Practical Pointers for Patentees

by Franklin Allison Cresee

Must be Recorded.

An assignment, grant, or conveyance of a patent will be void as against any subsequent purchaser or mortgagee for a valuable consideration without notice unless recorded in the Patent Office within three months from the date thereof. If any such assignment, grant, or conveyance of any patent shall be acknowledged before any notary public of the several States or territories, or the District of Columbia,[p. 87] or any commissioner of the United States Circuit Court, or before any secretary of legation, or consular officer authorized to administer oaths or perform notarial acts under Section 1750 of the Revised Statutes, the certificate of such acknowledgment, under the hand and official seal of such notary or other officer, shall be prima facie evidence of the execution of such assignment, grant, or conveyance.

No instrument will be recorded which does not, in the judgment of the Commissioner, amount to an assignment, grant, mortgage, lien, encumbrance, or license, or which does not affect the title of the patent or invention to which it relates. Such instruments should identify the patent by date and number; or, if the invention is unpatented, the name of the inventor, the serial number, and date of the application should be stated.

Conditional Assignments.

Assignments which are made conditional on the performance of certain stipulations, as the conditional payment of money, if recorded in the office are regarded as absolute assignments until cancelled with the written consent of both parties, or by the decree of a competent court. The office has no means for determining whether such conditions have been filled. (Rev. Stat., Sec. 4898.)[p. 88]

STATE LAWS ON SELLING PATENTS

In some States, laws have been passed by which attempts have been made to regulate or prevent the sale of patent rights within their borders, by imposing upon patentees or their agents certain State restrictions, such as requiring the filing of copies of patents, making and filing proofs, taking out licenses, procuring certificates, complying with forms, or prescribing the terms of a note to be given for a patent.

While it has never been squarely brought before the United States Supreme Court, with the result that much conflicting legislation has been enacted by the different States, it may be said, as a general proposition, that a State or municipality, through the medium of its Legislature or officials, has no constitutional right to make or enforce laws which in any way affect or control the transfer, sale, or other disposition of United States Letters Patent; or to interfere in any manner with the patentee going into the open market anywhere to sell his rights conferred by the patent.

It is a well-established principle of law that Congress has exclusive right and power to legislate on the subjects specially assigned to it by the Constitution, while power is delegated to the several States to legislate on those subjects not[p. 89] thus expressly placed within the control of Congress. It would seem clear that there can be no State interference with the rights which are incident to the grant of Letters Patent and expressly conferred thereby.

Ohio was the first State attempting to place restrictions upon the handling of patent rights, which, in 1868, passed an act requiring any person, before offering for sale a patent right in any county, to submit the patent to the Probate Judge of the county, and make affidavit before said judge that the patent was in force, and that the applicant had the right to sell, and also requiring that any written obligation taken on the sale of such right should bear on its face the words, "Given for a Patent Right."