svo. 1899. 10*. G(/. SUMMARY CONVICTIONS,— Paley's Law and Practice of Sum- mary Convictions under the Summary Jurisdiction Acts, 1848 — 1884; including Proceedings Preliminary and Subse- quent to Convictions, and the Responsibility of Convicting Magistrates and their Officers, with the Summary Jurisdic- tion Rules, 1886, and Forms,— Seventh Edition. By W. H. Macnamara, Esq., Barrister-at-Law. Demy Svo. 1892. 1/. 4«. TAXPAYERS' GU I DES,— ri(f« "House," "Income," & "Land Tax." THEATRES AND MUSIC HALLS,— Geary's Law of Theatres and Music Halls, including Contracts and Precedents of Contracts.— By W. N. M. Geahy, J. P. With Historical Introduc- tion. By James Williams, Esqrs., Barristers-at-Law. Svo. 1885. OS. TITLE.— Jackson and Gosset.— rif/e " Investigation of Title." TORTS. — Addison on Torts. — A Treatise on the Law of Torts; or Wrongs and their Remedies. Seventh Edition. By Hokack Smith, Esq., Bencher of the Inner Temple, Metropolitan Magis- trate, and A. P. Peeceval Keep, Esq., Barrister-at-Law. Royal Svo. 1893. U. 18.V. " A.s an exhaustive diq'est of all the cases which are likely to be cited in practice it sUinds without a rival." — Law Journal. "As now presented, this valuable treatise must prove highly acceptable to judges and the profession." — Law Times. " An indispensable addition to every lawyer's library." — Lata ifagcuine. Bali's Leading Cases on the Law of Torts, with Nol;es. Edited by W. E. Ball, LL.D., Esq., Barrister-at-Law, Author of "Prin- ciples of Torts and Contracts." Royal Svo. 1884. 11. Is. Bigelow's Elements of the Law of Torts,— A Text-Book for Students. By Melville M. Biqeldw, Ph.D., Lecturer in the Law Schoolof the University of Boston, U.S.A. Crown Svo. 1SS9. lOs.Gd. Innes' Principles of the Law of Torts. — By L. C. I>.'nes, lately one of the Judges of the High Court, Madras, Author of ' ' A Digest of the Law of Easements." Demy Svo. 1891. 10*. Grf. •' A useful addition to any law library." — Law Quarterly Review. Pollock's Law of Torts: a Treatise on the Principles of Obligations arising from Civil Wrongs in the Common Law. Sixth Edition. By Sir Feedeeick Pollock, Bart., Barrister-at-Law. Author of " Pruiciples of Contract," " A Digest of the Law of Partnership," &c. Demy Svo. 1901. II. os. " Concise, logically arranged, and accurate."— intc Times. " Incomparably tlie best work that has been written on the subject." — LiU'rature. " A book which is well worthy to stand beside the companion volume on 'Contracts.' Unlike so many law-books, especially on this subject, it is no mere digest of cases, but bears the impress of the mind of the writer from beginning to end." — Law Journal. " The work is one ' professing to select rather than to colloct authoritios," but the leadini? cases on eatli bniuch of the subject will be found ably dealt with. A work bearint; Mr. I'oUook's name requires no recommendation. If it did. we could lieartily iccomim'nd tliis able, ttiou^htful, and valuable book .... as a very successful and instruitivo attom])t to seek out and expound the principles of duty and liability unik'rl> iii.r a Inanoh of the law in which the Scottish and Knglish systems do not muteiially differ." — Journal of Jurisprudence. *,* All standard Law Works are kept in Stock, in law calf and other binding $. 