United States Supreme Court Cases & Opinions

U.S. Supreme Court

Transparent-Wrap Machine Corp. v. Stokes & Smith Co., 329 U.S. 637 (1947)

Transparent-Wrap Machine Corp. v. Stokes & Smith Co.

No. 208

Argued January 7, 8, 1947

Decided February 3, 1947

329 U.S. 637

Syllabus

A patent licensing agreement granted an exclusive license to manufacture and sell in the United States, Canada and Mexico a patented machine under the patents then owned or later acquired by the licensor, subject to a condition that the licensee assign to the licensor any improvement patents applicable to the machine and suitable for use in connection with it.

Held: the inclusion in the license of the condition requiring the licensee to assign improvement patents is not per se illegal and unenforceable. Pp. 329 U. S. 642-648.

156 F.2d 19 reversed.

In a suit for a declaratory judgment and an injunction instituted by a licensee under a patent licensing agreement, the District Court sustained the validity of a condition requiring the licensee to assign improvement patents to the licensor. The Circuit Court of Appeals reversed. 156 F.2d 198. This Court granted certiorari. 329 U.S. 695. Reversed, p. 329 U. S. 648.

Page 329 U. S. 638