i. UNIVERSITY OF CALIFORNIA LOS ANGELES SCHOOL OF LAW LIBRARY §tiim §^imi fm inknim. THE LAW AND PEACTICE KELATIXG TO Letters Patent for Inventions. Mitir g^pmlrtt■ COXTAIXIS'G THE PATENTS, DESIGNS AND TRADE MARKS ACT, 1883, AND THE PATENT, TRADE MARKS, DESIGNS AND PRIVY COUNCIL RULES. BY THOMAS TERRELL, F.C.S., BAEEISTER-AT-LA-W. LONDON : HENRY SWEET, 3, CHANCERY LANE, Sab iuljli4)cr. 1884 LONDON : PRINTED BY C. F. EOWOETH, BEEAm'S BUILDINaS, CHANCTCRY I.ANK — K C. PREFACE. I AM aware that in the following pages I have ventured to express strongly my views as to the effect of some of the most important provisions of the new Patent Act, and that the conclusions I have come to are at variance with the opinions of some of the leading living authori- ties on patent law. I regret that on carefully reconsider- ing what I have written, I am unable to so alter the opinions which I have given as to j)lace myself in accord with those to whose exposition of the law it is evident far greater weight should be given than to my own. The principal section as to the effect of which this difference of opinion has arisen is section 5, and the question is, does that section abolish patents for com- munications from abroad ? The history of the grant of letters patent for communicated inventions may be thus shortly stated. The Common Law consideration for the grant of letters patent was the introduction of a new manu- facture ivithin this realm. The consideration was certainly not the invention of a new manufacture, except in so far that a man who invented and put in practice an invention VI PREFACE. might be said with justice to introduce the new manufac- ture. (See In re Hastings' Patent, In re Mailing's Patent, and Darcy v. Allen.) The Statute of Monopolies defined the royal prerogative to grant patents, limiting it by sec- tion 6 to the grant for fourteen years or under '' of the sole working or making of any manner of new manu- factures within this realm, to the true and first inventor and inventors of such manufactures, which others at the time of making such letters patent and grants shall not use, &c." This was intended to be nothing more or less than a declaration of the Common Law ; and so it was held in Edgeherrg v. Stephens and in a great number of cases which are hereinafter cited ; and thus it was that after the Statute of Monopolies the introduction of a new manufacture was still the primary consideration for the grant. Afterwards came the Patent Law Amend- ment Act, 1852, which left the law as regards com- municated inventions in precisely the same position that it was before, except that the applicant had to declare whether he claimed for an original invention or for a communicated invention. Li the Act of 1852 it is not required that the inventor should declare that '' he is the true and first inventor." In Milligan v. Marsh, Vice- Chancellor Wood, afterwards Lord Hatherley, held that a person declaring himself a true inventor, when, in truth, the invention was communicated to him from abroad, made a false suggestion, and that the patent was void ; and this, indeed, is mere common sense. The PREFACE. VU strict view with which this subject should be regarded may be gathered from the decision of Sir George Jessel in the Court of Appeal in Marsden v. The Saville Street Co. (L. E., 3 Ex. D. at p. 205.) When the Act of 1883 was passed, some totally new provisions were adopted, and it was enacted by sect. 5, sub-sect. 2, that in every case the applicant must declare that he is the first and true inventor of an invention. This may have been an oversight, or it may have been intentional. I am rather inclined to think it was designed to abolish imported inventions ; because we find only one form of declaration provided in the Act, which will clearly not do for an imported invention. Sect. 46 defines the word '' invention" as meaning any manner of new manufacture within sect. 6 of the Statute of Monopolies. As soon as the Act was passed, a great deal of discussion arose as to whether or not communi- cated inventions were abolished by sect. 5. The opinion seemed to prevail that this form of patent could not thenceforth be granted, and that the definition of the word '' invention" did not empower a man in possession of a communicated invention to make a declaration (equiva- lent to an afiidavit) that he was the true and first inventor. Of course, patent agents, who were vitally interested, strongly objected to the change which was supposed to have been made in the law ; and Mr. Chamberlain, I imagine, must have yielded to their representations, for Vlll PKEFACE. we find in the Board of Trade Rules, which were issued late in December, a form of declaration which is very- remarkable. It runs as follows: — ''I, , do solemnly and sincerely declare that I am in possession of an inven- tion for , which invention has been communicated to me from abroad by , that I claim to he the true and first inventor thereof ^ &c., &c." In other words, ''I am not the inventor, but still, it being necessary under the Act to declare that I am the inventor, I make the necessary declaration." All must regret that Sir George Jessel is not now on the Bench to construe this document, and to give his judgment as to the power of the Board of Trade to institute any such form of declaration. I can only say that, in my opinion (worthy of very little considera- tion, no doubt), this form of declaration is nonsense, and that I believe the Courts will hold that it is altogether ultra vires. It bases its existence upon the construction given in the Act of the word ''invention" and an endeavour to apply thereto the judicial decisions on the words "first and true inventor within this realm" in the Statute of Monopolies. If the definition had been, ''the words 'first and true inventor' shall have the meaning which has been applied to the same words under the Statute of Monopolies," the matter might have been different ; but even then it is difiicult to see how, without overruling it, the decision in Milligan v. Marsh would have been got over. It is to be hoped that before long the point will have received judicial decision, as PKEFACE. IX otherwise a vast number of patents will be in some jeopardy of being at any moment held to be invalid. I trust that I shall be pardoned for having perhaj)s too boldly expressed myself. I respectfully submit these my opinions, and I admit that it is very probable that in many instances they are erroneous. I have to thank my friend Mr. H. Gr. Watts, of 3, Harcourt Buildings, Temple, for many valuable sug- gestions in the preparation of this work, and especially for the Index to it. THOMAS TERRELL. New Court, Temple, 8M Jan. 1884. CONTENTS. PAGE Preface v Table of Cases xvii THE LAW OF PATENTS. IXTRODUCTIOK 1 ♦ CHAPTER I. The Patentee 5 (First Inventor ; First Importer.) CHAPTER II. The Consideration 9 (The Actual Inventor; the First Introducer.) CHAPTER III. The Consideration {continued) ^ . . 