CHAPTER XI. ASSIGNMENT. By section 36 it is enacted "A patentee may assign his patent for any place in, or part of, the United Kingdom, or Isle of Man, as effectually as if the patent were originally granted to extend to that place or part only." And by section 87 :— "Where a person becomes entitled by assignment, transmission, or other operation of law to a patent, the Comptroller shall on request, and on proof of title to his satisfaction, cause the name of such person to be entered as proprietor of the patent in the Register of Patents. The person for the time being entered in the Register of Patents as proprietor of a patent shall, subject to any rights appearing from such Register to be vested in any other person, have power absolutely to assign, grant licences as to, or otherwise deal with the same, and give effectual receipts for any consideration for such assignment, licence, or dealing. Provided that any equities in respect of such patent may be enforced in like manner as in respect of any other personal property." S. 36 Referring to the assignment of part of a patent, Erle, Where part of a C.J., in Dunicliff v. Mallett, 7 C.B.N.S. 209 (1860), said: patent has been "A patentee may assign part of his patent;" and this case he followed in Walton v. Lavater, 8 C.B. N.S. 184 (1860), assigned. The effect. In the case of joint patentees. where he said "that an assignee, whether of the entirety of a patent, or of a part or share of it, takes the legal interest, and is not to be considered as a mere licensee." In this case the assignee of a moiety had also acquired the other moiety, and sued for an infringement of the patent, which it was held he could do. In re Horsley and Knighton's patent, L.R. 8 Eq. 475 (1869), it is laid down, in the case of two joint patentees, that neither can assign more than his share of the patent, nor cause to be entered in the Register of Proprietors any entry which purports to affect or prejudice the rights of the other. And where this was done, the party prejudiced had a right to come to the Court, and have the whole entry expunged, under section 38 of the Patent Act of 1852; and this will be done now by section 90 of the Patents Act of 1883, which Act repeals the Act of 1852 (see chap. xii.). In the case of a patent becoming vested in two assignees, right of surviving and one dying, the right to sue for damages for an infringement committed during the lifetime of both still remains to the surviving assignee. S. 90. In case of two or more assignees, to sue for old infringement. Right of assignee to sue Smith v. London and North-Western Railway Co., 2 E. & B. 69 (1853). An assignee of a patent is unable to maintain an action at for infringement law for an infringement of the patent against a third person, before registra- not the grantor, before he has registered his assignments. Chollett v. Hoffman, 7 E. & B. 686 (1857). tion. S. 23. Accounts. But, under section 35, Patent Act of 1852, which is repealed and re-enacted under section 23 of the Patents Act of 1883, it has been held that the assignee of a patent may bring an action against the assignor, and subsequent licensees of the assignor, with notice of the assignment, to restrain them using the patent, although the assignment has not been registered. Hassall v. Wright, L.R. 10 Eq. 513 (1870). An assignee of part of the profits of a patent is entitled to an account from the licensee of the patentee; but the account must be taken once for all in the presence of all persons interested, and the assignee must place himself in the position of the assignor, and offer to pay any money due to the assignee. Bergmann v. Macmillan, L.R. 17 Ch.D. 427 (1882). Where a patentee assigns his patent, and covenants that the assignee should pay him a percentage on the profits made, any assignee of the original assignee taking with notice of this convenant will be bound by it, and will have to account for the profits. Werderman v. Société Générale d'Électricité, L.R.19 Ch.D. 247 (1881). Where a patentee assigned his patent to A and B, Hall v. Condor, 2 C.B. N.S. 22, 53 (1857). In this case S had an exclusive licence from Lord Cottenham saying in his judgment there: "They are mere equitable assignees, and why should they be deprived of the right which every stranger has of disputing the validity of the patent." Equitable An agreement by the vendor of a patent to assign to the Covenant. purchaser all future patent rights which the vendor may hereafter acquire with respect to the aforesaid inventions, or any of like nature to the patent sold, is good, and not contrary to public policy. Printing and Numerical Registering Co. v. Sampson, L.R. 19 Eq. 462 (1875). Misrepresentation will be a ground to set aside an assign- Repudiating ment, but it must be a misrepresentation of fact, and the assignment. suit be instituted as soon after the misrepresentation is discovered as possible. Chevasse v. Stevens, W.N. 1874, p. 193. A suit to set aside the assignment of a patent on ground of misrepresentation. The misrepresentation was found out in 1867, but no proceedings taken until 1873. Held the misrepresentation was not of fact, but merely an opinion expressed, and that the plaintiff had not repudiated the assignment in proper time. ? Patentee cannot derogate from his grant of assign ment. A company buying a patent. Improvements in munitions of war. A patentee cannot derogate from his grant of assignment. Where a case was considered of a patentee having two patents, one being in France, and assigning the English patent, it was laid down that he could not sell his patented article in England, as he had assigned that patent, Lord Hatherley saying: "No doubt the importer would be restrained, because the licence to sell which originally belonged to the patentee would then be vested in his assignee, and therefore no licence in England given by the original patentee after he had sold the patent could authorize the use of the article so as to defeat the rights of the assignee in England.” A company may buy a patent. In re British and Foreign Cork Company, L.R. 1 Eq. 231 (1865). Werderman v. Société Générale d'Électricité, L.R. 19 Ch.D. 247 (1881). Improvements in munitions of war may be assigned to the Secretary of State for War, it being enacted by S. 44 (1.) "The inventor of any improvement in instruments or munitions of war, his executors, administrators, or assigns (who are in this section comprised in the expression the inventor) may (either for or without valuable consideration), assign to Her Majesty's Principal Secretary of State for the War Department (hereinafter referred to as the Secretary of State), on behalf of Her Majesty, all benefit of the invention and of any patent obtained or to be obtained for the same; and the Secretary of State may be a party to the assign ment. (2.)" The assignment shall effectually vest the benefit of the invention and patent in the Secretary of State for the time being on behalf of Her Majesty, and all covenants and agreements therein contained for keeping the invention secret and otherwise shall be valid and effectual (notwithstand ing any want of valuable consideration), so certified by State to be kept (3.) "Where any such assignment has been made such inventions, to the Secretary of State, he may at any Secretary of time before the application for a patent secret. for the invention, or before publication of the specification or specifications, certify to the Comptroller his opinion, that, in the interest of the public service, the particulars of the invention, and of the manner in which it is to be performed should be kept secret. (4.) "If the Secretary of State so certifies, the application and specification or specifications, with the drawings (if any), and any amendment of the specification or specifications, and any copies of such documents and drawings, shall, instead of being left in the ordinary manner at the Patent Office, be delivered to the Comptroller in a packet sealed by authority of the Secretary of State. (5.) "Such packet shall until the expiration of the term or extended term during which a patent for the invention may be in force, be kept sealed by the Comptroller, and shall not be opened save under the authority of an order of the Secretary of State, or of the law officers. (6.) "Such sealed packet shall be delivered at any time during the continuance of the patent to any person authorized by writing under the hand of the Secretary of State to receive the same, and shall, if returned to the Comptroller, be again kept sealed by him. (7.) "On the expiration of the term or extended term of the patent, such sealed packet |