PREC. VI. Reduced 11. (j) In taking the final accounts between the said parties at the end or sooner determination of the licence the assignor shall be debited as to each article aforesaid then in his possession and royalties on remaining unsold with one-twelfth part of the reduced royalty of articles un shillings in lieu of the like share of any royalty in respect sold at end of of the sale by him of such article as aforesaid. on bank 12. If the assignor shall become bankrupt or commit any act of Determinabankruptcy whether available for adjudication or not or shall tion of licence make default for the space of twenty-one days in the payment of ruptcy or any moneys due from him to the assignee hereunder or shall breaches. 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) shall 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. 13. Except where in any case the context requires a different Transmission interpretation or the term "assigns" is already used these presents clause. shall extend and be construed to apply also as far as possible to the assigns of either party in substitution for him. IN WITNESS, &c. (k). (j) Omit this clause if the royalties are originally only to be on the manufactures. See note (e). (k) The deed should be registered. For a clause as to service of notices, use Sp. Cl. 51, post, p. 242. VII. PREC. 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 (a). Recitals. Invention by assignor. Agreement before grant for purchase of patent. THIS INDENTURE made &c. BETWEEN A. B. of &c. (hereinafter 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 &c. 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 () 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 WHEREAS the said patent was duly obtained tained in joint 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 LA has been duly paid as the assignor doth hereby acknowledge (d): AND WHEREAS the assignor hath consented to execute the assignment of the said patent hereinafter contained. NOW THIS INDENTURE WITNESSETH that in pursuance of the said agreement in this behalf and in consideration of the sum of £A SO Patent ob names. Assignor to execute this assignment and release. Testatum. 73. (a) This is to be the kind of assurance mentioned in Agreement V., ante, p. (b) 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 (post). (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. paid to the assignor by the assignee as aforesaid (the receipt PREC. VII. whereof is hereby acknowledged) he the assignor as beneficial owner (e) to the extent only of his estate and interest as hereinbefore 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- Covenants. 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 (f): AND ImproveTHAT the assignor will from time to time after making any im- ments, &c. provement in or addition to the said invention &c. [Form 16, ante, p. 52]: AND THAT the assignor will at the expense of the assignee Extension. or his assigns &c. [Covenant as to Extensions as in Assignment I., ante, p. 137.] IN WITNESS, &c. (g). (e) According to Wall v. Bright (1 Jac. & W. 494) and Lysaght v. Edwards (L. R. 2 Ch. D. 499) (Jessel, M. R.), the assignor will have become a trustee for the assignee; but he covenants as beneficial owner, because he was such at the date of the contract. & See note (i) to Assignment I., p. 137. The deed should be registered. See last note to Assignment I. VIII. PREC. VIII. ASSIGNMENT of a Patent to the Inventor (a FOREIGNER resident Abroad) by his Agent, the Patentee. Recitals. Assignee real inventor. And being resident abroad employed assignor. Assignor obtained patent in own name. Number of patent. Request to assign. Testatum. Grant. Covenant as to validity and extensions. THIS ASSIGNMENT made &c. BETWEEN A. B. of &c. (here- IN WITNESS, &c. (a) The Patent Office will not grant a patent to any importer, or agent of inventor, resident abroad. See ante, p. 13, and Form of Application A1, post, p. 359. The inventor himself though resident abroad can apply under Form A., post, p. 358. IX. ASSIGNMENT of a LICENCE-the Licensor not being a Party (a). THIS INDENTURE made &c. BETWEEN A. B. of &c. (herein- on every 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 vendor 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 INDENTURE 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 purchaser and his assigns subject to the covenants and conditions therein contained and henceforth on the part of the licensee to be performed or observed: AND THE VENDOR doth hereby covenant with 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 that all the covenants and conditions therein contained and on the (a) See next precedent as to the licensor being a party. As to the covenants in a licence binding the assigns of the licensee, see post, Chapter on "Licences," pp. 185, 186. (b) Omit reference to this or any other day if the assignment is dated on a half-yearly day. Recite also (if so arranged) that "the vendor has duly paid all royalties and other sums reserved by the said licence owing up to the date hereof." M. M PREC. IX. |