Of the assignment of patents. Every pat ent or an interest therein is assignable iu law, by an instrument in writing; such as signments, etc., are void as against any pur-' chaser or mortgagee for a valuable consider ation, without notice, unless recorded in the patent office within three months. But an unrecorded assignment is valid as against a subsequent party who has had actual notice; Pitts v. Whitman, 2 Sto. 609, Fed. Cas. No. 11,196.
The right may be successively assigned without limit; Selden v. Gas Burner Co., 9 Fed. 390. Any person may take under an assignment, a married woman, an infant, etc.; Fetter v. Newhall, 17 Fed. 841. An in vention may be assigned before it is perfect ed; Hammond v. Organ Co., 92 U. S. 724, 2:3 L. Ed. 767 ; but an agreement for the future assignment of a patent not yet granted is not a recordable instrument; New York P. B. Mach. Co. v. Mach. Co., 32 Fed. 783. A deed conveying "all the inventor's property and estate whatsoever" carries rights in un patented inventions; Philadelphia W. & B. R. Co. v. Trimble, 10 Wall. (U. S.) 367, 19 L. Ed. 948.
Patents are creatures of the statute and an assignment is sufficient if it conforms to R. S. § 4898. It must be by a written instru ment duly recorded; Ball v. Coker, 168 Fed. 304; but an assignment passes title against an infringer, though not recorded; Delaware S. T. Co. v. Tube Co., 160 Fed. 928, 88 C. C. A. 110 ; it need not be under seal; U. S. L. & H. Co. v. Electric Co., 189 Fed. 382, modified in 194 Fed. 866, 114 C. C. A. 612; nor ac knowledged, when the genuineness of the as signor's signature is proved ; Clancy v. Sup ply Co., 157 Fed. 554, 85 C. C. A. 314.
A certified copy of a patent office record of an assignment is not prima fade proof of the execution or genuineness thereof, nor is it made competent evidence by R. S. § 4898, as amended March 3, 1897 ; American Graph ophone Co. v. Leeds Co., 140 Fed. 981; East ern Dynamite Co. v. Mfg. Co., 164 Fed. 47, per Archibald, J.; contra, American Bank Protection Co. v. Bank, 181 Fed. 377, per Sanborn, J.; National Folding B. & P. Co. v. Box Co., 55 Fed. 488 ; Standard Elevator Co. v. Elevator Co., 76 Fed. 767, 22 C. C. A. 549.
An assignment is the transfer of the entire interest in a patented invention or of an un divided portion of such entire interest. as to
every section of the United States; Rob. Pat.
§ 762 ; it differs from grant In relation to the territorial area to which they relate. A grant is the transfer of the exclusive right in a specific part of the United States. It is an exclusive sectional right. A license is a transfer of a less or different interest than either the interest in a whole patent or an undivided part of such whole interest or an exclusive sectional interest ; Potter v. Hol land, 4 Blatch. 206, Fed. Cas. No. 11,329. See Littlefield v. Perry, 21 Wall. (U. S.) 205, 22 L. Ed. 577. Any transfer of an interest in a patented invention, which cannot operate as an assignment or grant, is a license ; Rob. Pat. § 806.
A license is distinguished from an assign ment and a grant in that the latter transfers the monopoly as well as the invention, while a license transfers only the invention and does not affect the monopoly otherwise than by estoppiug the licensor from exercising his prohibitory powers in derogation of the privi leges conferred by him upon the licensee; Rob. Pat. § 806. See Pope Mfg. Co. v. Mfg. Co., 144 U. S. 248, 12 Sup. Ct. 641, 36 L. Ed. 423. A license is said to he merely the right not to be sued ; Hawks v. Swett, 4 Hun (N. Y.) 146. It may be by parol ; Gates I. Works v. Fraser, 153 U. S. 332, 14 Sup. Ct. 883, 38 L. Ed. 734. The right of a patent owner to license the use of his patent is not a creature of statute, but of the common law ; U. S. v. Telephone Co., 29 Fed. 17.
No particular form is required for an as signment ; Siebert Cylinder Oil-Cup Co. v. Beggs, 32 Fed. 790; to comply with the act it must be in writing; Gottfried v. Miller, 104 U. S. 521, 26 L. Ed. 851. It may be made either before or after the patent issues; Cammeyer v. Newton, 94 U. S. 225, 24 L. Ed. 72.
A grant of the exclusive right to make, use, and sell a patented article throughout the United States for the full term of the patent, is an assignment; Rapp v. Kelling, 41 Fed. 792; where the intention of a writing is to transfer all rights under the patent, it is an assignment ; Siebert Cylinder Oil-Cup Co. v. Beggs, 32 Fed. 790.