PRECEDENT I. suffer him or them to inspect and make copies or extracts from the

Contents of mortgage deed.

Charge on patent and declaration of trust.

said books or any of them as and when reasonably required by him or them and shall pay the expenses (not exceeding £- -) of a chartered accountant (if any) employed by the said C. D. for any half-year to investigate the said books and state of the said business for the purposes aforesaid and shall at the end of each half-year aforesaid send to the said C. D. a full account and balance sheet for such half-year (s).

10. The said mortgage deed shall contain all such covenants and provisions as shall be necessary to carry out the terms of this agreement so far as they shall remain to be performed or observed together with absolute covenants for title to the said invention and patent rights subject to this agreement and as to the validity of the patent and for the payment by the said A. B. of all renewal fees and for the maintenance and protection by him of the patent but shall reserve to the said A. B. the right at any time or times before the said C. D. shall become entitled to exercise the power of sale to grant licences other than exclusive ones but at the highest royalties obtainable and not at fines or premiums and containing provisions enabling the licensor to revoke the same respectively on default in payment of any royalties for the space of thirty days or on breach of any other covenants or conditions therein contained and shall enable the said C. D. at any time or times after he shall become entitled to exercise the power of sale to grant licences without restriction and shall as far as can be include the benefit of any extension (t) of the patent and of any improvements or additions to the said invention or any new discovery relating to the subject-matter thereof (u) now (if at all) in the knowledge and possession of or which may hereafter be made by the said A. B. either solely or in conjunction with any other person or persons and of all patent rights obtainable by him in the United Kingdom and Isle of Man in respect thereof respectively and lastly shall contain all such other clauses or provisions as shall be necessary usual or convenient for securing to the said C. D. payment of the moneys and interest intended to be secured as aforesaid (v).

11. Until the said mortgage shall be executed the patent rights for the time being comprised herein shall stand charged with the

Foreign and colonial patents.

(8) As to accounts generally, see p. 33, ante.

(t) As to applications for extensions, see ante, p. 19.

(u) As to improvements or additions, &c., see ante, pp. 33, 34. (v) If any colonial or foreign patents are intended to be also a security they cannot, of course, be comprised in the mortgage. There should be a recital in the agreement of such intention, and also of applications being, or about to be, made for the respective patents. A clause should then be inserted, providing that A. B. will, with all due speed, or within specified times, make or prosecute his applications, and obtain the respective patents, and execute a proper mortgage of them to C. D., according to the laws of the different countries. After the complete specification in this country has been accepted, and consequently published (sect. 10 of the new act, and see ante, p. 14), it will be impossible in most colonies or foreign countries which are not members of the International Union to make effective applications for the patents. See as to colonial and foreign patents and the International Union, ante, p. 36.

repayment of the principal moneys and interest as aforesaid and PRECEDENT I. the said A. B. shall hold the same patent rights in trust for the said C. D. to enable him more effectively to enforce the said charge where necessary and shall perform and observe the covenants and provisions to be comprised in the said mortgage deed so far as possible as if the same had been duly executed. IN WITNESS &c. (w).

(w) By the Conveyancing Act, 1881, ss. 19, 20 (App., post, pp. 375, 376), This agreecertain powers of sale and other powers are given to mortgagees where the ment to be mortgage is by deed. By sect. 2 (6) a mortgage includes "a charge." It executed as a seems, therefore, advisable that, in view of possible delay in the execution deed in order of the mortgage, the above agreement should be executed as a deed. The to enforce the declaration of trust above made may be useful in enabling C. D. to get in powers under the legal estate under the Trustee Acts, 1850 and 1852, on any sale by him Conv. Act, to enforce the charge in case A. B. refuses to concur in the sale. See notes to sections 19, 20, and 21 of the Conveyancing Act, 1881, in Wolstenholme Declaration and Turner's work on the Conveyancing Acts, pp. 66-72, 4th edition, 1885. of trust to be for purposes See note (e), Agreement III., post, p. 69, to the same effect. of Trustee Should there be delay in the execution of the mortgage the agreement Acts. itself should be registered, as being a document defining the interests of co-grantees (see p. 24, ante).

