Problems Involved in the Assignment of Patents and Patent Rights
![handle is hein.journals/ottlr1 and id is 44 raw text is: PROBLEMS INVOLVED IN THE
ASSIGNMENT OF PATENTS AND
PATENT RIGHTS *
Gordon F. Henderson, Q.C. **
The author deals with numerous aspects of joint ownership and assignment of
patents. Particular attention is given to practical problems that may arise in connection
with each aspect taking into account statutory and common-law considerations. The
author also discusses the hazards inherent in some areas due to the unsettled state
of the law.
I. INTRODUCTION
This paper is primarily concerned with problems associated with the
assignment of patents and rights arising from patents. These problems include
a consideration of the law of contract in three different aspects.
The first aspect relates to assignments applicable to a patent and includes
a consideration of certain rights incident to the ownership of a patent, the
second to assignments of the benefit of a contract or licence given by a
patentee to another, and the third to the rights of the parties to the contract
of sale and of third persons in respect of the sale of an article covered by
an issued patent.
Patents are governed as to ownership, transmission of ownership and
devolution by the ordinary rules applicable to choses in action, 1 except
insofar as special provision is made for inventions in section 52 and patents
in section 53 of the Patent Act. 2 A patent is a chose in action. 3 The rights
arising under a contract whether assignment, licence or sale of a patented
article are also choses in action. The ordinary rules of construction of
* A paper delivered to the 40th Annual Meeting of the Patent and Trademark Institute of
Canada on September 30, ,1966. Printed by permission of the Honorary Secretary-Treasurer.
** B.A., 1934, University of Toronto. Member of the Ontario and Quebec Bars; Fellow,
Patent and Trade Mark Institute of Canada.
1 In Tor-dngton v. Magee, [1902] 2 K.B. 427, at 430, Channel, J., defined a chose In action as
follows : 'Chose in action' is a known legal expression used to describe all personal rights of property
which can only be claimed or enforced by action and not by taking possession. See generally the
cases referred to in argument in Colonial Bank v. Whinney, 11 A.C. 426, 429 (1886), In support of
the proposition that 'Things in action' are things to get possession of which an action must be
brought.
2 CAN. REV. STAT. c. 203 (1952) [hereinafter cited Patent Act]. Although the common law did
not recognize an assignment of a chose in action, equity recognized and enforced the assignment of
choses in action generally. Under § 53 of the Patent Act, reproduced note 8, injra, patents as chose$
in action are assignable in law.
8 Steers v. Rogers, [1893] A.C. 232, 235; British Mutascopo v. Homer, [1901] 1 Ch. 671, 18 I-
Pat. Cas. 177; Edwards v. Picard, [1909] 2 K.B. 903 (C.A.).](ViewImageLocal?handle=hein.journals/ottlr1&div=8&collection=&method=preview&ext=.png&size=3)
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Problems Involved in the Assignment of Patents and Patent Rights
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