but without or respective amounts and otherwise as aforesaid in respect of any prejudice to article or articles manufactured by him contrary to this covenant as if the same had been manufactured in accordance therewith]. revocation]. without 31 (w). The licensee shall not without the written consent of Licensee not the licensor first had and obtained assign or mortgage charge to assign, [grant sub-licences in respect of (x)] or otherwise deal or part with without the possession or control of this licence or attempt so to do [except consent. by way of sub-licensing as next hereinafter provided (y)] [but such consent shall not be arbitrarily withheld]. 32 (2). PROVIDED ALWAYS that it shall be lawful for the licensee Express to grant sub-licences hereunder which shall respectively be accord- power to ing to the terms (amongst others) mentioned in the Schedule grant sublicences [terms hereto (a). PROVIDED ALSO that the licensee shall immediately after in Schedule]; the grant by him of any sub-licence give the licensor written notice but notice and thereof stating the date of the sub-licence the name and address particulars to of the sub-licensee the nature of the privileges thereby granted be given. the amount and times for payment of the royalties reserved thereunder the length of the term comprised therein and the locality in which the same is to be enjoyed and also showing that the sublicence contains the terms herein before provided in this behalf. 33 (b). The licensee may grant sub-licences hereunder to manu- Another form facture and sell the said articles or only to sell the same but each (terms set sub-licence shall be expressed to take effect at once in possession and out). be granted to the sub-licensee personally only and not to his assigns and be at royalties only and not at any fine or premium and such royalties shall be made payable half-yearly or at shorter regular periods and be the highest that can reasonably be gotten and shall contain covenants by the sub-licensee to perform and observe the covenants and conditions in this licence as to the use of the patent mark the not disputing the validity of the letters patent and the manufacturing of articles only according to the specification and to keep and furnish regularly to the licensee in respect of articles manufactured or sold under the sub-licence accounts of a similar nature to the accounts herein before covenanted to be kept and furnished and verify such accounts by statutory declaration and not to assign or incumber the sub-licence or attempt so to do without the written consent of the licensee (c) and shall also contain a proviso for revocation of the sub-licence on default being made for twenty-one days in the payment of royalties due thereunder or on the breach of the other covenants or conditions in the sub-licence (w) Ante, pp. 202, 213, 214. (x) Omit this reference to sub-licensing if an express power to sub-license (see next two clauses) is to be given. (y) Retain this matter if either of the next clauses is inserted. (z) Ante, pp. 215, 216. (a) In the next clause terms are set out. (b) Ante, pp. 215, 216. (c) Add any other covenants &c. suitable. Licensor not licences on or on the bankruptcy of or committal of any act of bankruptcy (whether available for adjudication or not) by the sub-licensee and so that the sub-licensee shall execute and deliver a counterpart of his sub-licence and the licensee shall not without the written consent of the licensor release any of the covenants and conditions aforesaid to be performed or observed by the sub-licensee and shall give the licensor immediate notice in writing of any breach committed by the sub-licensee and shall if required by the licensor in writing so to do revoke the sub-licence on account thereof and in the event of the revocation thereof whether as aforesaid or otherwise of the said sub-licence shall not without the like consent grant any new or further sub-licence hereunder to the same sublicensee: PROVIDED ALWAYS that the licensee shall immediately after the grant &c. [Proviso as to giving notice and particulars of the grant of every sub-licence as in last clause.] 34 (d). The licensor shall not grant licences to use or vend the to grant other said invention or any part thereof at any place or places [outside the said district] to any other person or persons on terms more favourable to him or them than are granted to the licensees hereunder. terms more favourable than hereunder. Liberty for licensor to inspect factory. Licensee not to dispute validity of patent. Licensor to pay fees or see to do so and deduct 35 (e). The licensor and his agents shall be at liberty at all reasonable times during the continuance of this licence to enter any place of the licensee where the manufacture or sale of the said articles shall be carried on in order to ascertain the state or extent of such manufacture or sale and that all covenants by the licensee herein contained have been or are being performed or observed. 