Compulsory licences. Secretary for hold certain Inventions and specifications kept secret. New acts, how far applicable Compulsory licences may, on the petition of any person interested, be ordered to be granted by the Board of Trade in respect of a patented invention, where, by reason of the default of the patentee in granting licences on reasonable terms, one or other of the following circumstances occur. These are (1) that the patent is not being worked in the United Kingdom, (2) that the reasonable requirements of the public with respect to the invention cannot be supplied, or (3) that any person is prevented from working or using to the best advantage an invention of which he is possessed (t). The order may be for the grant of licences on such terms as to the amount of royalties, security for payment or otherwise, as the Board having regard to the nature of the invention, and the circumstances of the case, may deem just, and any such order may be enforced by mandamus (†). These provisions do not apply to patents granted before the commencement of the act, or on applications then pending (u). Inventions of any improvement in instruments or munitions of war may (either with or without consideration) be assigned to the Secretary for War, who, after such assignment, may before any application for the patent or publication of the specification certify to the comptroller his opinion that the particulars of the invention. and manner in which it is to be performed shall be kept secret (v). After such certification, the specification and drawings (if any) and other documents relating to the invention are delivered to the comptroller in a sealed packet and kept so sealed by him for the term of the patent that might otherwise have been granted, subject to the orders of the Secretary of State or law officer (w). Patents existing at the commencement (1st January, 1884) of to patents and the act, or since granted on applications then pending, are governed proceedings by its provisions, including those relating to the amount and time of payment of fees, but excepting those relating to patents binding the Crown and to compulsory licences (x). Pending applications existing or pending at commence ment. p. 10, Stirling, J., held that an attorney under a power could not petition (t) Sect. 22. See Patents Rules, 1883, 57-63, pp 341, 342, post. (v) Sect. 44. (w) Ibid., and see same section for other provisions for the purpose of preventing publication of any such invention. (x) Sect. 45; and see also sect. 113. As to the expiration of foreign patents making void the British patents, see ante, p. 17, n. THE NEW ACTS. for disclaimer or extension are probably governed by the old law (y). Questions on these and other pending matters are no doubt, however, at this lapse of time, almost or entirely dis posed of. under new 23 The registers under the old practice are to be deemed parts of Registration the same book as the Register of Patents under the new act (2). practice. The practice of registration, however, is considerably altered. Formerly (a), entry was made of documents themselves. Now, entries are to be made of the names and addresses of grantees of patents, and notifications [only] of assignments and of transmissions of patents, of licences under patents, and of amendments, extensions and revocations of patents, and such other matters affecting the validity or proprietorship of patents as may from time to time be prescribed (b). The register is primâ facie evidence of any matter by the act directed or authorized to be inserted (b). No notice of any trust, expressed, implied or constructive, can be entered on the register or receivable by the comptroller (c). Further, the person for the time being registered as proprietor of any patent shall, subject to any rights appearing from the register to be vested in any other person, have power absolutely to assign, grant licences as to, or otherwise deal with the same, and to give effectual receipts for any consideration for such assignment, licence or dealing, but equities may be enforced as in respect of any other personal property (d). ments may be The documents, notifications of which, as affecting the pro- What docuprietorship of patents, may be entered on the register, must be notified on the such as confer legal interest or rights. At least this seems the register. effect of sects. 85 and 87 (e); so that a mere beneficiary can hardly under the former section be the registered proprietor of a patent or licence who, as mentioned in the latter section, has power to assign or otherwise deal with it. Executory agreements, (y) Sect. 113 seems to show this. The word means application" in sect. 45 application for a patent." The like word in sect. 113 has the more general meaning. (z) Sect. 114. (a) Ante, p. 8. (b) Sect. 23. (c) Sect. 85. (d) Sect. 87. (e) This is Mr. T. Aston's view. See p. 65 of his work. The same interpretation is put upon the above sections at the Patent Office. Rectification therefore, as such cannot be registered. Licences, or agreements under seal having the effect of licences, can, perhaps, be registered, although they were executed before the patent was sealed, as the limited patent rights obtained before the sealing will form part of those granted by the patent itself, and the prescribed form of a patent (ƒ) does not restrict the date at which the consent, licence or agreement may be given by the patentee. As to agreements between co-applicants or co-patentees stating the terms on which they, working separately, shall respectively use the patent rights, it is presumed that they are fit subjects for registration, on the ground that they amount to licences between the parties (g). It is presumed that no instrument