PREC. I.

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 all extensions thereof and also all rights powers emoluments and advantages whatsoever under or in respect of the said letters patent (g): TO HOLD use exercise and enjoy the said invention letters patent and premises unto and by the assignee and his assigns absolutely (h): AND THE ASSIGNOR Covenants. doth hereby covenant with the assignee and his assigns that not- Validity of withstanding anything by him the assignor done omitted or know- patent." ingly suffered the said letters patent are now valid and subsisting and not void or voidable (i): AND ALSO that he the assignor will Improvefrom time to time after making any improvement in or addition to ments. the said invention or any discovery useful in the manufacture of

(including any improvement addition or discovery aforesaid now (if so) in his knowledge and possession) forthwith give notice thereof in writing to the assignee or his assigns who shall be entitled to the sole 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 necessary 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 comprised therein] as by the assignee or his assigns shall be reasonably required (k): 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

(f) The term "beneficial owner" is to import the covenants for title, as to which see sect. 7 of the Conveyancing Act, 1881 (Appendix, post, p. 370). (g) See note (d) as to extensions. There are covenants (see later) as to both extensions and improvements, &c.

(h) The word "assigns" includes "executors and administrators," who are assigns at law (Williams on Executors, 792, 8th edition). The word, however, is not strictly necessary in the grant or habendum.

(1) There is no provision in the Conveyancing Act, 1881 (44 & 45 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. 115

117.

(j) As to instructing workmen and others in the employ of the assignee, see Form 16, ante, p. 52.

(k) To the above add (if thought fit) the last provision in Form 16, ante, p. 53, as to improvements, &c., made by the assignor in conjunction with any other person. See also Form 15, ante, p. 52, and Sp. Cl. 44 and 45, post, p.

PREC. I.

assigned or as far as practicable of any term which may be comprised in any letters patent which may become vested in him or them according to the covenant in this behalf hereinbefore contained as shall be reasonably required (7).

IN WITNESS, &c. (m).

(1) As to foreign and colonial patents being assigned, see Mortgage I., note (d), post, p. 167.

(m) The assignment should be executed as a deed (ante, p. 111), and should also be registered (ante, p. 132, and sects. 23 and 87 of the new act).

II.

ASSIGNMENT of a PATENT for a DISTRICT (a).

PREC. II.

Grant.

THIS INDENTURE made &c. 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 [recite as in last Recitals. precedent]: AND WHEREAS the assignor has agreed with the assignee Claim to be for the absolute sale to him at the price of £- - of the said inventor. letters patent and every extension thereof for the county of 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 title. for the manufacture of now already (if at all) in the Agreement to knowledge and possession of or which hereafter may be made by the assignor (b). NOW THIS INDENTURE WITNESSETH that Testatum. in consideration &c. (the receipt &c.) he the assignor as beneficial owner (c) 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 (d) and all rights powers emoluments and advantages whatsoever under or in respect of the said letters patent for the county of but not elsewhere: To

sell.

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- Validity of standing anything by him the assignor done omitted or knowingly patent." suffered the said letters patent are now valid and subsisting and

&c.

not void or voidable (e): AND ALSO that he the assignor will from As to imtime to time &c. [covenant as to improvements &c. as in last precedent provements, excluding the provision for taking out a patent, and making the exclusive benefit to be "for the county 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 be made of an old patent, notwithstanding that in sect. 36 of the new act the Channel Islands are not mentioned. (See p. 317, post.) As to the comparative advantages of assignments and exclusive licences for districts, see pp. 117, 118, ante; and as to the contents of such assignments, see pp. 115-117, ante.

(b) As to improvements, additions, &c., being included in a purchase, see pp. 33-35.

(c) See note (f) to last precedent.

(d) See note (d) to last precedent. There is a covenant (see later) as to improvements, &c.

(e) See note (i) to last precedent.

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sions.

Assignor to

fees.

such improvement addition or discovery he 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 to exten- as shall be reasonably required by him or them (ƒ): 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 herein before expressed to be assigned or in any letters patent intended to be comprised in the covenant in this behalf herein before contained as shall be reasonably required (h): AND ALSO that the assignor or his pay renewal assigns (i) 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 (j) and will give the assignee or his assigns written notice of every such payment immediately after the same shall have been made but in case of nonassignee may 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

In default

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.

(ƒ) The obligation to take out any new patent is not imposed. If the district 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 partition 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.

(i) This, like each preceding covenant, is, of course, only a personal covenant 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.

66

(j) 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 assurance (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.

(k) The assigns will be bound by this charge if they purchase, as presumably would be the case with notice of it. See Werdermann v. Société d'Electricité, L. R. 19 Ch. D. 246, and ante, pp. 32, 33, 120, and post, pp. 185, 186.

PREC. II.

letters patent at the end of which year any annual fee for renewal would become payable (not including however any extension of the time of payment thereof which might be granted on application at the Patent Office) have practically or in fact ceased within the said county to work 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 FURTHER that neither the assignor nor Assignor not his assigns will without the written consent of the assignee or his to amend specification assigns amend or seek leave to amend the specification in force for without the time being of any patented invention then comprised herein consent. but such consent shall not be arbitrarily withheld (1): AND THE Acknowledg ASSIGNOR hereby acknowledges the right of the assignee and his ment and undertaking assigns respectively to production of the said letters patent herein- as to producbefore expressed to be assigned or otherwise mentioned and to tion, &c. of the delivery and the right to make copies thereof and hereby undertakes patents. for the safe custody thereof (m).

IN WITNESS, &c. (n).

(1) As to amendments of specifications, see sects. 18-21 of the new act, pp. 312, 313, post, and see pp. 18, 19, ante. As to the consent not being arbitrarily withheld, see p. 202, post, 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 (post, 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 comptroller is to keep on sale copies of all complete specifications in force. If a patent is lost or destroyed, or its non-production is accounted for to the satisfaction of the comptroller, he may cause a duplicate thereof to be sealed (sect. 37, post, p. 318).

(n) The assignment should be executed as a deed (ante, p. 111), and be also registered (ante, p. 132, and sects. 23 and 87 of the new act).