66

1881.

Registration. Stamp duty will be payable on this agreement to the extent of the whole Stamp duty. sum of £A (see Stamp Act, 1870, tit. 'Mortgage," &c., sub-s. (1), and sect. 107), and on the mortgage deed sixpence per £100 or fractional part (ib. tit. sub-s. (2)).

II.

PREC. II. AGREEMENT by a MANUFACTURER to pay expenses of obtaining a Patent-No APPLICATION yet made-JOINT PATENT-MANUFACTURER ALONE to work Patent-PAYMENT OF ROYALTIES— OPTION TO PURCHASE Patent-Provision for renewal of Agreement by Surviving Partners (if any) of Manufacturer.

Recitals.
Invention.

AN AGREEMENT made &c. BETWEEN W. of &c. of the one part and R. of &c. of the other part: WHEREAS W. claims to be the true and sole inventor of a method of determining the distances of certain objects from the eye of the observer by means of an adaptation of the telescope: AND WHEREAS W. has not yet applied for any letters patent in respect of the said invention: R. established AND WHEREAS R. is established at as a manufacturer and seller of telescopes and other optical instruments: NOW IT IS HEREBY AGREED as follows:

No patent yet applied for.

in manufac

ture.

Disclosure of invention.

R. to make

men, and if not elect to carry out agreement

the same to

1. W. shall forthwith fully disclose to R. the nature and extent of the said invention (a).

2. Within one calendar month after such disclosure and at his and try speci- own expense R. shall make or adapt a telescope or other instrument in accordance with or exhibiting the said invention and make trial of the same and within a further period of one calendar month he shall in writing state his willingness to carry out the obligations on his part hereinafter contained or in default of such statement this agreement shall become null and void as to anything remaining to be done thereunder and the said invention shall continue to be the sole property of W. who shall not be liable in respect of any sum or sums expended by R. under this clause (b).

be void with out compen

sation.

After R.'s election,

obtained at his expense in joint

3. After R. shall have stated his willingness to carry out the patent to be obligations aforesaid the said parties shall at his expense apply for and obtain a patent in their joint names for the said invention for the United Kingdom and Isle of Man. Provided however that all moneys paid by R. in respect of any application or proceedings thereon which by reason of any wilful act or default of W. shall become abortive or abandoned (whether revivable or not) shall be repaid by W. on demand with interest thereon at the rate of

names.

W. to pay expenses of

abortive proceedings if caused by per cent. per annum from the respective times when the same were him, together so paid until the repayment thereof respectively (c).

with interest.

(a) Compare this with Clause 1 of last precedent. Here no elaborate clause is needed.

(b) See as to disclosure and trial of an invention and remedies for breach of confidence in using or revealing the information, ante, p. 27.

(c) No new initiatory application can, of course, be made after the accept

PREC. II.

R. to have

4. Subject and without prejudice to the provisions hereinafter contained the said parties hereto shall hold the said invention and Subject to patent and all other inventions and patent rights for the time remaining being subject hereto equally between them as tenants in common. provisions, 5. R. shall have the sole right for himself and partners (if any) rights to be the patent for the time being exclusive of W. and all other persons of using held equally working and vending the said inventions and patent rights in- as tenants in cluding the granting of licences at royalties. Provided however common. that both parties shall concur in the sale or assignment (if any) sole right to of any patent rights for the time being subject hereto or any part make and sell thereof or share therein respectively and also in the grant of and grant licences under any of the said patent rights at fines or premiums royalties. and they shall be entitled to the net proceeds of any such sale or Other dealthe fines or premiums or any royalties aforesaid in equal shares. ings jointly, 6. R. shall at the end of each half year hereinafter mentioned and all sums pay to W. the royalty of shillings in respect of each licences instrument aforesaid made or adapted by him according to the divided said or any other invention for the time being subject hereto and equally. in such half-year sold by him whether he shall actually have R. to pay received the price thereof or not (d).