30 STEVENS AND SONS, LIMITED, TRADE MARKS. — Sebastian on the Law of Trade Marks and their Registration, and matters connected therewith, including a chapter on Goodwill ; the Patents, Designs and Trade Marks Acts, 1883-8, and the Trade Marks Rules and Instructions thereunder; with Forms and Precedents; the Merchandize Marks Acts, 1887-94, and other Statutory Enactments; the United States Statutes, 1870-82, and the Rules and Forms thereunder ; and the Treaty with the United States, 1877. By Lewis Boyd Sebastian, Esq., Barrister-at-Law. Fourth Edition. By the Author and Haeey Baied Hemiono, Esq., Barrister-at-Law. Royal 8vo. 1899. U. 10s. " Stands alone as an authority upon the law of trade-marks and their regis- tration." — Lmv Journal. " It is rarely we come across a lawbook which embodies the results of years of careful investisation and practical experience in a branch of law, or that can be unhesitatingly appealed to as a standard authorityi This is what can be said of Mr. Sebastian's book." — Solicitors' Journal. Sebastian's Digest of Cases of Trade Mark, Trade Name, Trade Secret, Goodwill, &c., decided in the Courts of the United Kingdom, India, the Colonies, and the United States of America. ByLEWis Boyd Sebastian, Esq., Barrister-at-Law. 8vo. 1879. II. Is. " Will be of very great value to all practitioners who have to advise on matters connected with trade marks." — Solicitors' Journal. TRAMWAYS,— Sutton's Tramway Acts of the United Kingdom; with Notes on the Law and Practice, an Introduction, including the Proceedings before the Committees, Decisions of the Referees with respect to Locus Standi, and a Siimmary of the Principles of Tramway Rating, and an Appendix containing the Standing Orders of Par- liament. Rules of the Board of Trade relating to Tramways, &c. By Heney Sutton, Esq., Barrister-at-Law. Third Edition, including the Light Railways Acts. By Geoege S. Robeetson, Esq., Bar- rister-at-Law. {In preparation.) TRANSVAAL.— The Statute Law of the Transvaal, Translated. Royal Svo. 1901. 2^. 2s. TRUSTS AND TRUSTEES.— Ellis' Trustee Acts, including a Guide for Trustees to Investments. By Aethtje Lee Ellis, Esq., Barrister-at-Law. Sixth Edition. By L. W. Byene, Esq.. Barrister- at-Law. Roy. 12mo. 1903. 6«. Godefroi's Law Relating to Trusts and Trustees, — SecondEdit. By Heney Godefeoi, of Lincoln's Inn, Esq., Barrister-at-Law. Royal 8vo. 1891. II. 12«. VENDORS AND PURCHASERS. — Dart's Vendors and Pur- chasers. — A Treatise on the Law and Practice relating to Vendors and Purchasers of Real Estate. By the late J. Heney Daet, Esq., one of the Six Conveyancing Counsel of the High Court of Justice, Chancery Division. Sixth Edition. By the late William Baebee, Q.C. , Richard Bxteidon Haldane, K.C, and William Robeet Sheldon, Esq., Barrister-at-Law. 2 vols. Royal Svo. 1888. 3^.15*. *^* A new Edition under the Editorship of Benjamin Lennaed Cheeey, Esq., Barrister-at-Law, is in preparation. Farrer's Precedents of Conditions of Sale of Real Estate, Re- versions, Policies, &c,"; with exhaustive Footnotes, Introductory Chapters, and Appendices. — By Feedeeick; Edwaed Faeeee, Esq., Barrister-at-Law. Royal Svo. 1902. 16s. " Mr. Farrer lias written a rare thing— a new book which will be of real value in a conveyancer's library. . . . We venture to predict that this book will be popular." — Law Jo'ima/, June 7, 1902. "The work, while sufficiently riementaiy to be of extreme use to students and young practitioners, will also be very serviceable to the more experienced. The notes are essentially practical and are evidently largely derived from experience, and the forms are adapted to recent decisions. 2Mr. Fai rer's book strikes a new vein, and deserves— and will no doubt secure— the support of the profession." — Law Times, May 24, 1902. %* All standard Law Works are kept in Stock, in law calf and other bindings. 119 & 120, CHANCERY LANE, LONDON, W.C. 31 VENDORS AND PURCHASERS— w)<.;i«e^.