22 (A New and Useful Invention.) CHAPTER IV. The Consideration {continued) 52 (The Specification ; the Title ; the Provisional Specifica- tions ; the Complete Specification ; the Claims.) Xll CONTENTS. CHAPTEE V. PAGE Amendment of Specifications 90 (Memorandum of Alteration; Disclaimer.) CHAPTER YI. Opposition to the Gkant 99 CHAPTER VII. The Geant 102 (The Address ; tlie Recitals ; the Grant ; the Prohibition ; the Conditions ; the Construction of the Grant. ) CHAPTER YIII. The Devolution of a Patent 112 (By Operation of Law ; by Assignments j by the Grant of Licences.) CHAPTER IX. Extension of Term of Patent 123 (Jurisdiction of the Privy Council.) CHAPTER X. CoNriRMATION 140 CHAPTER XI. Remedies of the Patentee and of the Public 141 (Action for Infringement ; Parties.) CONTENTS. Xni CHAPTER XII. PAGE The Cause of Actiox 14,5 (Infringement ; by Making ; by Using ; by Selling.) CHAPTEE XIII. The Eemedy 167 (Injunction ; Damages ; Account of Sales and Profits.) CHAPTER XIY. Revocation 181 CHAPTER XV. IXTERNATIONAL AXD CoLOXIAL AeRANGEMENTS 185 PRACTICE. CHAPTER I. AcTiox FOR Ixfrixgement 187 CHAPTER II. Parties 188 CHAPTER III. IXTERLOCrTORY IxjUNCTION 190 CHAPTER IV. Statement of Claim 193 XIV CONTENTS. CHAPTEE V. PAGE Particulars of Breaches 194 CHAPTEE VI. Statement of Defence 199 CHAPTEE VII. Particulars of Objections 201 CHAPTEE VIII. Interrogatories 210 CHAPTEE IX. Inspection 216 CHAPTEE X. The Trial 221 CHAPTEE XI. Questions for Court and Jury 234 CHAPTEE XII. Certificates 239 CHAPTEE XIII. Practice on Petition for Eevocation 246 CHAPTEE XIV. Action for Injunction to Eestrain Threats 249 CONTENTS. XV FAQB FOEMS OF PEACTICAL PROCEDUEE 251 APPENDIX. Patents, Designs and Trade Maeks Act, 1883 269 Patents Eules 302 Tkade Mabks Eules 325 Designs Eules 348 Peiyy Council Eules 358 INDEX 361 TABLE OF CASES. A. PAGE Adair's Patent, In re (1881). L. E. 6 App. Cas. 17G 128, 133 Adair v. Young (1879), L. E. 12 Ch. D. 13 162, 174 Adams V. North British Eail. Co. (1873), 29 L. T.E.N. S. 367. . 189 Adamson's Patent, In re (1856), 6 De G. M. & G. 420 ; 25 L. J. Ch. 456 ; 4 W. E. 473 [ 99 Alcock V. Cook (1829), 5 Bing-. 340 104 Allan's Patent, In re (1867), L. E. 1 P. C. 507 ; 4 Moo. P. C. C. N. S. 443 127 AUen V. Eawson (1845), 1 C. B. 551 (at p. 574) 13, 33 Ai-kwi-ight V. Nightingale (1785), 1 Web. P. C. 60 (at p. 61); Dav. P. C. 37 72 Aube's Patent, In re (1854), 9 Moo. P. C. C. 43 135 AveUng r. Maelaren (1881), L. E. 17 Ch. D. 139, n 206 Axmann v. Limd (1874), 22 W. E. 789; L. E. 18 Eq. 330; 43 L. J. Ch. 655; 3 L. T. Eep. N. 8. 119 117 B. Bacon r. Jones (1839), 4 My. & Cr. 433 (at p. 438) 175 V. Spottiswood (1839), 1 Beav. 382 (at p. 387) 180 Bailey v. Eoberton (1878), L. E. 3 App. Cas. 1055 ; 38 L. T. Eep. N. S. 854; 27 W. E. 477 63, 155 Bainbridge v. Wiglev (1810), Higgins' Digest, 155 ; Par. Eep. Pat. 1829, p. 197 ; 18 Eep. Arts. 127 ; 1 Carp. P. C. 270 ; Higgins' Digest, 340 59, 105 Baird v. Monies' Patent Earth Closet Co. (1881), L. E. 17 Ch. D. 139, n 206 Bancroft v. Warden (1873), Eomilly's Notes to Cases, 103 147 Barber v. Walduek (1823), 1 Carp. P. C. 438; 1 C. & P. 567, reported under name of Barber v. Shaw ; Holroyd Pat. 60 ; 1 Web. P. C. 126 10 Barker v. Grace (1847), 1 Ex. 339 ; 17 L. J. Ex. 122 71 Barrett r. Yernon (1876), 45 L. T. Eep. N. S. 755 ; 25 W. E. 343 155 Bateman v. Gray (1853), Mac. P. C. 93 (at p. 102) 156 Bate's Patent, In re (1836), 1 Web. P. C. 739, n 130 Bates & Eedgate, Ex parte (1869), L. E. 4 Ch. 577 ; 38 L. J. Ch. 501 ; 17 AY. E. 900 ; 21 L. T. Eep. N. S. 410 16, 17 Batley v. Kynock (1874), L. E. 19 Eq. 91 (at p. 231) .... 194, 218 Beard v. Egerton (1846), 3 C. B. 97 ; 10 Jnr. 643; 15 L. J. C. P. 270 20 T. b XVlll TABLE OF CASES. PAGE Beard v. Egerton (1849), 19 L. J. C. P. 36 (at p. 38) ; M. Dis. 75 ; 8 C. B. 16.5 ; 13 Jiir. 1004 67, 237 Bentley r. KeigWey (1844), 7 M. & G. 652 ; 1 D. & L. 944 ; 8 Scott, N. R. 372 ; 13 L. J. C. P. 167 196, 204 Besseman r. AVright (1858), 6 W. P. 719 116 Betts' Patents, In re (1862), 1 Moo. P. C. C. N. S. 49 ; 9 Jnr. N. S. 137 ; 11 ^V. R. 221 ; 7 L. T. Rep. N. S. 577 ; 1 N. R. 137 127, 129, 132, 135 Betts V. De Vitre (1864), 11 L. T. Rep. N. S. 533; 11 Jnr. N. S. 9; 5 N. R. 165; 34 L. J. Ch. 289. . 178, 187, 244 V.-C. W. (1864), A. 119 176 (1865), 12 L. T. Rep. N. S. 51 ; 34 L. J. Ch. 291 176, 177 (1868), L. R. 3 Ch. 441 ; 37 L. J. Ch. 325 ; 18 L. T. Rep. N. S. 165; 16W.R.529.. 43, 144, 189 (1873), L. R. 6 H. L. 319 (at p. 321); 21 AV. R. 705 177, 187 V. Gallais (1870), L. R. 10 Eq. 392; 18 W. R. 945 ; 22 L. T. R. N. S. 841 180 V. Menzies (1857), 3 Jnr. N. S. 357 (at p. 358). .41, 42, 169 (1859), 1 Ell. & Ell. 990 ; 28 L. J. Q. B. 361 ; 5 Jnr. N. S. 1164 36 (1862), 10 H. L. Cas. 117; 31 L. J. Q. B. 233 ; 9 Jur. N. S. 29 ; 11 W. R. 1 ; 7 L. T. Rep. N. S, 110 42, 43, 44, 69, 72 V. Neilson (1868), L. R. 3 Ch. 429 ; 37 L. J. Ch. 321 ; 18 L. T. Rep. N. S. 159; 16 W. R. 524. . 40, 43, 77 ■ (1865), 6 N. R. 221 ; 12 L. T. Rep. N. S. 489 ; 13 W. R. 804 189 (1871), L. R. 5 H. L. 1 ; 40 L. J. Ch. 317 ; 19 W. R. 1121 226 V. Wilmott (1871), L. R. 6 Ch. 239 ; 19 W. R. 369 ; 25 L. T. Rep. N. S. 188 120, 148, 165, 166, 174, 191, 227 Bewley v. Hancock (1856), 6 De G. M. & G. 391 (at p. 402) ; 2 Jnr. N. S. 289; 4 W. R. 334 26 Bickford v. Skewes (1837), 1 AVeb. P. C. 211 ) , , ^,^. ,^^ (1838), nVeb.P. C. 211 J^^'^l'--^^^^ •••• ^^" (1841), 1 Q. B. 938 ; 1 G. & D. 736 ; 6 Jnr. 167; lOL.J. Q. B. 302; 1 AVeb. P. C. 214 (at p. 218). .66, 83, 237 Bircot's case (15 Eliz.), 3 Inst. 184 ; 1 AVeb. P. C. 31, n 27 Blake's Patent, In re (1873\ L. R. 4 P. C. 535 ; 9 Moo. P. C. C. N. S. 373 135 Bloxham r. Elsee (1825), 1 C. & P. 558 (at p. 565) ; Ry. &Moo. 187 ; ] Carp. P. C. 434 I 51, 237 (1827\ 1 AYeb. P. C. 132, n. ; 6 B. «& C. 169 ; 9 Dow. & Ry. 215 ; 1 Carp. P. C. 440 10, 56, 113, 143, 188 Bodmer's Patent, In re (1853), 8 Moo. P. C. C. 282 ; 6 M. D. 114 135, 1 36 Booth r. Keniiard (1856), 1 Ilnrl. & Norm. 527 ; 26 L. J. Ex. 23 ; 3 Jur. N. S. 21 ; 28 L. T. Rep. 160 ; 5 W. R. 85 25 TABLE OF CASES. XIX PAGE Booth r. Keiinard(1857), 2 Hurl. & Norm. 84; 26 L. J. Ex. 305 ; 5 W. E. 607 ; 29 L. T. Eep. 163 72 Boulton V. BuU (1795), 2 H. Blac. 463 (at p. 491) ; Dav. P. C. 162 ; 1 Carp. P. C. 117 19, 22, 23, 39, 49, 76 V. AVatt (1795), 2 H. Bl. 468 26 V. Key worth (1857), 7 Ell. & Bl. 725 ; 3 Jur. N. 8. 