FOR OBTAIN-
ING LETTERS

PATENT.

-and assist in preparing the specification; -and personally shew the process of manufacture;

--and prepare plans, models, &c.

the said invention as will be required, in case letters patent, for the sole use of the said invention within the United Kingdom, shall be applied for and obtained, as is hereinafter-mentioned; and shall and will, if required, aid and assist, so far as he is able, in preparing such specification as aforesaid; and also, that he, the said A. B., shall and will, personally exhibit and shew to the said C. D. and E. F., all the processes and details of the said new method of manufacture, so and in such manner as may enable them fully to understand and practise the said several processes and details; and shall and will, at the costs and charges of him, the said A. B., prepare and furnish, or cause to be prepared and furnished, all such plans, drawings, models, and other things, as may be necessary for fully instructing the said C. D. and E. F. in the said new method of manuThat C. D. and facture, and all processes and details thereof: THAT the said C. D. and E. F. shall, within from the date and execution of these presents, (in case the said A. B. shall then have communicated the nature and details of the said invention, at the time and in manner aforesaid), determine whether they will or will not use and employ the said invention, and of such their determination give notice in writing, under their hands, to the said A. B., in case he shall be then living, and the place of his abode shall be known to the said C. D. and E. F.: THAT, in case the said C. D. and E. F. shall determine not to use and employ the said invention, then that they, or either of them, shall not nor will disclose, communicate, or reveal the nature of the said

E. F. shall accept or reject the invention within a limited time.

That if C. D.

and E. F. re

ject the inven

tion, they shall

not disclose or use it.

must put the public in possession of the secret in as ample and beneficial a way as the patentee himself uses it. The title to the patent, and the description in the specification must agree, and the specification must be perfectly free from ambiguity. It is unnecessary, in a work of this nature, to go further into the subject of preparing specifications, as it never falls to the conveyancer to prepare such instruments, or to investigate their sufficiency as a matter of title. The principal cases and the results will be found succinctly stated in Smith on Patents, sect. vii. The most recent cases on specifications, are Russell v. Cowley, 1 C. M. & R. 864; Derosne v. Fairie, 2 C. M. & R. 476; S. C. 5 Tyr. 193. Of course, in such an agreement as the present, it is necessary to stipulate that the inventor shall aid in preparing the specification.

invention, or any part thereof, to any person or persons whomsoever, or at any time or times hereafter make any use whatsoever of the said invention, or any part thereof (d): THAT in case the said C. D. and E. F. shall determine to use and employ the said invention, or any part or parts thereof, then, that the said C. D. and E. F. shall, as soon as conveniently may be after such determination, at their own costs and charges, and in their own names, apply for, and use their best endeavours to obtain letters patent, under the great seal of the United Kingdom, for the sole use, benefit, and advantage of the said invention, or of such part or parts thereof as they shall think fit, within the said United Kingdom, and the colonies and plantations thereof, or for such part or parts of the said kingdom, colonies, and plantations as they shall think fit, and for the term or terms for which such letters patent are usually granted (e): THAT, in case such letters patent as are hereinbefore mentioned shall be obtained, the said A. B. shall and will, if required by the said C. D. and E. F., or either of them, during the space of weeks from the date of the said letters patent, personally teach, instruct, inspect, aid, and assist all and every the workmen,

secret.

;

(d) In Newberry v. James, 2 Mer. 446, the court refused to in- Covenant to terfere by injunction to prevent the violation of an agreement of keep invention which, from the nature of the subject, there could be no decree for a specific performance, namely, an agreement not to impart the secret of an invention, which had been the subject of a patent long since expired. In Williams v. Williams, 3 Mer. 157, Lord Eldon doubted whether a contracting party was entitled to the protection of the court, in the exercise of its jurisdiction, to decree the specific performance of agreements, by restraining a party to the contract from divulging the secret he has promised to keep. But, at any rate, it is apprehended, that the inventor might obtain damages in an action for a breach of the covenant not to disclose the secret; and in the present state of the law, such a covenant should always be inserted. It may be prudent to fix a sum, as liquidated damages, for a breach of the agreement. (See ante, page 134, note (r) ).

(e) On the method of obtaining a grant of letters patent, see Smith on Patents, ss. v. vi. and Appendix ii. to the work, 1-4; see, too, Knapp's Reports, Appendix i. ii. iii.

FOR OBTAIN-
ING LETTERS
PATENT.

-and not in

the manufacture unless required.

servants, and others who shall be named for that purpose by the said C. D. and E. F., or one of them, in the said new method of manufacture, and all the processes and details thereof, and shall and will use his best endeavours to render such workmen, servants, and others, adept and skilful in the said method of manufacture, and all the processes and details thereof (f); and that after the said termeddle with letters patent shall be obtained, the said A. B. shall not and will not (unless required as aforesaid) in anywise interfere or intermeddle with the said manufacture for which the said letters patent shall be granted, but that the same shall be carried on and conducted solely by the said C. D. and E. F., their executors, administrators, licensees, or assigns; THAT the said C. D. and E. F., their executors or administrators, shall have full power and authority to grant licenses (g) for the use of the said invention, upon such terms as they shall think fit, and to assign and grant the said letters patent, and the benefit thereof, and of the said invention, for such consideration, and for such terms and upon such conditions as to them shall seem meet, and so make any such disclaimer of or alteration in the title or the specification, as shall be allowable by law (h), and to apply for and obtain any extension or prolongation (i) of the

That C. D. and

E. F. may grant licenses ;

-and assign the patent;

--and disclaim part of, or alter,

the specifica. tion;

(f) It is of great importance to procure the personal assistance of the inventor in instructing the workmen; and, therefore, this clause should always be inserted.

