One owning a patent with several claims cannot assign a single claim so as to pass the legal title; such a transfer is a mere license ; Pope Mfg. Co. v. Mfg. Co., 144 U. S. 238, 12 Sup. Ct. 637, 36 L. Ed. 420. A joint owner may give a license; Pusey & J. Co. v. Miller, 61 Fed. 401.
A Licensee cannot dispute the validity of the patent ; National Rubber Co. v. Rubber Shoe Co., 41 Fed. 48 ; but where a license does not recite the validity of the patent, a licensee who abandons the patent may set up the defence of invalidity in an action for royalties alleged to be payable by him after his repudiation; Mudgett v. Thomas, 55 Fed. 645; and a licensee is not estopped to question the validity of a patent in vindica tion of acts done after his license expired; H. Tibbe & Son Mfg. Co. v. Heineken, 37 Fed. 686. A patentee cannot question the validity of his own patent as against his assignee; Burdsall v. Curran, 31 Fed. 918; Woodward v. Mach. Co., 60 Fed. 283, 8 C. C. A. 622.
An oral agreement for the, sale and as signment of the right to obtain a patent, is not within the statute of frauds, nor with in R. S. § 4898, requiring assignments of patents to be in writing, and may be specif ically enforced in equity, upon sufficient proof thereof ; Dalzell v. Mfg. Co., 149 U. S. 315, 13 Sup. Ct. 886, 37 L. Ed. 749.
The right to damages for past infringe ments does not pass by assignment; New York G. S. Co. v. G. Sugar Co., 18 Fed. 638; May v. Juneau County, 30 Fed. 241; Kaola type Engraving Co. v. Hoke, 30 Fed. 444 ; but see May v. Board, 30 Fed. 250; May v. Saginaw County, 32 Fed. 629; Siebert Cylin der Oil-Cup Co. v. Beggs, 32 Fed. 790; Emer son v. Hubbard, 34 Fed. 327; unless such right is, expressly included.
Acts in pais will sometimes justify the presumption of a license; McClurg v. Kings land, 1 How. (U. S.) 202, 11 L. Ed. 102. As to a verbal license, see Bell v. McCullough, 1 Bond 194, Fed. Cas. No. 1,256. A license to use an invention implied from circum stances 4s not transferable ; Hapgood v. Hewitt, 119 U. S. 226, 7 Sup. Ct. 193, 30 L. Ed. 369; and a licensee cannot divide the territory in which he is licensed among third parties although the license is to him and his assigns ; Brush Elec. Co. v. Elec. Light Co., 52 Fed. 945, 3 C. C. A. 368. A verbal assignment of an interest in a patent has no force against a subsequent assignee under a written transfer, without notice; Gates I. Works v. Fraser, 153 U. S. 332, 14 Sup. Ct. 883, 38 L. Ed. 734; but it has been held that a license to use a patent, not exclusive of others, need not be recorded and may be by parol ; and a subsequent assignee of the pat ent takes title subject to such license, of which he must inform himself as best he may ; but the verbal license will be strictly construed, and must show the consideration and alleged payment of royalties; Jones v.
Berger, 58 Fed. 1006.
An assignment may be made prior to the granting of a patent. And when duly made and recorded, the patent may be issued to the assignee. This, however, • only applies to cases of assignments proper, as contra distinguished from grants or licenses. The application must, however, in such cases be made and the specification sworn to by the inventor. See Rathbone v. Orr, 5 McLean 131, Fed. Cas. No. 11,585 ; Gay v. Cornell, 1 Blatch. 506, Fed. Cas. No. 5,280. The as signment transfers the right to the assignee, although the patent should be afterwards issued to the assignor ; Gayler v. Wilder, 10 How. (U. S.) 477, 13 L. Ed. 504. The as signee of the entire right in a patent has the exclusive right to sue either at law or in equity for its subsequent infringement; Wa terman v. Mackenzie, 138 U. S. 252, 11 Sup. Ct. 334, 34 L. Ed. 923; and may sue in his own name, and so may the assignee of the entire interest for some particular territory ; Suydam v. Day, 2 Blatch. 20, Fed. Cas. No. 13,654; but see Ingalls v. Tice, 14 Fed. 297.
A license to use includes the right to make for use; Illingworth v. Spaulding, 43 Fed. 827.
The•title to a patent passes to the assignee in bankruptcy of the patentee, subject to the assignee's election not to accept it if in his opinion it is worthless or would prove to be burdensome and unprofitable; and he is entitled to a reasonable time to elect whether he will accept it or not ; Sessions v. Romadka, 145 U. S. 29, 12 Sup. Ct. 799, 36 L. Ed. 609. Upon the death of the owner of a patent, intestate, it passes to his adminis trator ; Bradley v. Dull, 19 Fed. 913; who can sue thereon in another state without taking out ancilliary letters of administra tion therein; Hodge v. R. Co., 1 Dill. 104, Fed. Cas. No. 6,561. • Licenses containing express stipulations for their forfeiture are not ipso facto for feited upon condition broken, but remain operative and pleadable until rescinded by a court of equity; Rob. Pat. § 822; White v. Lee, 3 Fed. 222. The question of forfeiture depends upon the ordinary principles of equity; therefore a court will not rescind a license for non-payment of money at the time fixed therein, if payment has been subsequently tendered or justice can be done by a judgment for the amount already due ; Rob. Pat. § 822 ; White v. Lee, 5 Bann. & A. 572, 3 Fed. 222. A refusal to pay royalties coupled with an abandonment of the license and a defence on other grounds, are suffi cient for annulment ; Bell v. McCullough, 1 Fish. 380, Fed. Cas. No. 1,256. If the con tract contain no power of revocation, the licensor can only proceed at law for any breach; Chase v. Cox, 41 Fed. 475; Dens more v. Tanite Co., 32 Fed. 544.