817 ; 5 AV. P. 686 ; 29 L. T. Pep. 194 33 V. Moore (1815), 2 Coop. C. P. 56, u 216, 217 (181G), Dav. P. C. 361 (at p. 400) 81, 84, 155 r. Phnm (1856), 11 Ex. 718 (at p. 739) 27, 234 Bovill r. Crate (1865), L. P. 1 Eq. 388 (at p. 391) 176 V. Smith (1866), L. P. 2 Eq. 459 212 r. Goodier (1866), L. P. 2 Eq. .195; 35 Beav. 427; 35 L. J. Ch. 432 233 V. Hadlev(1864), 17 C. B. N. 8. 435 ; 10 L. T. Pep. N. S. 650 ; 4N. P. 464 240 Bower v. Hodges (1853), 22 L. J. C. P. 194 (at p. 198) ; 13 C. B. 765 ; 17 Jur. 1057 ; 1 Ch. P. 807 119 Bowman v. Taylor (1834), 2 A. & E. 278 ; 4 N. & M. 264 114 Braham v. Hardeastle (1789), Hoboyd, 81 ; 1 Carp. P. C. 168; 1 AVeb. P. C. 44, n ' 47, 48 Bridson's Patent, In re (1852), 7 Moo. P. C. C. 499 138 r. Benecke, 1 2 Beav. 1 ; 34 Lond. Jour. 295 175, 191 V. M'Alpme (1845), 8 Beav. 229 ; L. P. 4 Ch. 289. .170, 191 Brook V. Aston (1857), 8 El. & Bl. 478 (at p. 485) ; 4 Jur. N. K 279 ; 27 L. J. Q. B. 145 ; 6 AA^ P. 42 30, 31 Brooks r.Pipley(1831),2Lond. Jour.C. 8. 35; AVeb. P.C. 102. . 228 Brunton v. Hawkes (1821), 4 B. & Aid. 541 (at p. 550) ; 1 Carp. P. C. 405 33, 48, 56, 57, 104 Bulnois r. Mackenzie (1837), 4 Bing. N. C. 432 203 Butler's case (about 1680), Vent. 344 183 Bush V. Pox (1852), Macrorv's P. C. 152 (at p. 164) ; 23 L. J. Ex. 257 ../. 30 (1856), 5 H. L. Cas. 707; 2 Jur. N. 8. 1029; 25 L. J. Ex. 251 ; Macrory's P. C. 178 30, 72 C. Caldwell v. Vanvlissingen (1851), 9 Ha. 415; 16 Jur. 115; 21 L. J. Ch. 97 144, 148, 161, 165 Campion v. Benyon (1821), 6 B. Mo. 71 ; 3 B. & B. 5 55 Canham r. Jones (1813), 2 Ves. & B. 218 107 Cannington v. Nuttall (1871), L. P. 5 H. L. 205 ; 40 L. J. Ch. 739 33, 153 Cardwell's Patent, In re (1856), lOMoo.P. C. C. 488 (at p. 490) . 126 Carpenter v. 8mith (1841), 1 AA^eb. P. C. 530 (at p. 538). ,33, 36, 47 (1842), 1 AA^eb. P. C. 268, n 203 V. AA^alker (1842), 1 AA'ob. P. C. 268, n 205 Carr's Patent, In re (1873), L. P. 4 P. C. 539 130 Chambers v. Crichlev (1864), 33 Beav. 374 117 Chanter v. Dewhui-st (1844\ 12 M. &AA^ 828 ; 13 L. J. Ex. 198 113, 119 12 XX TABLE OF CASES. PAGE Chanter tJ. Jolinson (1845), 14 M. & W. 408 (at p. 411); 14 L. J. Ex. 289 114 V. Leese (1838), 1 Web. 295; 4 M. & W. 295; 1 H. & H. 224 116, 119 Chollett V. Hoffman (1857), 7 Ell. & B. 686 ; 26 L. J. Q. B. 249 ; 3 Jur. N. S. 935; 5 W. E. 573; 29 L. T. Eep. 158 ....121, 122 Clarke's Patent, In re (1870), 7 Moo. P. C. C. N. S. 255; L. E. 3 P. C. 421 132 Clarke v. Adie (1875), L. E. 10 Ch. Ai^p. Cas. 667 (at p. 674) ; 45 L. J. Ch. 228 149 (first appeal), 33 L. T. Eep. N. S. 295 149 (1877), L. E. 2 App. Cas. 315 ; 46 L. J. Ch. 585 ; 36L.T.Eep.N.S.923;26W.E.45 ..72,88,151,227 (second appeal) (1876), L. E. 3 Ch. D. 134 (at p. 144) ; 24 W. E. 1007 116 (1877), L. E. 2 App. Cas. 423; 46 L. J. Ch. 598 ; 37 L. T. Eep. N. S. 1 ; 46 W. E. 47 68 ■ r. Ferguson (1859), 1 Giff. 184 191 Clothworkers of Ipswich case (1615), Godbolt E. 252 (at p. 253) ; 1 EoU. E. 4 ; 1 Web. P. C. 6 7, 18 Cochrane v. Smethm-st (1816), Davy's P. C. 354 ; 1 Stark. 205 . 55 CoUard v. AUison (1839), 4 My. & Cr. 433 191 Cook V. Pearce (1844), 8 Q. B. 1054; 8 Jur. 499; 13 L. J. Q. B. 189 56 Cornish v. Keene (1835), 1 Web. P. C.501 (at p. 507); 2 Carp. P. C. 314 11, 13, 36, 47, 51, 237 ■ (1837), 2 Bing. N. C. 570; 4 Scott, 337; 2 Hodges, 281 ; 6 L. J. C. P. 225 ; 1 Web. P. C. 513 ; 2 Carp. P. C. 371 ; 6 Eep. Ai-ts. 4th Series, 102 37, 237 Crane v. Price (1842), 1 Web. P. C. 393 (at p. 411) ; 4 Y. & G. 580 ; 5 Scott, N. E. 338 ; 12 L. J. C. P. 81 ; 2 Carp. P. C. 669 ; 18 Eep. Ai-ts. 4th Series, 102 33, 50 Croll V. Edge (1850), 9 C. B. 479 ; 14 Jur. 553 ; 19 L. J. C. P. 261 ; M. Dig. 194 59, 148 Crompton v. Ibbertson(1828), 1 Web. P. C. 83 ; Dan. & Lloyd, 33 ; 1 Carp. P. C. 460 83 Crosskill V. Every (1848), 10 L. T. E. 459 169 Crossly v. Beverley (1829), 9 B. & C. 62 ; 1 Web. P. C. 106, 112, 119 ; 3 C. & P. 513 ; Mo. & Mai. 283 ; 1 Euss. & My. 166 65, 73, 81, 176 V. Derby Gas Co. (1834), 4 L. J. Ch. 25 ; 1 Web. P. C. 119 (at p. 120) 176,179 V. Dixon (1863), 10 H. L. Cas. 293 ; 9 Jur. N. S. 607 ; IIW.E. 716; 8 L. T. Eep. N. S. 260 ; IN. E. 540; 32 L. J. Ch. 617 117, 120 V. Potter (1853), Macrory, P. C. 240 22, 58, 77 V. Stewart (1863), 1 N. E. 426 210 r. Toniey (1876), L. E. 2 Ch. D. 533; 34 L. T. E. N. S. 476 211 Curtis t'. Piatt (1863), 3 Ch. D. 135 n.; 19 Newt. Lond. Jour. N. S. 44 ; 8 L. T. Eep. N. S. 657 32 (1864), 11 L. T. Eep. N. S. 245 147 (1866), 35 L. J. Ch. 852; L. E. 1 H. L. 337 . . 146, 153, 155, 238 TABLE OF CASES. XXI PAGE Cutler V. Bower (1848), 11 Q. B. 973; 12 Jur. 721 ; 17 L. J. Q. B. 217 117 D. Daines' Patent, In re (1856), 4 A. & E. 949 ; 26 L. J. Ch. 298 ; 4 W. E. 455 110 Dangerfield v. Jones (1865), 13 L. T. Eep. N. S. 142 33 Darcy v. Allin (1602), 1 Web. P. C. (at p. 6) ; Noy E. 173 (at p. 182) 6, 19, 35, 49 Davenport v. Goldberg (1865), 2 Hem. & N. 282 ; 5 N. E. 584. . 169 (1865), 2 H. & M. 725 212, 214 (1865), L.E. lEq. 38; 13L. T.E.N. S. 399 ; 14 AV. E. 48 207 V. Jepson (1862)), 1 N. E. 73, 307 169, 219 V. Eichards (1860), 3 L. T. Eep. N. S. 503 188, 226 Daw V. Eley (1867), L. E. 3 Eq. 496; 36 L. J. Ch. 482; 15 L. T. Eep. N. S. 559 176 Deering's Patent, In re (1880), 13 Cli. D. 393 16 De la Ene r. Dickenson (1857), 7 E. & B. 738; 3 Jur. N. S. 841 ; 5 W. E. 704 ; 29 L. T. E. 194 145, 237 Denley i'. Blore (1851), 38 Lond. Jour. 224 143, 144, 189, 244 Dent r. Turpin (1861), 2 J. & H. 139 142 Derosne's Patent, In re (1844), 2 AVeb. P. C. 1 (at p. 4); 4 Moo. P. C. C. 416 126, 128 Derosne v. Fairie (1835), 1 Web. P. C. 154 (at p. 155) ; 1 Mo. & Eob. 457 142 De Vitrev.Betts(1873), L.E. 6H.L. 319; 21W.E.705 ..177,187 Dircks v. Mellor (1845), 26 Lond. Jour. 268 191 Dixon r. London Small Ai-ms Co. (1875), L.E. lOQ.B. 130; L.E. 1 App.Cas.641 ; 31 L. T. Eep. N. S. 830 ; L. E. 1 a B. D. 384 110, 111, 159 (1876) L. E. 1 App. Cas. 632 ; 46 L. J. Q. B. 617 ; 35 L. T. E. N. S. 559 ; 25 W. E. 142 159 DoUond's Patent (1758), 1 Web. P. C. 43 ; 2 H. Bl. 469, 470, 487 ; Dav. P. C. 170, 171, 172, 199 ; 1 Carp. P. C. 28 10, 39 Downton's Patent, In re (1839), 1 Web. P. C. 565 (at p. 567). . 138 Dudgeon v. Thompson (1874), L. E. 3 App. Cas. 53 ; 22 W. E. 464 ; 30 L. T. Eep. N. S. 244 68, 97, 154, 169, 191 Dunnicliff v. Mallett (1859), 7 C. B.N. S. 209 ; 1 L. T. Eep. N. S. 514 ; 6 Jur. N. S. 252 ; 29 L. J. C. P. 70 ; 8 W. E. 260 .. 