36 (f). The licensee shall not during the continuance of this licence nor at any time after the determination thereof dispute or object to the validity of the said letters patent or the novelty or utility of the said invention. 37 (g). The licensor shall during the continuance of this licence permit licen- pay all fees necessary for the renewal of the said letters patent days at least before the latest times appointed for the payment thereof respectively and when required by the licensee from royalties produce the certificate to him of any payment thereof or permit the licensee to pay any one or more of such fees and to deduct the amount of the same if and when so paid by him from the amount of royalties or other sums for the time being due hereunder and also generally perform and observe the conditions of the said letters patent. and to observe conditions of patent. Licensor to defend patent 38 (h). The licensor shall at all times during the continuance of (d) Clause 13, ante, p. 231, is a more extensive one to the same purpose as the above. (e) Ante, pp. 202, 212. Ante, pp. 199-201. this licence at his own cost defend every proceeding for revocation and at cost of of the said letters patent and at all times aforesaid at the request licensee to take proand cost of the licensee commence and prosecute all legal or other ceedings for proceedings in respect of any infringement or suspected infringe- infringements ment of the said letters patent committed within the said district or permit or permit the licensee at the like cost so to do in the name of the licensor. him &c. 39 (i). The licensee shall use his best endeavours to detect every Licensee to suspected infringement of the said letters patent within the said detect indistrict and shall give the licensor written notice thereof as soon as and give fringements the licensee shall have suspected and also (if the case) ascertained notice thereof the same and shall at the expense of the licensor as to actual dis- and assist bursements (if any) made or liabilities (if any) incurred thereby proceedings. assist him in any proceedings undertaken by him [unrequested by the licensee] in respect thereof as shall be reasonably required. licensor in to determine 40. Either party may at any time determine this licence by Power for serving the other with a written notice of his intention so to do either party three calendar months at least before the expiration of any half- licence on year aforesaid and such service shall operate accordingly but notice. without prejudice to the recovery by either party of any monies then already due or to any right of action for past breaches accrued hereunder. a revocation on default in payments or breach of other obligations or bankruptcy &c. of 41 (j). If any royalties or other sums payable hereunder by the Power of licensee or any part thereof respectively shall for any half-year be not paid within twenty-one days from the expiration thereof (whether demanded or not) or if the licensee shall make default in any other obligation by him herein contained and (in the case. of breach capable of being made good) shall for the space of days after he shall have been served with a notice in writing by licensee. the licensor requiring him to make good the said breach neglect or omit so to do or if the licensee shall become bankrupt or commit any act of bankruptcy whether available for adjudication or not then the licensor at any time thereafter [and notwithstanding any merely implied waiver by him of his right so to do] may by serving the licensee or his trustee in bankruptcy (if any) with a notice in writing for this purpose forthwith revoke this licence without prejudice however to the recovery by the licensor of any monies then already due or to any right of action by or on behalf of either party for past breaches accrued hereunder. day of day of 42. If the licensee shall not before the commence to manufacture the said articles as aforesaid or shall in any one complete year ending on the not Another form (additional to last by referring (i) Ante, pp. 202, 217. As to events on which the power may be reserved, see ante, pp. 218, Covenant by improvements work the said invention at a profit (k) or shall for a period of other sums payable hereunder &c. [Continue as in last clause.] 43 (m). PROVIDED ALWAYS that if the said letters patent shall from any cause become wholly or as to some material part of the said invention void and incapable of being restored (notwithstanding that any judgment in revocation of the said letters patent to the extent aforesaid shall or shall not be appealed against) the licensee may at any time thereafter but not after any such judgment shall have been (if the case) reversed on appeal by notice in writing served on the licensor determine this licence forthwith without prejudice however to the recovery by the licensor of any royalties or other sums then already due to the licensor or to any right of action then already accrued to either party hereunder. 