IV. MORTGAGE of a Licence (the LICENSOR being a Party) (a). day of PREC. IV. &c. without licensor for THIS INDENTURE made &c. BETWEEN A. B. of &c. (hereinafter called "the mortgagor ") of the first part E. F. of &c. (hereinafter called "the licensor") of the second part and C. D. of &c. (hereinafter called "the mortgagee ") of the third part: WHEREAS Recitals. by a licence under seal dated &c. [recite licence as in Assignment IX., Licence. ante, but with mention of the rent]: AND WHEREAS in the said Which is not licence it is provided that the licensee shall not assign mortgage to be assigned or incumber the same without the consent in writing of the consent of licensor (b) AND WHEREAS the mortgagee hath agreed to advance licensor. the mortgagor the sum of £- to be secured together with Agreement interest thereon by mortgage of the said licence: AND WHEREAS for advance. the sum of £a is now owing to the licensor in respect of rent due to A sum now him under the said licence on the last: AND Owing to 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 under licence hath agreed to join in these presents in order to testify his consent satisfied. to the assignment of the said licence to the mortgagee upon the Licensor terms that the sum of £A part of the said sum of £ be paid to him the licensor in satisfaction of the said sum of £A so arrears and owing to him as aforesaid (c) and also that the mortgagee shall obtaining enter into the covenant hereinafter expressed to be entered into by from morthim. NOW THIS INDENTURE WITNESSETH that in gagee. pursuance of the said agreement in this behalf and in considera- 1st Testatum. tion of the sum of £A this day paid to the licensor by the mort- Covenants to gagee at the request of the mortgagor (the receipt whereof the pay principal licensor doth hereby acknowledge) and of the sum of £в this day on redemppaid to the mortgagor by the mortgagee (the payment and receipt tion day. of which sums of £A and £в making together the said sum of the mortgagor doth hereby admit and acknowledge) he the mortgagor doth hereby covenant &c. [covenant to pay principal £ (a) If the licensor is not to be a party use last precedent. shall (b) As to the effect of this covenant, see Chapter on "Licences," post, pp. 213, 214. (c) See note (i) to p. 213, post (Chapter on "Licences"). agrees to join on payment of covenant and interest M. N PREC. IV. Assignment of licence. Subject to covenants &c. in licence and covenant by mortgagee and proviso for redemp tion. Proviso for Covenant for further in terest. And as to validity of licence, pay ment of future rent &c. Quiet enjoy day of and interest, as in the first testatum in Mortgage I., ante, except as 2nd Testatum. to future advances]. AND THIS INDENTURE ALSO WITNESSETH 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, except as to future advances]: AND THE MORTGAGOR doth hereby covenant with the mortgagee, &c. [covenant for payment of interest after the reredemption. demption day, as in Mortgage I., 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, &c. of the covenants in the licence, as in last Precedent]. AND IT IS HEREBY DECLARED by the mortgagor and mortgagee that until the said next the mortgagor shall &c. [declaration as to quiet enjoyment, as in last Precedent]: AND THE LICENSOR doth ment by mort- hereby covenant with the mortgagee that notwithstanding &c. [covenants (qualified) as to the validity of the patent, as in Assignment I., ante, and that "the licensor hath now full power to confirm the said licence in manner aforesaid" (d)]: AND THE MORTGAGEE doth 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 security 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 statutory power to be implied herein will perform and observe the covenants and conditions in the said licence contained and on the part of the licensee to be performed and observed for the time being (e): licence during 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 mortgage 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 performed and observed and as to which no right of action shall then from assigns. already have accrued if he the mortgagee shall procure from the transferee or assignee a substituted covenant by him with the licensor or his assigns to the like purport and effect as this present gagor until redemption day. Covenants by licensor with As to validity of licence and mortgagee. power to confirm the mortgage. Covenant by mortgagee with licensor to perform covenants in possession. Proviso for obligation to cease on mortgagee procuring a substituted covenant (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. covenant so far as the same shall be applicable: PROVIDED ALSO PREC. IV. that nothing herein contained shall be construed or operate so as to But no release absolve the mortgagor from any of his obligations under the said to mortgagor licence. AND IT IS HEREBY DECLARED &c. [transmission nants or clause, as in Mortgage I., ante]. IN WITNESS, &c. (f). (f) The mortgage should be registered. For a provision as to service of notices, see Sp. Cl. 51, post, p. 242. from his cove licence. LICENCES. CHAPTER ON LICENCES. 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.. PAGE .182-4 Assignment of a licence-Covenants how far binding on assigns of licensee; Werdermann v. Société Générale d'Electricité; what covenants to pay bind assigns, and what do not, semble; passive covenants as to user of invention probably bind assigns .....184-7 Sub-licences Estoppel of Licensee during licence from disputing validity of patent-even if licence be exclusive; and whether licence be by deed or not; but not so after patent set aside and use of invention discontinued or licence determined; how licensee should relieve himself from obligations if patent void; money paid not returnable, unless total failure of consideration, or apportioned part thereof, or where fraud... ... 187 187-91 Estoppel by recitals, &c. in licence; What recitals should be in licences 66 .191-2 "Give" and "Grant" do not imply covenants; implied covenants by use of words “ as beneficial owner or as trustee"; Consideration-fines, premiums, royalties, rent; Average clause; use assigns" if licence assignable (with consent or not); To "sell" or "manufacture and sell" the patent articles—but right to manufacture includes right to sell; Reddendum......192-4 Preliminary remarks on covenants and provisoes in licences-The following remarks are subject to some modifications where the licences are only to "sell" What covenants in licence where only open contract to grant one; practice of conveyancers; covenants for title and as to validity of patent-where premium or rent; where no premium or rent; in licences generally; usually unimportant, as prior searches and investigation of title are relied on 194-5 195-7 PAGE Other ordinary covenants by licensor-in licences at royalties only; in licences at premiums or rents; 1. To pay renewal fees and perform &c. the other conditions of patent; 2. To defend patent; 3. To take proceedings for infringement or permit, &c.; 4. Not to amend specification; 5. As to improvements; 6. (In exclusive licence) No other subsisting licences; 7. (In exclusive licence) Not to use &c. invention within district; 8. Power for licensee to determine licence, if patent void, or breach of covenants; 9. Production &c. of the letters patent; No remedy if licensor not agree to pay fees; Non-exclusive licensee cannot sue for infringements, but an exclusive licensee may, in name of licensor, or, semble, in own name, if licensor be co-plaintiff or defendant; and licensor may sue alone, for special damage, notwithstanding exclusive licence-Consent to amendment of specification not to be arbitrarily withheld..198-202 Ordinary covenants by licensee; No clause for distress since Bills of Sale Acts... .... 202-3 Special covenants in connection with ordinary covenants now to be 203 .203-7 .207-8 Exclusive licence for district on sale on hire system—covenants in such a licence... Different kinds of royalties Covenant to keep and furnish accounts and allow inspection &c.; covenant to use the patent mark on articles; supply of dies plates &c.; use of patent mark by sub-licensees; covenant to manufacture only according to specification; covenant by licensor to assist licensee in application of invention; covenant as to liberty for licensor to inspect factory ... 208 209 210-3 Covenant not to assign or charge licence or grant sub-licences without consent-consent given upon terms; consent not to be arbitrarily withheld; consequence of breach of such a covenant; express power to grant sub-licences; terms of such a power; royalties to licensor from licensee in respect of sub-licences....213-6 Covenant not to dispute the validity of the patent; covenant to detect infringements, and assist licensor in proceedings Covenants as to improvements &c. made by either party 216-7 218 .218-21 |