141, 188 E. East India Co. v. Kynaston (1820), 3 Bl. App. Cas. 153 217 V. Sandys (1728), Skin. 225 102 Edgeberry r. Stevens (1691), 1 Web. P. C. 35 ; 2 Salk. 447 ; Comb. 84 ; Dav. P. C. 36 ; 1 Carp. P. C. 35 7, 19, 49 Edison Telephone Co. r. India Eubber Co. (1881), L. E. 17 Ch. D. 137 206 r. Nott (1847), 4 C. B. 462 ; 11 Jur. 590 ; 16 L. J. C. P. 174 ; 2 Coop. 41 174, 197 XXll TABLE OF CASES. PAGE Electric Telegraph Co. v. Brett (1851), 10 C. B. 838 ; 20 L. J. C. P. 123 ; 15 Jur. 579 141, 156, 188 EUiott V. Aston (1840), 1 Web. P. C. 222 237 EUwood V. Clii'isty (1864), 10 Jur. N. S. 1079 ; 17 C. B. N. S. 754 ; 34 L. J. C. P. 130 ; 13 W. E. 54 ; 11 L. T. Eep. N. S. 342 ; 5 N. E. 12 118 Elmslie v. Boursier (1869), L. E. 9 Eq. 217 (at p. 222); 39 L. J. Ch. 328 ; 18 W. E. 665 164 Erard's Patent, In re (1835), 1 Web. P. C. 557 (at p. 559) ; 5 Eep. Ai-ts. N. S. 58 125 Evans v. Eees (1842), 2 Q. B. 334 143 Feather v. E. (1865), 8 B. & S. 257 ; 35 L. J. Q. B. 200; 12 L. T. N. S. 114 110, 159 Felton V. Greaves (1829), 3 C. & P. 611 56, 58, 105 Finnigan v. James (1875), L. E. 19 Eq. 72 212 Fisher V. Dewick (1838), 1 Web. P. 0. 267; 1 Web. P. C. 551, n 195, 203, 204, 205 Flower v. Lloyd (1876), W. N. 1876, 169, 230 ; 20 Sol. Journ. 1876, 860 196, 207, 217 (1877), W.N. 1877, 132; Johnson's P. M. 245 155 Forsyth v. Eiviere (1819). 1 Web. P. C. 97 ; Chit. Prerog. Ca. 182 ; 1 Carp. P. C. 401 155 Fox r. DeUestable (1866), 15 W. E. 194 (at p. 195) 28 FoxweU V. Bostock (1864), 12 W. E. 723 (at p. 725) ; 10 L. T. E. N. S. 144 ; 4 De C. J. & S. 298 32, 36, 61, 87, 88, 96, 150, 152 V. Webster (1863), 3 N. E. 103, 180 ; 4 De G. J. & S. 77 ; 9 L. T. N. S. 528 ; 12 W. E. 186 ; 10 Jur. N. S. 137 . . 175 Frearson v. Loe (1878), L. E. 9 Ch. D. 48 (at pp. 58 and 64) ; 27 W. E. 183 . . , 47, 51, 158, 172, 176 G. GaUoway v. Bleadeu (1839), 1 Web. P. C. 268, n.; 1 Web. P. C. 521 (at p. 525) 47, 203, 204 GaUoway's Patent, In re (1843), 1 Web. P. C. 724 (at p. 729) ; 7 Jiu'. 453 130, 133 Gamble v. Kurtz (1846), 3 C. B. 425 155 Gardner v. Broadbent (1856), 2 Jur. N. S. 1041 ; 4 W. E. 767 . . 169, 190, 192 GHlett t\ Green (1841), 7 M. & W. 347 ; 9 Dowl. 219 ; 1 Web. P. C. 271 ; 10 L. J. Ex. 124 239 r.Wilby(1839),9C.&P.334(atp.336); 1 Web. P. C. 270 149 Gibson v. Brand (1841), 1 Web. P. C. 627 (at p. 628) 13, 47 (1842), 4 M. & G. 179; 4 Scott, N. E. 844; 1 Web. P. C. 631 ; 1 1 L. J. C. P. 177 26, 84, 144 Goucher v. Clayton, 11 Jur. N. S. 107 and 462 117 Goucher's Patent, In re (1865), 2 Moo. P. C. C. N. S. 532 139 Graham v. CampbeU (1878), L. E. 7 Ch. D. 490 190 TABLE OF CASES. XXlll PAGE Granger, Ex parte (1812), Godson on Patents, 2nd ed. p. 225. . 113 Greaves v. Eastern Counties Eail. Co. (1859), 1 E. & E. 961 ; 28 L. J. Q. B. 290 ; 5 Jiir. N. S. 733 242 Grover and Baker Sewing Machine Co. v. Millard (1862), 8 Jm-. N. S. 713 (at p. 714) 117 H. HaU V. Jarvis (1822), 1 Web. P. C. 100 25 HaUett r. Hague (1831), 2 B. & Ad. 370 (at p. 377) 67 Hancock v. Moulton (1852), Jolanson's Patentees' Manual, 3rd ed. p. 208 ; M. Dig. 506 156, 173, 176 V. Somervell (1851), 39 Newton's Lond. Joiu\ 158 . . 38 Hardy'sPatent, Inre(1849), 6M00.P. C. C.441; 13 Jur. 177.. 131 Harmar v. Playne (1809), Uav. P. C. 311 (at p. 316) ; 11 East, 101 65, 73, 76 Harrison v. The Anderston Foundry Co. (1876), L. E. 1 App. Ca. 574 (at p. 581) ; 2 S. C. L. E. 4th series, 857 68, 86 Harwood v. Great Northern Eail. Co. (1860), 29 L. J. Q. B. 193; 6 Jiu-. N. S. 993 31, 36 (1865), 11 H.L. Cas. 654; 35 L. J. Q. B. 27 ; 12 L. T. Eep N. S. 771 ; 14 W. E. 1 32 Hassall r. Wright (1870), 40 L. J. Ch. 145 ; L. E. 10 Eq. 509 ; 18 W. E. 821 122, 188 Hasting's Patent (1567), 1 Web. P. C. 6 ; Noy, E. 182 18, 35 Haworth v. Hardcastle (1834), 1 AVeb. P. C. 480 (at p. 483); 4M. &Sc. 720; 1 Bing. N.C. 182; 3 L. J. C. P. 311.. 51, 67, 105 Hayne V. Maltby (1789), 3 T. E.438; Dav. P. C. 156. . 114, 115, 116 Heath's Patent, In re (1853), 8 Moo. P. C. C. 217; 2 AVeb. P. C. 247; M. Dig. 114 132, 136 Heath v. Smith (1854), 2 EU. & Bl. 256 ; 2 C. L. E. 1584; 18 Jul-. 601 ; 23 L. J. Q. B. 166; 2 Web. P. C. 268. . . .39, 47 v.Unwin(1842),15Sim. 553; 10 M. &W. 684 (at p. 687) 146, 204, 208 (1845), 14 L. J. Ex. 153 (at p. 156); 2 Web. P. C. 221 ; 13 M. & W. 583 146, 156 (1852), 22 L. J. C. P. 7 ; 2 Web. P. C. 236 ; 12 C. B. 522 ; 25 L. J. C. P. 19 72, 74, 82, 146 Henderson v. Mostyn Copper Co., L. E. 3 Ch. 202 120 Herbert's Patent, In re, L. E. 1 P. C. 399 ; 4 Moo. P. C. C. N. S. 300 127 Hesse v. Stevenson (1803), 3 B. & P. 565 113 Heugh V. Chamberlain (1877), 25 AV. E. 742 118 Higgs V. Godwin (1858), 27 L. J. Q. B. 421 ; 5 Jur. N. S. 97 ; Ell. Bl. & EU. 529 - 25, 158 HiUs' Patent, In re (1863), 1 Moo. P. C. C.N. S. 258 (at p. 265); 9 Jur. N. S. 1209 ; 12 AV. E. 25 ; 9 L. T. Eep. N. S. 101 . . 128, 129, 130, 134, 138 Hill V. Thomi^son (1817), 1 AA^eb. P. C. 235 (at p. 237), 229; 3 Mer. 622, 626 . .32, 51, 66, 67, 191, 192, 237 (1818). 2 B. Moo. 424; 8 Taunt. 375; 1 AVeb. P. C. 239 ■ 39, 48, 59, 104, 105, 154 XXIV TABLE OF CASES. PAGE Hills V. Evans (1862), 31 L. J. Ch. 457 (at p. 463) ; 8 Jiir. N. S. 525 ; 6 L. T. Eep. N. S. 90 ; 4 De G. F. & J. 288 . . 44, 67, 72, 169, 178, 187, 234 V. London Gaslight Co. (1857), 27 L. J. Ex. 60 71 (1860), 29 L. J. Ex. 409; 5 H. & N. 312 (at p. 336) 25, 40, 44, 47 Hinks V. Safety Lighting Co. (1870), L. E. 4 Ch. D. 607 (at p. 612) ; 46 L. J. Ch. 185 ; 36 L. T. Eep. N. S. 391 67, 72 Hoflfman v. Posthill (1869), L. E. 4 Ch. Ajip. Cas. 673; 17 W. E. 901 ; 20 L. T. Eep. N. S. 893 213, 214 Holland v. Fox (1853), 1 C. L. E. 440; 1 W. E. 448. .195, 204, 205 Holmes v. London and North Western Eail. Co. (1852), 22 L. J. C. P. 57; Macrory's P. C. 13 ; 12 C. B. 831 71 Honiball v. Bloomer (1854), 2 Web. P. C. 199 (at p. 200) ; 10 Ex. 538 ; 1 Jur. N. S. 188 ; 24 L. J. Ex. 11 ; 3 W. E. 71 ; 3 C. L. E. 167 ; M. Dig. 46 47, 242 Hornblower r. Boidton (1799), 8 T. E. 95 (at p. 101) ; Dav. P. C. 221 ; 1 Carp. P. C. 156 22, 23, 27, 65, 73 Houghton's Patent, In re (1871), 7 Moo. P. C. C. N. S. 309; L. E. 3 P. C. 461 132 HousehiU Iron Co. v. Neilson (18^2), 1 Web. P. C. 673, 676, 718, n. ; 9 C. & F. 788 22, 41, 47, 55, 73 How V. McKernan (1862), 30 Beav. 546 210 Hiiddart v. Grimshaw (1803), Dav. P. C. 265 (at p. 267); 1 Web. P. C. 85 ; Carp. P. C. 200 32, 226 Hughes' Patent, In re (1879), L. E. 4 App. Cas. 174 ; 48 L. J. P. C. 20 ; 27 W. E. 493 127 Hull V. Bolland (1856), 25 L. J. Ex. 304 ; 1 H. & N. 134 196, 205, 231 Hutchinson's Patent, In re (1861), 14 Moo. P. C. C. 364 132 Jackson v. Duke of Newcastle (1864), 33 L. J, Ch. 698 220 Jessop's case (before 1795), Cit. 2 H. Bl. 490; Dav. P. C. 182, 203 ; 1 Web. P. C. 42, n 105 Johnson's Patent, In re (1871), 8 Moo. P. C. C. N. S. 282 (at p. 291) ; L. E. 4 P. C. 75 129, 135 (1877), 8 Moo. P. C. C. N. S. 291 ; L. E. 5 Ch. D. 503 ; 46 L. J. Ch. 555 129, 136 and Atkinson's Patent, Inre(1873),L.E. 5 P. C. 87. . 