licences at

received on

royalties to W. on instru

7. All fees and the costs and expenses of and attending the ments sold. maintenance and protection of the said patent rights shall in the Fees and costs first instance be paid and borne by R. who shall be entitled in the of protection, &c. paid by half-yearly accounts hereinafter provided to be furnished to charge R. firstly, W. with one moiety of the same respectively.

then borne

Accounts

8. R. shall keep at his usual place of business all proper books equally. of account and shall make true and complete entries therein at the kept, and earliest opportunities of all particulars necessary or convenient for inspection the purposes hereof relating to the manufacture and sale of the allowed, &c. instruments made or adapted as aforesaid and the licences granted in respect thereof and shall produce the said books to W. or his agents or agent at all reasonable times for inspection and the taking copies or extracts therefrom and shall at his own expense obtain and give to him or them from time to time all such information as to any item or matter contained or which ought to be contained therein as shall be reasonably required.

9. Accounts between the said parties shall be settled at the end Half-yearly of each half-year the first whereof commencing at the date when settlements. complete protection shall have been obtained in respect of the said invention.

ance of the complete specification, as publication then takes place. (Sect. 10, and see p. 14, ante.) After the expiration of the time for acceptance, if no acceptance has been obtained, it seems that, as by sect. 4 of the Amendment Act, 1885 (post, p. 332), no publication by the office is to ensue, the applicants may begin their applications de novo. This is, in fact, an abandonment of a provisional specification. In Oxley v. Holden (8 C. B. N. S. 666), it was held (under old law) that the abandonment of a provisional specification [it had not been published by the office] was not a dedication to the public of the invention.

No provision is made above for the default of R. in advancing moneys, or neglecting to co-operate in the application, as he would probably be in the position to make his own terms.

(d) For a provision in the case of bad debts, see Sp. Cl. 17, post, p. 232.

M.

F

PREC. II.

Improve

either party

to be in

cluded.

10. Every improvement in or addition to the said invention or new discovery useful in the manufacture or adaptation of telescopes ments, &c. by for the like purpose as aforesaid now (if at all) in the knowledge and possession of or which hereafter may be made by either party either solely or in conjunction with any other person or persons shall as far as practicable but subject to the rights therein of any such person or persons be treated as part of or as comprised in the said invention and except as to costs (if any) out of pocket occasioned thereby be communicated and explained by him free of charge to the other of them but no patent shall be applied for or taken out in respect thereof unless R. shall think fit and then as between the said parties at their joint cost and in their joint names subject to the rights of any such person or persons and such patent (if any) shall subject as aforesaid be also subject to this agreement in the same manner as far as possible as the letters patent to be obtained in respect of the said invention (e).

R. may purchase W.'s

interest at fixed price on notice.

On death of R. his surviving partners may elect

to continue

the agreement.

11. R. may at the end of any half-year aforesaid after having served W. with one calendar month's previous notice in writing for that purpose and satisfying all sums (if any) then due to W. hereunder purchase for the sum of £- all the estate and interest of W. in the said patent and any patent rights then subject hereto (ƒ).

12. If R. shall die during the continuance of any patent rights for the time being subject hereto before he shall have elected to purchase the same as aforesaid his surviving partner or partners (if any) shall subject to any provisions in the articles of partnership to the contrary have the option to be declared in writing and served on W. within calendar months from the date of the death of R. to continue to carry out his part of this agreement upon the like terms as aforesaid except as provided in Clause 11. IN WITNESS, &c. (g).

(e) As to improvements or additions, see ante, pp. 33-36.

(f) As to specific performance of contracts to sell patents, existing or future, see ante, p. 42.

(g) For a clause as to service of notices, see Sp. Cl. 51, post, p. 242.