(g) As to licenses for the use of patent inventions and assignments of letters patent, see the notes, infra, on the precedents of those instruments.

(h) By the statute 5 & 6 Will. 4, c. 83, s. 1, any person having obtained letters patent for any invention, may enter a disclaimer of any part of his specification, or a memorandum of any alteration therein; and such disclaimer or memorandum, when filed as mentioned in the act, is to be deemed part of the original letters patent or specification.

(i) The statute 5 & 6 Will. 4, c. 83, enables the crown, in manner therein mentioned, to grant a prolongation of the term of letters patent, such prolongation not to be for more than seven years beyond the first fourteen.

term of the said letters patent or any of them, and generally to act in regard to the said letters patent, and the said invention, in every particular as if they had originally invented the new method of manufacture without any communication with the said A. B., or any other person: THAT the said A. B. shall receive from the said C. D. and E. F., their executors or administrators, one moiety or equal half part of the net profits (k) to be derived from the use of the said invention by the said C. D. and E. F., their executors or administrators, and also a moiety or equal half part of all annual or other sums of money or considerations whatsoever, to be paid or rendered in respect of any licenses for the use of the said invention, or any part thereof, which shall be granted by the said C. D. and E. F., their executors, administrators, or assigns, and also a moiety or equal half part of all annual or other sums of money or considerations whatsoever to be paid or rendered by any assignee or assignees of the said letters patent or invention, or of any part, share, or interest therein: THAT all costs, charges, losses, damages, and expenses to be incurred in respect of the said letters patent, and the specification of the said invention, or in respect of the carrying on of the said manufacture, or of resisting any infringement of the said letters patent (1), or in respect of any act, matter, or thing whatsoever, in anywise relating to the premises, shall be wholly paid, borne, and sustained by the said C. D. and E. F., their executors, administrators, and assigns: PROVIDED ALWAYS, and it is hereby agreed and declared, between and by the parties to these presents, that no matter or thing in these presents contained, shall preclude or prevent the said A. B., his executors, administrators, or assigns, from using or employing the said invention in any way he or they shall think proper, in any country, place, or kingdom whatsoever, to which

(*) This provision constitutes a partnership between the parties; see infra, note (m).

(7) As to the remedy for the infringement of letters patent, and the means of obtaining their repeal, see Smith on Patents, ss. viii. ix.; Crossley v. Beverley, 1 Russ. & My. 166; S. C. 9 B. & C. 63; Stury v. De la Rue, 5 Russ. 322; Minter v. Williams, 5 Nev. & Man. 647; Fisher v. Dewick, 4 Bing. N. C. 781.

FOR OBTAIN

ING LETTERS
PATENT.

A. B. not to be
deemed a part-

ner with C. D. and E. F.;

Communion of profit constitutes partnership.

Under what circumstances a partnership is not constituted.

the letters patent to be obtained by the said C. D. and E. F. shall not extend; PROVIDED ALSO, and it is hereby agreed and declared, between and by the parties to these presents, that the said A. B. shall not be deemed, taken, or considered to be in anywise the co-partner (m) of the said C. D. and E. F., or of either of them, or have any right

(m) In framing agreements of the nature of that in the text, considerable difficulty is experienced, because the capitalists, who are to work the patent, very seldom intend to admit the inventor as their partner in the business; and yet do not choose to yield him any other remuneration than a proportion or share of the net profits (if any), to be derived from the use of the invention. But an agreement to share the net profits of an undertaking, although one party alone is to bear the losses, constitutes a partnership in it. (Collyer's Law of Partnership, 8, and ch. 1. sect. 11; Gilpin v. Enderbey, 5 B. & Ald. 954; Bond v. Pittard, 3 Mee. & Wels. 357). And although it is certain, parties may stipulate, that, in spite of the communion of profits, there shall, inter se, be no partnership; yet this cannot affect the right of third persons to treat them and to deal with them as partners. (Waugh v. Carver, 2 H. Bl. 325 ; Gilpin v. Enderbey, Bond v. Pittard, ubi supra; Collyer's Law of Part. ch. 1, sect. 11). And it is decided, that there may be a partnership in a patent. (Lovell v. Hicks, 3 You. & Col. 472, 481; Ridgway v. Philip, 1 Cro. Mee. & Ros. 415).

Hence, when the inventor is to be paid by a share of the net profits, the only way in which the capitalist can be protected, is by a stipulation, that the inventor shall lose all interest in the patent, if he in anywise attempt or assume to act as a copartner. This is no hardship on the inventor, because he expressly agrees not to act as a partner; and a breach of that agreement must necessarily be intentional and fraudulent.

It may be observed, that a copartnership is not constituted by an agreement to share the gross profits of a concern. (Dry v. Boswell, 1 Camp. 330; nor by one person being the mere servant or agent of the other, and receiving a share of profits in lieu of wages; (Collyer's Law of Part. 14-20); nor by a person receiving interest on money lent, or an annuity not varying with the profits); Grace v. Smith, 2 Sir W. Bl. 99); although the receipt of an annuity determinable on the ceasing of the trade, or varying with the profits, makes the annuitant a partner. (Bloxam v. Pell, 2 W. Bl. 999; Ex parte Wheeler, Buck, 48). Of course, an agreement, that the inventor of a patent should receive a fixed sum for each article made, or a sum varying with the market price, would not constitute him a partner. It is, however, difficult to enter into an agreement of this kind till the nature of the invention is made known.