131 Jones's Patent, In re (1854), 9 Moo. P. C. C. 41 138 Jones V. Berger (1843), 1 Web. P. C. 504 (at p. 549); 5 M. & G. 208; Scott, N. E. 208; 7 Jur. 883; 12 L. J. C. P. 179 195, 204, 207, 208 V. Lees (1856), 1 H. & N. 189 ; 2 Jur. N. S. 645 ; 26 L. J. Ex. 9 120 V. Pearce (1831), 2 Coop. 58 191 (1832), 1 AVeb. P. C. 122; 1 Carp. P. C. 524 ; 1 Lon. Jour. C. S. 215 25, 47, 158 Jordan v. Moore (1866), L. E. 1 C. P. 024 ; 12 Jur. N. S. 766 ; 35 L. J. C. P. 268 ; 14 W. E. 769 31 Jupe V. Pratt (1837), 1 Web. P. C. 145 (at p. 146) 22, 156 TABLE OF CASES. XXV K. PAGE Kay's Patent, In ro (1839), 1 Web. P. C. 568 (at p. 572); 3 Moo. P. C. C. 24 130 Keynaston v. East India Co. (1819), 3 Swan. 248 217 Knowles t-. BoviU (1870), 22 L. T. Eep. N. S. 70 119 Kynock v. National Ai-ms Co. Limited (1877), 37 L. J. Eep. N. S. 31 ; 26 AV. E. 22 98 L. Lang V. Gisborne (1862), 31 Boav. 133 (at p. 135) ; 8 Jur. N. S. 736; 3lL.J.Ch.769: lOW. E. 638; 6 L. T. Eep. N. S. 771 . . 45 Lea V. Saxby (1875), 32 L. T. E. N. S. 731 211 Lewin v. Brown (1866), 14 W. E. 640 118 Lewis V. Davis (1829), 1 AVeb. P. C. 488 ; 3 C. & P. 502; 1 Carp. P. C. 471 33 r. Marling (1829), 10 B. & C. 22 ; 4 C. & P. 56 ; 5 M. & E. 66 ; nVeb. P. C. 493 ; 1 Carp.P.C.478. .11, 36,51,77,83, 104, 105 Liardet r. Johnson (1778), 1 Web. P. C. 52; Bull. N. P. 78; 1 Carp. P. C. 35 35, 82 Lister v. Eastwood (1864), 9 L. T. E. N. S. 766 153 V. Leather (1857), 8 E. & B. 1004 (at p. 1017) ; 3 Jur. N. S. 433, 811; 5 W. E. 603; 29 L. T. Eep. 142 28, 86, 150, 151, 152 (1858), 27 L. J. Q. B. 295 ; 4 Jur. N. S. 947 ; 4 K. & J. 425 ; 8 E. & B. 1031 33 Losh V.Hague (1837), 1 AVeb. P. C. 200 (atp. 205). .47, 51, 173, 175 (1839), 7 D. P. C. 495 ; 5 M. & AV. 387 ; 3 Jur. 409 ; 8 L. J. Ex. 251 ; 7 Dowl. 495 242 LoveU V. Hicks (1836), 2 Y. & C. 46 ; 5 L..J. Ex. 101 118 Lowe's Patent, In re (1846), 10 Jur. 363 131 M. M'Alpine v.MangnaU(1846), 15 L.J. C.P. 298; 3C. B. 496.. 113 M'Cormick v. Gray (1861), 5 H. & N. 25; 31 L. J. Ex. 42; 9 AV. E. 809 ; 4 L. T. Eep. N. S. 832 48, 147 M'Dougal's Patent, In re (1867), L. E. 2 P. C. 1 ; 37 L. J. P. C. 17 ; 5 Moo. P. C. C. N. S. 1 127 M'Innes' Patent, In re (1868), 5 Moo. P. C. C. C. N. S. 72 (at p. 78 ; L. E. 2 P. C. 54 ; 37 L. J. P. C. 23 134 Macfarlane v. Price (1816), 1 AVeb. P. C. 74 ; 1 Stark. 199 76 Macnamara v. Hales (1842), C. & M. 471 ; 2 AA^eb. P. C. 128, n. 237, 238 Manceaux's Patent, In re (1870), L. E. 6 Ch. 272 100 Manton v. Manton (1815), Dav. P. C. 333 (at p. 350) ; 1 Carp. P. C. 278 229 Marsden v. SaviU Street Foundry and Engineering Co. Limited (1878), L. E. 3 Ex. D. 203; 39 L. T. Eep. N. S. 97, 100 ; 26AV. E. 784 19, 21, 109 XXVI TABLE OF CASES. PAGE Medlock's Patent, In re (1865), 22 Newt. Lond. Joiu\ N. S. 69 . . 97, 101 Mercier v. Cotton (1876), L. E. 1 Q. B. D. 442 210 Milligan v. Marsh (1856), 2 Jur. N. S. 1083 21 Milner's Patent, In re (1854), 9 Moo. P. C. C. 39 138 Minter v. Mower (1835), 1 AVeb. P. C. 138 36 V. Wells (1834), 1 Web. P. C. 127, 134; 1 Carp. P. C. 622, 639; 1 C. M. & E. 505; 5 Tyr. 163; 4 L. J. Ex. 2 11, 155 V. Williams (1835), 1 Web. P. C. 135 ; 4 A. & E. 251 ; 5 N. & M. 657 ; 1 H. & N. 585 ; 5 L. J. K. B. 60 163 Mitchell V. Barker (1851), 39 Lond. Jour. 531 191 V. Eeynolds (1713), 19 Mod. E. 130 ; 1 P. Wms. 181 . . 35 Morewood v. Tupper (1855), 3 C. L. Eep. 718 151 Morey's Patent, In re (1858), 25 Beav. 581 ; Higgins' Dig. 339 ; 6 W. E. 612 122 Morgan's Patent, In re (1843), 24 W. E. 245; 1 Web. P. C. 737 (at p. 739) 122, 125, 137 (1876), 24 W. E. 245; 1 Web. P. C. 739 121, 125, 138 Morgan v. Fuller (1866), L. E. 2 Eq. 296 (at p. 297) 195 V. Seaward (1837), 2 M. & W. 544; Mur. & H. 55; 1 Jur. 527 ; 1 Web. P. C. 167, 170, 187, 196 ; 1 Carp. P. C. 37, 96 ; 6 L. J. Ex. 153. .36, 46, 58, 65, 77, 82, 103, 155, 217, 237 Mullins V. Hart (1852), 5 Car. & K. 297 47 Muntz' Patent, In re (1846), 2 Web. P. C. 113 (at p. 119).. 127, 129, 130 V Foster (1843— 4), 2 Web. P. C. 93 (at p. 103), 1 Dowl. &Low, 942. .28,41,48, 72, 145,155,158,163—169,223,237 V. Grenfell (1842), 2 Coop. 61 n. ; 7 Jur. 121 191 Murray v. Clayton (1872), L. E. 7 Ch. 570 (at p. 584) ; 20 W. E. 649 ; 27 L. T. Eep. N. S. 100 ; 21 W. E. 118 ; 42 L. J. Ch. 191 ; L. E. 15 Eq. 115 ; 27 L. T. Eep. N. S. 644 ; 21 W. E. 498 33, 155, 179, 213 N. Napier's Patent, In re (1861), 13 Moo. P. C. C. 543; 9 W. E. 390 126 Needham v. Oxley (1863), 11 W. E. 852 ; 8 L. T. Eep. N. S. 604 ; 2 N. E. 388 177, 187 (1863), 1 H. & M. 248 194 Neilson v. Betts (1871), L. E. 3 Ch. 429 ; L. E. 5 H. L. 1 ; 40 L. J. Ch. 317 ; 19 W. E. 1121 43, 160, 177, 187 V. Forman (1841), 2 Coop, 6 n 170 V. FothergiU (1841), 1 Web. P. C. 287 116 V. Harford (1841), 1 Web. P. C. 295 (at p. 310). . 73, 155, 236, 237 (1841), 1 AVeb. P. C. 331 (at p. 342), 295, 324, 373 ; 8 M. & ^Y. 806 ; 11 L. J. Ex. 20 ; 10 L. J. Ex. 493 ; 2 Coop. C. C. 61, n. . . 22, 58, 67, 83, 205, 231, 235 V. Thompson (1841), 1 AVeb. P. C. 278; 2 Coop. 61, n 65, 170 TABLE OF CASES. XXVll PAGE Newall V. EUiott (1858), 4 C. B. N. S. 269 ; 4 Jur. N. S. 562 ; 27 L. J. C. P. 537 47, 61, 62 (1864), 13 W. E. 11 ; 10 Jur. N. S. 954 ; 10 L. T. Eep. N. S. 792 ; 4 N. E. 429 . . . ,25, 60, 147, 162 V. Wilkius (1851), 17 L. T. Eep. 20 240 V. "WHson (1852), 2 De G. M. & G. 282; 19 L. T. Eep. 161 191 Newbeiy v. James (1817), 2 Mer. 446 (at p. 451); 1 Carp. P. C. 367 66, 107 Newton's Patent, In re (1861), 14 Moo. P. C. C. 156 128, 135 Newton v. G-rand Junction Eail. Co. (1846), 5 Ex. 331 (atp. 334); 20 L. J. Ex. 427, n. ; M. Dig. 75 148, 149, 238 V. Vaucher (1851), 21 L. J. Ex. 305 (at p. 308) ; 6 Ex. 859 55, 68, 151 Nickels V. Haslam (1844), 13 L. J. C. P. 146 ; 8 Scott, N. E. 97; 7 M. & G. 378 ; 8 Jur. 474 59 V. Eoss (1849), 8 C. B. 679 (at p. 710) 20 Nobel's Explosive Co. v. Jones, Scott & Co. (1878), 17 Ch. D. 721 161, 162 Normand's Patent, In re (1870), 6 Moo. P. C. C. N. S. 477 . . 135 Norton's Patent, In re (1863), 1 Moo. P. C. C. N. S. 339 ; 9 Jur. N. S. 419 ; 11 W. E. 720 ; 1 N. E. 557 133, 136 Norton v. Brooks (1861), 7 H. & N. 499 ; 8 Jur. N. S. 155 ; 10 W. E. Ill 117 Nunn V. D'Albuquerque (1865), 34 Beav. 595 180 0. Oldham v. Langmead (before 1789), Cit. 3 T. E. 439, 441 114 Oxford and Cambridge Universities v. Eicbardson (1802), 6 Ves. 689 161, 168 Oxley V. Holden (1860), 30 L. J. C. P. 68 ; 8 C. B. N. S. 666 ; 8 W. E. 626 ; 2 L. T. Eep. N. S. 464 45, 47, 163 P. Palmer v. Cooper (1853), 9 Ex. 231 ; L. E. 23 Ex. 82 ; 2 C. L. E. 430 195, 203, 207 V. Wagstaflt (1853), 8 Ex. 840 ; 17 Jur. 781 ; 22 L. J. Ex. 295 ; 1 W. E. 438 ; 1 C. L. E. 448 196 Parkes v. Stevens (1869), L. E. 8 Eq. 358 (at p. 367) ; 38 L. J. Cb. 627 ; 17 W. E. 846 ; L. E. 3 Cb. 36 31, 66, 86, 152, 237 Patent Bottle Envelope Co. v. Seymer (1858), 5 C. B. N. S. 164 ; 5 Jiu". N. S. 174 ; 28 L. J. C. P. 22 32, 149 Type Founding Co. t-. Eicbards (1859), 2 L. T. E. N. S. 359 195 t'.WalterLloyd(1860),8 W.E. 353; Jobns.727. . 