executed before the actual date of the sealing of a patent, and purporting to be an assignment thereof, or of some share or interest therein, will amount to an assignment of a legal estate or interest, so as to admit of registration. This seems to result from the circumstance that the purported assignment would be inconsistent with the terms of the patent, and that no legal grant can be made of property of which the grantor has neither an actual nor a potential ownership at the time of grant (h). It does not seem that any other documents executed before a patent is sealed can be registered, except the licences and agreements above mentioned, and the legal assurances of any such instruments (i). By sect. 90 of the new act (j), provisions are made for the rectiof the register fication of the register and the expungement or varying of any entry injurious to the rights of any persons as the court may think by expunge ment, &c. (f) Post, p. 48, Form 1. (g) It has been stated at the Patent Office that after the grant has been duly recorded documents executed before the sealing of the patent, and even during the period of provisional protection, which give any legal rights or estate in a patent, may be notified on the register. Mr. Lawson intimates (p. 30) that it was, and presumably would be, the practice not to register documents affecting provisional specifications only. This opinion does not, perhaps, apply to licences and agreements above mentioned, which are intended to extend beyond the period of provisional protection. (h) See Millar's Bills of Sale, 3rd edition, 1871, pp. 36-38 (and also 4th edition, 1877), citing Grantham v. Hawley (1 Hobart, 132), and Bacon's 14th maxim and comments thereon, and the remarks of Tindal, J., in Lunn v. Thornton, 1 C. B. 379. An intended assignee of the above kind should become a co-applicant by amendment. See ante, p. 12, and post, p. 29. (i) As to registration of assignments and mortgages respectively, see also pp. 132, 133, post. (j) Post, p. 322. fit. No case appears to be reported in connection with this section. As these provisions are practically of the same nature as those under the Act of 1852 (k) in the above respect, it may be well to take notice of some of the legal decisions under the old law relating to the latter provisions. In Re Green's Patent (1), a patentee in 1853 assigned the patent to persons who did not at first register the assignment. A new assignment of the patent was made in 1855 to the father of the patentee for valuable consideration, who thereupon registered his assignment before the first assignees registered theirs. On the application of the latter, the first entry was ordered to be expunged (m). In Re Morey's Patent the facts were nearly similar, except that the first assignment was only of a moiety of the patent, and it was held that a subsequent assignee from the patentee had constructive notice, on account of the recital in his deed of assignment, of the prior interest, although it was therein described merely as a licence. The entry of the second assignment was not ordered to be expunged, but the court directed that a statement should be entered on the register that the licence referred to was actually the assignment in question, and refused to direct a statement to be entered to the effect that the second assignee had had notice of the first assignment, as the notice was only constructive. Where a deed is good and bonâ fide, it would seem that no entry could be made on the register qualifying its effect, or giving it a construction (n). According to this rule, it was held that the entry of a deed of assignment of his half share by one co-patentee, who thereby also purported to release his assignee from all claims by himself and the other co-patentee, should, on the application of the latter, be expunged, as the deed could not be altered (o). (k) Sect. 38. (7) 24 Beav. 145. (m) In the report of that case it does not appear that the second assignee had any notice, express or constructive, of the prior assignment; but, in Re Morey's Patent, 25 Beav. 583, the decision in Re Green's Patent was treated as having been based on the fact of fraud, to which the second assignee was privy. (n) Re Morey's Patent, supra, as cited in Lawson, 186; and see Re Horsley and Knighton's Patent, L. R. 8 Eq. 475. (0) Re Horsley and Knighton's Patent, supra. Principal matters in the precedents of agreements. CHAPTER ON AGREEMENTS. Principal matters in the precedents of agreements... Disclosure and trial of the invention; confidential communications of a secret invention Amendment of application by making lender or purchaser a coapplicant Interest on a loan according to net profits of a patent; effect of bank- Loan to patentees, only repayable out of net profits and not per- Accounts Improvements or additions to an invention or discovery of other pro- Sale of patent on the hire system Some points in general law of contracts now to be noticed; requisites Rescission of contracts; no apportionment of entire contract ..... ...... 39 41 44 THE precedents of agreements given herein relate chiefly to the following matters : 1. The advance of moneys by way of loan in order to defray the expenses of taking out a patent, and to provide capital for working it (a). 2. The advance of moneys by way of purchase of an interest in a patent in order to defray the expenses of taking out the same, which one of the parties is to work for the benefit of both (¿). 3. An arrangement of the terms and conditions on which joint (a) Agreements I. and III., post, pp. 59, 67. (b) Agreement II., p. 64, post. Where the parties are to work together a partnership deed should be entered into. See a precedent of such a deed in Agreement XIV., p. 99. |