III. PREC. III. ASSIGNMENT of a MOIETY of a Patent- CONDITIONS OF SEPARATE WORKING (a). Recitals. Grant and title. Agreement to sell moiety of patent. Testatum. Assignment of moiety. Covenant as to validity. Mutual cove nant as to payment of fees equally. day of THIS INDENTURE made the 18BETWEEN 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 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 extensions thereof upon the terms hereinafter appearing. NOW THIS INDENTURE WITNESSETH that in pursuance &c. [as in Assignment I.] 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 validity of patent as in Assignment 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 with the next three precedents, any one of which might be made to apply to an assignment of a moiety of a patent. As to rights of co-owners inter se working separately, and as to assignments of shares in patents, see Chapter on Assignments," ante, pp. 118–127. (b) See notes (a) and (b) to Assignment I. (c) See note (d) of Assignment 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, 7 Moo. P. C. C. 133; Southworth's Patent, 1 Webs. 487, as to who should apply. (e) The co-owners will be bound (during the time, at least, they respectively are willing to keep up the patent) to contribute in proportion to their shares. See ante, pp. 122, 123, and Mathers v. Green, L. R. 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. interest on or his assigns in excess of his one moiety of the said fees re- PREC. III. spectively shall be repayable by the other party or his assigns on Excess of demand and together with interest thereon at the rate of 5 per payments cent. per annum from the time of demand thereof shall be a charge charged with on the moiety of him or them of the said letters patent re- other party's spectively: AND ALSO that &c. [For other conditions use as thought share. fit Clauses 6 (b and c) and 8 of Agreement IV., ante, pp. 71, 72, or Other Agreement VIII., ante, p. 82, or the more elaborate and extensive covenants. provisions given by the next precedent] (f): AND THE ASSIGNOR Acknowledghereby acknowledges the right of the assignee &c. [Acknowledgment to letters and undertaking &c. as in last precedent]. IN WITNESS, &c. (g). (f) As to the working of a patent and grant of licences by one co-owner alone, and the right to accounts between co-owners, see unte, pp. 118 et 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, Agreement XIV., ante, p. 99. (g) The assignment should be executed as a deed and registered. See last note to Assignment I., ante. For a clause as to service of notices, use Sp. Cl. 51, post, p. 242. ment, &c. as patent. PREC. IV. Recitals. Absolute title of assignor. Agreement to IV. ASSIGNMENT of ONE-TWELFTH SHARE of a Patent-Special Provisions as to each Co-owner working the Patent separately (a). 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: WHEREAS (b) the assignor is entitled to the invention and letters patent mentioned in the First Schedule hereto: AND WHEREAS the assignor has agreed 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 subject as hereinafter expressed: 1st Testatum. NOW THIS INDENTURE WITNESSETH that in pursuance Assignment &c. [ASSIGNMENT I., ante] he the assignor as beneficial owner doth of one-twelfth hereby assign unto the assignee ONE-TWELFTH PART or share of and in the said invention &c. [use last precedent to end of corenant as to the validity of the patent]: 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: sell onetwelfth share. share of patent. 2nd Testatum. Agreement and declara tion. Renewal fees paid according to shares and excess paid by any owner to be charged on shares of the others. 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 by any owner 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 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 other (a) Refer 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. (b) See Assignment I., 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. liberty to continue the payment thereof as for the remainder of PREC. IV. the term for which 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 with interest thereon be a charge on his share aforesaid accordingly (d). 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 except by the their respective shares in the letters patent relating thereto (e). owners jointly. owners to be 3. In taking any half-yearly accounts hereinafter provided to Royalties for be taken there shall be debited to each owner for the benefit of benefit of all the other owners for the time being in respect of each patent article manufactured by him in the half-year then ended (f) a articles manuroyalty of shillings less his proportion thereof according to factured by his share in the letters patent which royalty less as aforesaid shall each owner. be divisible in the said accounts between the other owners in the respective proportions of their shares. all articles. to be used on 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 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 (g). 5. Each owner shall from time to time after making any Improveimprovement in or addition to the said invention or discovery ments, &c. by useful in the manufacture of (including any improvement be brought in, addition or discovery aforesaid now (if so) in the possession and any owner to (d) 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 Vend. and Purch. (Chap. XV. sect. 5) 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. Rowe, 1 Ph. 255; Neesom v. Clarkson, 2 Hare, 173; and West v. Reid, 2 Hare, 260). The licensee should search the register. See also ante, pp. 122-126, as to assignments of unequal shares of patents, and Conveyancing Act, 1882, s. 3 (Appendix, post, p. 383). Where unreasonable objections are raised by 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. (f) 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 Sa 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 no premium has been charged him. (g) See other forms as to the use and supply of the patent mark in the Precedents of Licences and "Special Clauses as to Licences," post, pp. 234, 235. M. L PREC. IV. 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 contribute in the proportion or proportions aforesaid to the payment of the current 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 Books of by each owner and inspection allowed and verification made. 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 expressed 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 improvement 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 account kept 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 (i) of the said articles manufactured by him and shall at the same place produce the said books to the other owner 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 convenient for any of the purposes hereof as to any item or matter comprised therein or relating thereto and at the expense of any party requiring it verify such information by statutory declaration or otherwise as shall be reasonably required. Accounts settled half yearly. day of or 7. Each owner shall within twenty-one days after the end of delivered and each half-year ending on the 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 (h) Compare the above clause with Forms 15 and 16, ante, pp. 52, 53, and Sp. Cl. 44 and 45, post, p. 240. (i) Particulars of sale should appear, 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 manufactured. |