218 Patterson's Patent, In re (1849), 6 Moo. P. C. C. 469; 13 Jur. 593 134 XXVlll TABLE OF CASES. PAGE Patterson v. Gas Light & Coke Co. (1876), L. E. 2 Ch. D. 827 (at p. 832) ; 45 L. J. Ch. 843 ; 35 L. T. Eep. N. S. 11 15 (1877), L. E. 3 App. Ca. 239 (at p. 243) ; 47 L. J. Ch. 402 ; 38 L. T. Eep. N. S. 303 ; 26 W. E. 482 14, 22, 44 V. Holland (1845), Hindmarch, 293 224 Penn v. Bibby (1866), L. E. 1 Eq. 538 (at p. 548) 206 V. Jack (1866), L. E. 2 Ch. App. Ca. 127 ; 36 L. J. Ch. 455 ; 15 W. E. 208 ; 15 L. T. Eep. N. S. 399. . 31, 61, 62 (1866), 3 L. J. Eq. 308 169, 240 (1866), L. E. 2 Eq. 314 (at p. 317) ; 14 L. T. E. N. S. 495 ; 14 AV. E. 760 230, 231 (1867), L. E. 5 Eq. 81 (at p. 86) 177, 178 v. Fernie (1866), L. E. 3 Eq. 308 240 Perkins's Patent, In re (1845), 2 Web. P. C. 6 (at p. 18) .... 126 Perry r. Mitchell (1840\ 1 Web. P. C. 269 197 (1854), 9 Ex. 494 ; 2 C. L. E. 1052 ; 23 L. J. Ex. 217 226 V. Skinner (1837), Hindmarsh, Patents, p. 207 ; 2 M. &W. 471 ; M. & H. 122 ; 1 Jur. 433 ; 1 Web. P. C. 250 ; 6 L. J. Ex. 124 97, 98 Piggott V. Anglo-American Telegraph Co. (1868), 19 L. T. E. N. S. 46 217 Pinkus' Patent, In re (1847), 12 Jur. 234 133, 134 Pitman's Patent, In re (1871), 8 Moo. P. C. C. N. S. 293 (at p. 297) ; L. E. 4 P. C. 84 136 Plimpton V. Malcomson (1876), L. E. 3 Ch. D. 53 (at p. 557) ; 45 L. J. Ch. 505; 34 L. T. Eep. N. S. 340; L. E. 20 Eq. 37 51, 74, 80, 176, 191, 228 (1876), 20 Sols. Jour. 1876, j). 860 207 V. SpiUer (1877), L. E. 6 Ch. D. 412 ... .44, 47, 68, 170 Poole's Patent, In re (1867), 4 Moo. P. C. C. N. S. 452 ; L. E. 1 C. P. 514 ; 36 L. J. P. C. 76 130, 135 Pow V. Taunton (1845), 9 Jur. 1056 28 Price's Patent Candle Co. v. Bauwen's Patent Candle Co. (1858), 4 K. & J. 727 176, 180 Printing and Numerical Eegistering Co. v. Sampson (1875), 44 L. J. Ch. 705; L. E. 19 Eq. 462 ; 32 L. T. Eep. N. S. 354. . 118 E. E. r. Ai-kwright (1785), 1 Web. P. C. 64 (at p. 72) ; Dav. P. C. 61; Printed Cases, fol. Lon. 1785 ; 1 Carp. P. C. 53. .35, 49, 66, 72 E. V. Cutler (1847), 3 C. & K. 215; Macrory, 124; 14 Q. B. 372 n 28 E. V. Else (1785), 1 Web. P. C. 76 ; Bull, N. P. 76 ; Dav. P. C. 144 55 R V. Lister (1826), Web. P. L. 80 155 E. V. Mill (1850), 20 L. J. C. P. 16 (at p. 24) ; 10 C. B. 379 ; 15 Jur. 59 ; 1 L. M. & P. 695 ; 14 Beav. 315 95, 96 TABLE OF CASES. XXIX PAGE E. V. ^Tieeler (1819), 2 B. & Aid. 345 ; 1 Carp. P. C. 394. . 10, 26, 105 Ealstou V. Smith (1865), 11 H. L. C. 223; 20 C. B. N. S.28 ; 13 L. T. Eep. N. S. 1 ; 35 L. J. C. P. 49 31, 96 Eenarcl r. Lewinstein (1864), 3 W. E. 665; 10 L. T. Eep. N. S. 94 21 1 (1864), 10 L. T. N. S. 177 169 (1865), 2 Hem. & M. 528; 5 N. E. 301; 11 L. T. Eep. N. S. 766 ; 13 W. E. 382 143, 188 Eoberts' Patent, In re (1839), 1 Web. P. C. 573 (at p. 575) . . 130 Eoden v. London SmaU Ai-ms Co. (1876), 46 L. J. Q. B. 213 . . 120 Eolls V. Isaacs (1878), L. E. 19 Ch. D. 268 ; AV. N. 1878 (p. 37) 109 Eushtou V. Crawley (1870), L. E. 10 Eq. 522 32, 85 EusseU V. Cowley (1834), 1 AVeb. P. C. 459 (at p. 463) ; 2 Coop. C. C. 59 25, 156, 169, 217 V. Ci-icbton (1837), 15 Dec. of Ct. of Sess. 1270 ; 1 Web. P. C. 667, n 217 V. Ledsam (1843), 11 M. & W. 647 204, 208, 209 (1845), 14 M. & W. 574 (at p. 580) ; 14 L. J. Ex. 353 155 S. Samuda's Patent, In re (1846), Cit. Hind on Pat. 534 99 Saxby v. Gloucester Waggon Co. (1880), L. E. 7 Q. B. D. 305; W. N. 1880 (at p. 28) 33, 222 Saxby's Patent, In re (1870), L. E. 3 P. C. 292 ; 7 Moo. P. C. C. N. S. 82 ; 19 W. E. 513 127 Scott and Young, Ex parte (1871), L. E. 6 Ch. D. 264 ; L. E. 6 Ch. 274 ; 19 W. E. 425 16 Seed V. Higgins (1860), 8 H. L. C. 550; 30 L. J. Q. B. 314 ; 6 Jur. N. S. 1264 ; 3 L. T. Eep. N. S. 101 85, 227, 234, 238 Sellers t'. Dickenson (1850), 5 Ex. 312 (at p. 324); 20 L. J. Ex. 417 149, 238 Sharp's Patent, In re (1840), 1 Web. P. C. 641 (at p. 645) ; 10 L. J. Ch. 86 ; 3 Beav. 245 92 Shaw r. Beck (1853), 8 Ex. 392 230 Sheehan v. Great Eastern Eail. Co. (1880), L. E. 16 Ch. D. 59 142, 188 Simister's Eatent, In re (1842), 1 Web. P. C. 721 (at p. 724) ; 4 Moo. P. C. C. 164 133 Simpson v. HoUiday (1866), L. E. 1 H. L. 315; 35 L. J. Ch. 811 27, 85 (1865), 13 W. E. 577 (at p. 578) ; 12 L. T. Eep. N. S. 99 ; 21 Newton, Lond. Jour. N. S. Ill ; 5 N. E. 340 70, 74, 85 (1864), 20 Newton's Lond. Jour. N. S. 105 (at p. 108) , 83, 156, 234 Singer Sewing Machine Co. v. Wilson (1865), 5 N. E. 505 ; 12 L. T. Eep. N. S. 140 ; 13 W. E. 560 219 Smith's Eatent, In re (1855), Macr. P. C. 232 97, 101 Smith r. Buckingham (1870), 18 W. E. 314 ; 21 L. T. E. N. S. 819 118 XXX TABLE OF CASES. PAGE Smith V. Davidson (1857), 19 C. S. 691 40 V. Dickenson (1804), 3 B. & P. 630 107 V. London & North Western Eail. Co. (1853), 2 E. & B. 69 (at p. 76); 17 Jur. 1071 149, 150 V. London & South Western Eail. Co. (1854), Kay, 408 ; 23 L. J. Ch. 562 ; 23 L. T. E. 10 ; 2 Eq. Eep. 428 ; 2 W. E. 310 ; 23 L. T. E. 10 176 V. Scott (1859), 6 C. B. N. S. 771 ; 28 L. J. C. P. 325 ; 5 Jur. N. S. 1356 117 V. Upton (1843), 6 M. & G. 257 224 Soame's Patent, In re (1843), 1 Web. P. C. 560, 729 (at p. 733). .21, 124, 126 Spencer v. Jack (1864), 11 L. T. E. N. S. 242 237 Spicer r. Todd (1839), 1 D. P. C. 306 143 Spilsbury v. Clough (1842), 2 Q. B. 466 ; 2 G-. & D. 17; 6 Jur. 579 ; 1 Web. P. C. 255 ; 11 L. J. Q. B. 109 93 Stead t'. Anderson (1846), 2 Web. P. C. 147 (at p. 149) 39 (1847), 4 C. B. 806 ; 2 Web. P. C. 151 ; 16 L. J. C. P. 250 146, 148, 155, 226 V. Williams (1843), 2 Web. P. C. 126 (at p. 136) 39, 47 (1844), 2 Web. P. C. 137 (at p. 142); 7 M. & G. 318; 8 Scott, N. E. 449 ; 8 Jur. 930 ; 13L. J.C.P. 218. .41,58 Steiner v. Heald (1851), 20 L. J. Ex. 410 ; 6 Ex. 607 ; 17 Jur. gyg 29 Stevens V. 'Keating ( 1 847 )," 2 ' Web. ' I?*. * C. " 1 76 ' (at p. 181); 2 Phill. 333 (at p. 335) 156, 191, 238 (1850), 1 Mac. & G-. 659 146 Stocker v. Eodgers (1843), 1 Car. & Kir. 99 241 Stocking V. Llewellyn (1842), 3 L. T. E. 33 192 Stoner v. Todd (1876), L. E. 4 Ch. D. 58; 46 L. J. Ch. 32; 35 L. T. Eep. N. S. 661 ; 25 W. E. 138 42, 62 Sturtz V. De la Eue (1828), 5 Euss. 322 (at p. 329); 1 Web. P. C. 83 58, 73, 192 Sugg V. Silber (1876), L. E. Q. B. D. 362 221 (1877), L. E. 2 a B. D. 495 205 Swinborne v. Nelson (1853), 16 Beav. 416 ; 22 L. J. Ch. 331. . 213 Sykes v. Howarth (1879), L. E. 12 Ch. D. 826 ; 48 L. J. Ch. 769 ; 41 L. T. E. N. S. 79; 28 W. E. 215. .157, 163, 165, 196, 205,232 T. Talbot V. La Eoche (1854), 15 C. B. 310 ; 2 C. L. Eep. 836; M. Dig. 210 197 Tangye v. Stott (1865), 14 W. E. 386 176, 187 Taylor v. Hare (1805), 1 Web. P. C. 292, 293 ; 1 B. & P. N. E. 260 114, 119 Templeton v. Maefarlane (1848), 1 H. L. C. 595 48 Tennant's case (1802), 1 Web. P.C. 125 ; Dav.P.C.429; 1 Carp. P. C. 177 9, 40 Terrell, In re (1883), L. E. 22 Ch. D. 473 244 Tetley v. Easton (1852), Mac. P. C. 48, 76 72, 82 (1857), 2 C. B. N. S. 706 ; 26 L. J. C. P 85 TABLE OF CASES. XXXI PAGE Thomas v. Foxwell (1858), 5 Jur. N. S. 37 (at p. 39) 151 V. Hunt (1864), 17 C. B. N. S. 183 120 V. Welch (1866), L. E. 1 C. P. 182 (at ^. 