Ord, Robert

English

York University, Osgoode Hall Law School

Osgoode Hall Law JournalVolume 2, Number 2 (April 1961) Article 5Rights of a Co-Patentee to Assign or LicenceSections 33(5) and 53(1) of The Patent ActRobert OrdFollow this and additional works at: http://digitalcommons.osgoode.yorku.ca/ohljCommentaryThis Commentary is brought to you for free and open access by the Journals at Osgoode Digital Commons. It has been accepted for inclusion inOsgoode Hall Law Journal by an authorized editor of Osgoode Digital Commons.Citation InformationOrd, Robert. "Rights of a Co-Patentee to Assign or Licence Sections 33(5) and 53(1) of The Patent Act." Osgoode Hall Law Journal 2.2(1961) : 240-243.http://digitalcommons.osgoode.yorku.ca/ohlj/vol2/iss2/5OSGOODE HALL LAW JOURNALRIGHTS OF A CO-PATENTEE TO ASSIGN OR LICENCE-SECTIONS 33(5) AND 53(1) OF THE PATENT ACT. The PatentAct provides that where a patent application is made jointly by twoor more inventors, "the patent shall be granted in the names of allthe applicants".' It provides further that:"Every patent issued for an invention is assignable at law, either as tothe whole interest, or. as to any part thereof, by an instrument Inwriting."2What is the implication of these sections? First, there can beco-ownership of the patent; that is, two or more persons hold thepatent rights as tenants in common. Secondly, a patentee may assignall of his interest or any part of it. Thus, it appears, on the basis ofthese provisions, where two or more persons hold a patent as co-owners, either co-owner may assign, without any restrictions, thewhole or any part thereof, of his interest in the patent.In fact, nowhere in the Act is it stipulated that the rights ofco-owners are restricted inter se, either as to the assignment or thelicencing of their respective interests. However, although the PatentAct leaves the way open for a co-patentee to deal with his rights asgranted by the patent in his own discretion, this note will demonstratethat there are in fact restrictions on his ability to assign or licensehis interest. The nature of the restriction is that he may not partiallyassign his interest, or assign the whole of it to two or more persons,or license at his pleasure.It should be pointed out that these restrictions apply only whena patent is granted originally to two or more persons. If the patentis granted originally to a sole individual, he has complete liberty todispose of his interest in a number of ways. For example, a patenteemay assign a partial share of all the subject matter. In DunnicliffcBagley v. Mallet,3 Byles J. said:"There can be no doubt that an assignment of a patent to several personsin individual shares is good. My Brother Hayes says the assigneeswould in that case take as tenants n common. If so, there can be noreason why they should not take different portions, one, one tenth;another, nine-tenths."41The Patents Act, R.S.C. 1952, c. 203, s. 33(5).2Ibid., s. 53(1).3 (1859), 7 C.B.N.S. 207, at p. 228.4 The effect is 'that a patentee may assign one tenth of his Interest to oneperson and nine-tenths to another, but a patent does not give a right to thepatentee to use his invention or manufacture according to his Invention. Hewould have that right apart from the patent. What the patent confers is aright to exclude others from manufacturing in a particular way and using aparticular invention. Thus it follows that a patentee who holds as a co-ownercould not be held accountable to the other co-owner for any profits derivedfrom his utilization of the patent because the right conferred Is a right toprevent the rest of the world from using the invention (per Romer J. in Steersv. Rogers, [1892J 2 Ch. 13 despite a dicta to the contrary in Hancock v. Bewley(1859), 1 Johns 601; 70 E.R. 559), but as between the co-patentees or co-assignees this right does not arise.Thus a person who holds one-tenth of the whole subject matter wouldhave equal rights to the use of the subject matter as would a person whoholds nine-tenths of all the subject matter.It is submitted that no greater rights would be obtained by receiving agreater portion of the whole subject matter and thus the statement of thelearned judge, it is submitted, is irrelevant.(VOL. 2:240Sometimes a patent may include several things which are intheir nature perfectly distinct and severable. For instance, in aparticular patent, the process claims would be severable from theapparatus claims. In such case, the patentee might assign the processclaims to one person and the apparatus claims to another. Or, again,although it is provided by section 38(1) of the Patent Act that, "apatent shall be granted for one invention only",5 if a patent con-taining more than one invention is allowed to proceed to issue, thesection expressly says that it is not invalid for that reason. Therewould be no reason why the patentee in such a situation could notassign one invention to one person and the other invention to another.Thus a sole patentee has an unfettered discretion to deal withhis rights as granted by the letters patent. There are, however, sug-gestions that a co-owner of a patent does not have such wide rightsof dealing with his interest in the patent. Does he, in fact, not havethe same rights? And, if not, why not? That is, what is the basisfor the restrictions, if any, that are imposed? Why then should not aco-owner have the same rights? That is, what is the basis for theserestrictions that are imposed?The first point to consider, then, is whether these restrictionsmay be inferred and justified by the case law.In Noxon v. Noxon 6 a licence agreement was entered intobetween the patentee of an invention and the defendants. Subse-quently, the patentee assigned the patent to the plaintiff. By assign-ment, the plaintiff assigned an undivided one fourth part of all hisrights, title and interest in the patent to X. By assignment, X thenassigned to the defendants his 6ne fourth interest. It was held"competent for them (the defendants) to put an end to the licenseand proceed to make the thing invented as part-owner of the letterspatent"In Re Hars7ey & Knighton's Patent,8 a patent was granted toHarsley and Knighton. Knighton assigned all his interest in thepatent to Oakes and he further purported to release and dischargeOakes from all "incumbrances, suits, causes of action, or suit claims,or demands whatever which they, the said George Knighton andThomas Harsley, or either of them.. . had, or but for the indenturemight have or have had, against Thomas Haden Oakes". 