Where Jicensor is a party.

Registration of assignments and mortgages.

to grant sub-licences, a proviso merely for quiet enjoyment by the mortgagor until the day fixed for redemption may perhaps be inserted (). A covenant for quiet enjoyment by the mortgagee after that date will be implied from the use of the words "as beneficial owner" (y).

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 possession 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 perform 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 (a). 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 Not compul- validity of the assignment as between the parties (6). Such a rule

sory except as

(a) In Davidson's Precedents, Vol. II. Part II. (Introductory Chapter), it is stated to be the modern practice to omit such a proviso, where the redemption 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.

(y) Sect. 7, sub-s. 1 (C), of Conveyancing Act, 1881 (Appendix, post, p. 370).

(z) As to covenants in a licence binding the assigns of the licensee, see Chapter on 'Licences," post, pp. 185 et seq., and also ante, 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.

(b) See sects. 23 and 87 of the Act of 1883, post, pp. 313, 322, and P. R. 1883, Rule 65 (post, p. 342). A mortgage is notified as an absolute assignment.

the new act allows for the existence of equitable rights interests notwithstanding the record on the register (d).

In Hassall v. Wright (e), Malins, V.-C. held that under the of 1852 an unregistered assignment was good as between assig and assignee. An assignee could not however have maintained action for infringement against a third party until his assign was registered (f). If such an action can now be maintai then, as the new act (g) provides that before such registration existing registered proprietor shall have power absolutely to with the patent, a defendant will be liable to be sued at one the same time by the assignor and assignee (). In Hassa Wright, it was decided that an assignor might also maintain action against licensees from the assignor who had taken t licences subsequent to and with notice of the unregistered ass ment. This decision is probably applicable also to cases under new act.

It has not been decided if the registration of an assignment relate back to the date of the assignment, so as to enable assignee to maintain an action to restrain infringements commi after the date of the assignment but before the registration. Hassall v. Wright, it seems to have been the Vice-Chancel opinion that such relation occurred, but it was not necessary him to decide the point. It is submitted that this opinion correct, and that such relation also occurs under the new act, that protection would be given to persons taking licences from assignor between the dates of the assignment and registra without notice of the assignment (i).

(c) In Lawson, p. 224 (note to P. R. 1883, Rule 65) the opinion is expr that the registration of assignments is compulsory in order to their vali not merely as against third persons, but also as between the parties th selves. Under the old law, registration was not compulsory. (Hasse Wright, see text above) as between the parties themselves.

(ƒ) Chollett v. Hoffmann, 7 Ell. & Black. 686; and see registration gene under the old practice, ante, pp. 8, 9. See Ellwood v. Christie, 10 Jur. 1 1079, as to registration of probate by executors after their assignment of patent.

(g) Sect. 87. (h) Chollett v. Hoffmann, supra. (i) As to registration under the old and present practices, and the recti tion of the register, see Introductory Chapter, ante, pp. 8, 9, 23—25.

ASSIGNMENTS AND MORTGAGES.

LIST OF PRECEDENTS.

I. ASSIGNMENT of a PATENT with benefit of IMPROVEMENTS, &C. (Ordinary Form).

...

II. ASSIGNMENT of a PATENT for a DISTRICT..

III. ASSIGNMENT of a MOIETY of a Patent-CONDITIONS OF
SEPARATE WORKING.

PAGE

136

139

142

IV. ASSIGNMENT of ONE-TWELFTH SHARE of a Patent-Special Provisions as to each Co-owner working the Patent separately 144

V. ASSIGNMENT of a Patent to TRUSTEES for Co-owners in
UNEQUAL SHARES-EXCLUSIVE LICENCE for a particular
District to be granted to each Co-owner at ROYALTIES-
POWER OF SALE and general Powers of LICENSING in the
Trustees-TRUST MONEYS divisible Half-yearly-REMUNERA-
TION to the Trustees

VI. ASSIGNMENT by a Patentee of a SHARE of a Patent- The
Assignor alone to work the Patent

...

VII. ASSIGNMENT and RELEASE 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 before the Grant [Agreement V. carried out]...

148

154

158

VIII. ASSIGNMENT of a Patent to the Inventor (a 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-the Licensor being a Party.... 163

MORTGAGES.

I. MORTGAGE of a PATENT, with Provisions for FUTURE AD-
VANCES, and REDUCTION of INTEREST-Moneys to remain for

a Term certain

II. MORTGAGE of a Patent by ONE CO-PATENTEE (the Inventor) to THE OTHER for past and present Advances in pursuance of AGREEMENT made pending Application for Patent―The Agreement having CHARGED the Patent rights with repayment, and the JOINT GRANT having been obtained as ADDITIONAL SECURITY-Interest at FIXED RATE, and also ACCORDING TO PROFITS-On Redemption the Entirety to be assigned to Inventor [AGREEMENT I. carried out].....

PAGE

167

172

III. MORTGAGE of a LICENCE-The Licensor not being a Party.. 175 IV. MORTGAGE of a LICENCE-The Licensor being a Party 177

....

PREC. I.

Recitals.

Claim to be

inventor. Grant.

title.

I.

ASSIGNMENT of a PATENT with benefit of IMPROVEMENTS, &C. (Ordinary Form) (a).

18

THIS INDENTURE made the day of 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 devolution (if any) 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 (d) of the said letters patent and also (subject as hereinafter provided) of all improvements or additions to the said invention or discoveries useful for the manufacture of now already (if at all) in the knowledge and possession of or which may hereafter be made by the assignor (e). NOW THIS INDENTURE 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 receipt whereof is hereby acknowledged) he

Testatum.

(a) As to the contents of an assignment, see ante, pp. 111–115. (b) Where the assignor is not the original grantee, omit this recital. As to the reason and effect of the recital, see ante, pp. 111 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. Distinguish between the grants of patents under the two procedures.

(d) 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 (post, 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, &c., being included in a purchase, and how provided for, see pp. 33-35, ante.