192) ; 12 Jur. N. S. 316 ; 35 L. J. C. r. 200 62 Thorn r. Worthing Skating Eink Company (1876), L. E. 6 Ch. D. 417 ^ 155 Tielens v. Hooper (1850), 5 Ex. 830 120 Tolhausen's Patent, In re (1866), 14 W. E. 557 100 Townsend v. Haworth(1875), L. E. 12 Ch. D. 831, n. ; Higgins' Dig. Pt. II. p. 60 (not fully reported anywhere). . . .158, 163, 165 Travell v. Carteret (35 Car. 2), 3 Lev. 135 104 Trotman's Patent, In re (1866), L. E. 1 P. C. 118 ; 3 Moo. P. C. C. N. S. 291 131, 132 Trotman v. Wood (1864), 16 C. B. N. S. 479 117 Turner v. Hancock (1881), 20 Ch. D. 303 244 V. Winter (1787), 1 Web. P. C. 77 (at p. 80) ; 1 T.E. 602 ; Dart, P. C. 145 49, 66, 229 U. United Telephone Co. &c. v. Harrison, Cos, Walker & Co. (1882), L. E. 21 Ch. D. 720 44, 45, 156 Unwin v. Heath (1855), 25 L. J. C. P. 8 68, 69, 155 V. Vavaseurv. Krupp (1878), L. E. 9 Ch. D. 357; 39 L. T. E. N. S. 437 176 Vincent'sPatent, Inre (1867), L. E. 2Ch. 341 ; 15W.E. 524.. 100 W. Wallington v. Dale (1852), 7 Ex. 888 ; 23 L. J. Ex. 49 66, 237 Walton V. Bateman (1842), 1 Web. P. C. 613 (at p. 615) . .37, 145, 155 237 t;. Lavater (1860), 3 L. T. Eep. N. S. 272; 8 C. B.' N. S. 162; 29 L. J. C. P. 275; 6 Jur. N. S. 1251.. 117, 141, 147, 149, 164, 188 r. Potter (1841), 1 Web. P. C. 585 (at p. 592)= .13, 25, 145, 155, 238 AVarwick r. Hooper (1850), 3 M. & G. 60 120 Wegmann v. Corcoran (1879), L. E. 13 Ch. D. 65 (at p. 77); 39 L. T. Eep. N. 8. 5(!3 ; 27 W. E. 357 68, 79, 80 Westrupp & Gibbons' Patent, In re, Ex parte Wells (1836), 1 Web. P. C. 554 1 38 White V. Fenn (1867), 15 W. E. 348 ; 15 L. T. Eep. N. S. 505. .152 Whitton V. Jennings (1860), 1 D. E. & S. 110 192 XXXll TABLE OF CASES. PAGE Wield's Patent, In re (1871), L. E. 4 P. C. 89 ; 8 Moo. P. C. C. N. S. 300 132, 138 Williams v. Williams (1819), 3 Mer. 157 107 Wiuan's Patent, In re (1872), 8 Moo. P. C. 0. N. S. 306 ; L. E. 4 P. C. 93 135 Wirth's Patent, In re (1879j, L. E. 12 Ch. D. 303 ; 28 W. E. 329 6 Wood V. Zimmer (1815), 1 Web. P. C. 44, 82 ; Holt, N. P. 58 ; Kay, P. C. 290 47, 80 Woodcroft's Patent, In re (1841), 1 Web. P. C. 740 ; 3 Moo. P 0171 133 Wren v. AVeild (1868), 4 Q.' B. 213 '.'.'.'..'.'.'.'.'.'.'.'............ 198 Wrigbt V. Hitchcock (1870), L. E. 5 Ex. 37 ; 39 L. J. Ex. 97. .59, 152, 165, 226 Y. Young V. Eernie (1864), 12 W. E. 901 (at p. 903) ; 4 Giff. 577 ; 10 Jur. N. S. 926 ; 10 L. T. Eep. N. S. 861 ; 9 Prac. Mecli. Jour. 2nd Series, 102 ; 4 N. E. 218 25, 44, 228 ERRATA. Page 83, line i,foy "mala fide," read "mala fides." ,, ad fin., /or "bona fide," read "bona fides." t §Hfo ititir frctrtia EELATIXO TO LETTERS PATENT FOR IMEOTIONS INTRODUCTION. Letters patent for inventions are granted by the crown by virtue of its common law prerogative. By the creation of monopolies to first and true inventors in the right of using tlieir inventions, a species of property is created in favour of inventors, as a reward for the benefits which they have conferred on humanity, by the exercise of their thought, knowledge and industry. It is to the interests of the community that persons should be in- duced to devote tlieir time, energies and resources in furtherance of the development of arts and manufactures, and this was recognized in England from the earliest periods which can pretend to be described as civilized. It was to the advantage of the whole community that inventors should be rewarded, and no measure of reward can be conceived more just and ccpiitable, and bearing a closer relation to the benefit conferred by the particular inventor than to grant him the sole right of making, using and vending his invention for a limited period of time. In the corrupt ages of the Stuarts, it is not to be wondered at, that the prerogative of the crown to grant monoi)oly rights to first and true inventors, should have been made a lever for assuming a prerogative to grant monopoly rights in trade generally. In the reign of James the First, to such an extent had this abuse been carried, that it was deemed advisable by T. B 2 ■ THE LAW OF PATENTS. the legislature that the rights of the crown in respect of letters patent should be declared by legislative enact- ment — this was the origin of the Statute of Monopolies. It has been supposed that tlie ^prerogative of the crown to grant letters patent for inventions was created by this statute, but the most cursory perusal of its enact- ments and of the authorities which j)receded it, shows clearly that, so far from the statute giving to the crown any right which it did not possess before it was passed, it has as its intention the limiting the right of the crown, and the declaring that, which had always been the com- mon law upon the subject. In the first section of this Act, for instance, we find it recited " that all grants of monopolies and of the benefit of any penal laws, or of power to dispense with the law, or to compound for the forfeiture, are contrary to your Majesty's laws, which your Majesty's declaration is truly consonant and agree- able to the ancient and fundamental laws of this your realm. . . . That all monopolies, and all commissions, grants, licenses, charters and letters patent heretofore made or granted or hereafter to be made or granted . . . are altogether contrary to the laws of this realm, and so are and shall be utterly void and of none effect, and in no-wise to be put in use or execution." Section 6 saved the granting of letters patent to inven- tors in the following words : — ii Provided also, and be it declared and enacted, that any declaration before mentioned shall not extend to any letters patent and grants of privilege for the term of fourteen years or under, hereafter to be made of the sole working or making of any manner of new manufactures within this realm, to the true and first inventor and inventors of such manufactures, which others at the time of making of such letters patents and grants shall not use, so as also they be not contrary to the law, nor mis- chievous to, the state by raising of prices of commodities INTRODUCTORY CHAPTER. O at home, or hurt of trade, or generally inconvenient ; the said fourteen years to be accounted from the date of the first letters patents or grant of such privilege here- after to be made, but that the same shall be of such force as they should be if this Act had never been made and of none other." It will thus be seen that the Statute of Monopolies creates no statutory right, but merely saves the common law right of the crown ; and by sect. 116 of the Patents Designs and Trade Marks Act, 1883, it is enacted, "Nothing in this Act shall take away, abridge or pre- judicially affect the prerogative of the crown in relation to the granting of any letters patent, or to the Avithhold- ing of the grant thereof." By sect. 46 of