44. AND EACH of them the said parties hereto doth hereby covenant with the other of them that he will at the earliest opportunity either at his own place of business or by post (if suitable) or otherwise as shall be reasonably required during the continuance of this licence communicate and explain to the other of them free of charge except as to expenses out of pocket incurred thereby every improvement in or addition to the said invention or mode of applying the same or any discovery useful for the manufacture of the said articles that he may invent ascertain or make or otherwise be entitled to communicate and that every such improvement addition or discovery (whether the same shall be or become patented or not) shall during the continuance of this licence be for the use of both parties hereto [or their respective assigns] and if made invented or ascertained by the licensor shall for the purposes hereof be deemed part of the said invention (n). 45. The licensor shall at the earliest opportunity &c. communilicensor as to cate and explain to the licensees &c. [as in last clause down to made by him. "entitled to communicate"] and at the cost of the licensees as to journeys and other expenses (if any) out of pocket occasioned to him thereby communicate to them or their agents or workmen not exceeding in number as and when reasonably required by the licensees the nature of such improvement addition or discovery (k) That is to say, the payment of the royalties for any current year must not involve loss (Kernot v. Potter, 30 Beav. 343). (1) Or "sell," but in that case not necessarily on account only of the royalties being reserved on sales, as the word "sell" would be appropriate even if the royalties were for manufactures. (m) Ante, p. 219. (n) On this clause, see p. 218, ante; and as to improvements generally, see Chapter on "Agreements," pp. 33-36, ante. See also C. F. 15, 16, ante, p. 52. so as to enable them respectively to make full and effective use of the same and permit the licensees to have the use thereof (whether it shall be or become patented or not) subject as nearly as can be to the covenants and conditions herein contained as if such improvement addition or discovery were part of the premises (v). patent after 46. At any time after the expiration of three years from the Option to date and during the continuance hereof the licensee shall have the purchase option (to be declared in writing) to purchase all the patent rights three years; of the licensor for the United Kingdom and the Isle of Man in respect of the said invention now or which hereafter may be held by him and the sole and exclusive benefit within the same places of all improvements and additions thereto and new discoveries useful for the manufacture of the said articles which hereafter may be made by the licensor at the price of £- subject to the satisfaction by the licensee up to the time of completion of the said purchase of all his then subsisting obligations hereunder. PRO- but purchase VIDED ALWAYS that if the said purchase shall from any cause not to be completed within attributable to any wilful act or default of the licensor not be com- three months pleted within three calendar months from the time when such de- from exerclaration shall have been served on the licensor he shall on the cise. expiration of the said period be released from any obligation to sell the said patent rights and benefit as aforesaid. like business 47. The licensor shall not within the said district during the Licensor not continuance of this licence either alone or in partnership or directly to engage in or indirectly whether as shareholder or debenture holder or other- within diswise engage or be concerned in or promote any company trade trict. business or speculation for the manufacture sale or letting on hire of articles of the same or like nature with any of the articles which can be manufactured or improved by means of the said invention (w). at ture but 48. PROVIDED ALWAYS that during such time or times as the Licensee not licensor shall himself either alone or in partnership carry on the to manufacbusiness of a aforesaid, and shall subject as licensor to herein before provided efficiently execute the orders of the licensees do so for for the supply of manufactured according to the said in- licensee. vention the licensees shall not manufacture the like articles whether as aforesaid or otherwise but the licensor shall manufacture such articles for the licensees at the price of £ each and while bound under this proviso shall not manufacture any such articles for any other person than the licensees or their nominees. 49. Each person party hereto shall sell all products of his manufacture as aforesaid through Messieurs K. & L. of &c. or some (v) See also C. F. 15 and 16, ante, p. 52. (w) See Leather Cloth Co. v. Lorsont, L. R. 9 Eq. 345, as to the restraint of trade caused by such a covenant not being greater than that caused by the patent itself, whereby the covenant was held not to be against public policy. M. R Sale only through brokers com |