9 LordRomilly, M.R. held that the purported agreement entered into byKnighton and Oakes was invalid and said that because the patentwas granted to two persons "either of them might use it, but neithercan dispose of the right of the other".' °5 See footnote 1, s. 28 M).6 (1894), 24 O.R. 401.7 Ibid., at p. 406.8 (1869), L.R. 8 Eq. 475.9 Ibid., at p. 475.30 Ibid., at p. 477.1961] Note& 241OSGOODE HALL LAW JOURNALIn Powell v. Head,n' the plaintiffs were the co-owners of thecopyright and right of representation and performance of a dramaticentertainment. The other co-owner was Mrs. L. who had granted alicence to the defendant without the authority of her co-owner. Inhis judgment, Jessel M.R. stated that:"there is no possibility of arguing, in respect of these statutory provisions,that one of the two part-owners of the right or liberty of representing orcausing to be represented could license a third person to represent withoutthe consent of the other part owner or owners".12The effect of these decisions has been commented upon by thetwo leading text writers on patents. Biggar' 3 uses Noxon v. Noxonto support his contention that each co-owner may assign his interestor any part of it. Fox, on the other hand, in his treatise14 adopts acontrary view. He is of the opinion that co-owners are subject torestriction in the assignability and licencing of their interests.It is submitted that Noxon v. Noxon does not sustain the positiontaken by Biggar, namely that a co-owner may assign a portion of hisinterest. In the Noxon case, X assigned his entire interest and thusthe question was not raised as to whether a partial share could beassigned.The latter two cases were cited by Fox in support of his conten-tion that one co-owner cannot grant licences without the consent ofhis co-owners. In the Harsley case, Knighton assigned the whole ofhis interest in the patent to Oakes and did not enter into a licencingagreement. In his judgment, Lord Romilly considered that one co-owner could not licence without accounting to the other. However,it is submitted that his remarks are obiter, as it was not a licencingtransaction (on the facts). It is submitted that the Pow-;l case maybe distinguished on the grounds that the essential nature of a copy-right and a patent are dissimilar, and also that this decision wasdecided on the particular wording of a statute.Thus, although the cases do not support completely the viewtaken by Biggar, neither do they substantiate in toto the positiontaken by Fox.It is submitted, therefore, that the cases do not offer any sup-port for the proposition that a co-owner is limited with respect to theassignability or licencing of his interest. But by examining thefundamental nature of a patent, it is submitted that these restrictionsshould exist. In Mathers v. Green,'5 Lord Cranworth L.C. in consid-ering the nature of a patent right stated that:"the right conferred is a right to exclude alH the world other than thegrantees from using the invention".1611 (1879), 12 Ch. D. 686.12TIbid., at p. 690.30. M. Biggar, Canadian Patent Law and Practice, (Toronto, Burroughs& Company (Eastern) Limited, 1927), p. 65.14H. G. Fox, Canadian Patent Law and Practice, 3rd ed. (The CarswellCompany, Limited), v. 1, pp. 607-610.x535L.J. Ch. 1; 13 L.T. 420; 55 E.R. 599.16 Ibid., at p. 3.[voL. 2:240It follows that the original co-patentees have defined rights whenthe patent is granted. If the whole interest is assigned by one of themto one person only, then the share of the monopoly enjoyed by theoriginal co-owner will be unaffected but if a part only of the subjectmatter is assigned, it follows that their rights as originally conferredwill be diminished. Therefore, there is justification for allowing oneco-owner to assign away his interest in the patent, but not a partialshare. This equally applies to assigning the whole subject matter tomore than one person.17 Take for example the case where one co-owner assigns his interest to two persons. No matter in what pro-portions each of them take, the original co-patentee's share in themonopoly will be reduced to one-third. The same argument is applic-able to licencing.j8 If one of the two co-owners were to grant alicence, the patent rights would be distributed among three persons.19CONCLUSIONThe Patent Act does not, in any of its terms, either expressly orby implication preclude one co-owner from assigning either a partof his share or his whole interest to more than one person or licencingat his pleasure. In addition, there are no cases which directly rejectthe possibility that this may be done.However, the fundamental concept of a patent requires, in orderthat the patent should have its intended effect, that these above-mentioned restrictions should be imposed.ROBERT ORD*RACE AND NATIONALITY RESTRICTIONS IN THE IMMIGRA-TION ACT: IS A REVISION OVERDUE? Canada's position in aCommonwealth of Nations embracing Anglo-Saxon as well as Afro-Asian nations is one of challenge. We have the singular opportunityto demonstrate that we can adjust to an international society ofmulti-racial equals within the Commonwealth and without. In thistime of peril, we must re-assess our immigration policy. It must beconsistent with the ideals to which we profess to adhere, since weoffer these ideals to the emerging nations as alternatives to theCommunist route to national maturity.17 Dr. Fox suggests that the inherent nature of a patent right wouldprohibit one co-owner from dealing with his interest so as to diminish theshare in the monopoly enjoyed by the co-owner.18 A license prevents that from being unlawful which, but for the license,would be unlawful.19 It is suggested, that one co-owner may grant an exclusive licence,reserving in himself no interest in the patent. In such case, the share of themonopoly enjoyed by the other co-owner would not be reduced since thelicensee would in effect, be stepping into the shoes of his licensor (co-owner)for the duration of the period.*Mr. Ord ds in the Second Year at Osgoode Hall Law School.1961] Notes 243

Rights of a Co-Patentee to Assign or Licence Sections 33(5) and 53(1) of The Patent Act

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Rights of a Co-Patentee to Assign or Licence Sections 33(5) and 53(1) of The Patent Act

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