the same Act the w^ord "invention" is defined as meaning " any man- ner of new manufacture the subject of letters patent and grant of privilege within sect. 6 of the Statute of Monopolies .... and includes an alleged invention." So it is that in the present day, notwithstanding the various statutes which have been passed in relation to letters patent for inventions, these monopolies are still granted upon the mere motion of the sovereign, in the exercise of her royal ^prerogative, and that all that has been done, has been declaratory of the limits within which that prerogative should be exercised, and of the method of procedure to be adopted in obtaining letters patent for inventions. For the purpose of supporting the validity of the letters patent it is necessary that the patentee should conform to certain requisites, and these requisites are indicated in the 6tli section of the Statute of Monopolies. In the first place, he must be tlu^ true and first inventor of a new manufacture ; the new manufacture must not be contrary to law, nor must it be mischievous to the State, by raising the prices of commodities at home ; it must not be hurtful to trade, nor generally inconvenient. The b2 4 THE LAW OF PATENTS. Act of 1883 has adoj^tecl tliis definition of an invention, and anything that does not conform with all these requi- sites is not entitled to be called an invention. Tlie host of important decided cases as to the construction of the 6th section of the Statute of Monopolies, and the enor- mous expense, and labour and learning, which has been devoted to obtaining these decisions, no doubt induced the legislature to adopt a definition which had in some respects obtained a correct judicial meaning ; but it is doubtful whether it was wise to re-enact it in a form which had, we may say, centuries ago, already become to some extent obsolete. The protection of trade by means of Gruilds, and of all those various protective schemes which were elabo- rated in the middle ages, have been found to be fallacious. Industries in this country are no longer protected by the artificial process of law, and therefore it is diflicult to understand the correct meaning which would be given to the words in the 6th section of the Statute of Monopolies, which refer to an invention having a tendency to raising the prices of commodities at home, or to hamper trade, or to be generally inconvenient, terms exceedingly vague in themselves, and which the Courts have not had occasion to consider for a very great number of years. These matters, and the construction which is to be placed upon the word " invention," will have to be dealt with hereafter, when we consider the cases which have been decided upon the matter. ( ^ ) CHAPTER I. THE PATENTEE. By sect. 46 of the Act of 1883, the word patentee is construed as meaning '' the person for the time being entitled to the benefit of the patent ; " consequently it may mean the original grantee, his executors and administrators, or the assignee of the original grantee. By sect. 4 of the same i\.ct it is enacted : — (1) '' Any person, whether a British subject or not, may make an application for a patent." It will be observed, that there is no limitation what- ever preventing a person under incapacity, either by reason of infancy or otherwise, from obtaining a patent. (2) '' Two or more persons may make a joint application for a patent, and a patent may be granted to them jointly." By sect. 5, (Ij "An application for a j^atent must be made in the form set forth in the Schedule to this Act, or in such other form as may be from time to time prescribed ; and must be left at, or sent by post to, the Patent Office, in the prescribed manner." (2) " An application must contain a declaration to the effect that the applicant is in possession of an invention whereof he, or, in the case of a joint appli- cation, one or more of the applicants claims or claim to be the true and first inventor or inventors, and for which he or they desire or desires to obtain a patent, and must be accompanied by either a provisional or complete specification." Before this Act it was competent for an alien to obtain 6 THE LAW OF PATENTS, a patent ; Lord Cairns, in the matter of In re WirWs Patent {cl\ went even further than this: ''I am quite clear that letters patent may be granted to a foreigner who is resident abroad for an invention communicated to him by another resident also abroad." There does not appear to have ever been a question as to whether an infant or a married woman might, tinder the old law, have become a grantee of letters patent. The new law, however, is perfectly clear, and sweeps away any doubt that might have been enter- tained on the subject. By sect. 99 of the Patent Act of 1883, it is found that due provision is made for enabling infants and persons under incapacity to take the requisite steps for obtaining letters patent. The Act of 1883, however, appears to abolish by implication one large class of grantees, viz. those persons who claimed to have letters patent granted to them for communications from abroad. It will be ob- served that sect. 6 of the Statute of Mono2Dolies deals with new manufactures zvitJiin this realm, and the construction which has been placed upon that statute has been, that the consideration for the o-rant of the patent could be O J. equally supported by the process of inventing a new manufactm-e, as by the process of importing from abroad a manufacture which up to the time of such importation had been unknown within this realm. In the case of Darcy v. Allin {h), it was held, '' Where any man by his own charge and industr}^, or by his own wit and invention, doth bring any new trade into the realm, or any engine tending to the furtherance of a trade that never was used before, and that for the good of the realm, that in such cases the king may grant to him a monopoly j^atent for some reasonable time until the subjects may learn the same in con- («) L. E., 12 Ch. D. 303. {b) 1 Web. P. C. 6. THE PATENTEE. 7 sideration of the good that he doth bring by his invention to the commonweal th^ otherwise not." So in The ClothvorJccrs of IjJSivich case (c), it was laid down that '^ the bringing of a new invention into the kingdom equally with the discovery of anything was sufficient to support the king's grant." It is true that these cases were prior to the Statute of Monopolies, but the Statute of Monopolies merely affirmed the common law, hence these cases are applicable. Edgelury v. Stephens (d) was decided after the statute ; there it was held that " a grant of a monopoly may be to the first in- ventor, and if the invention be new in England, a patent may be granted though the thing was practised ]De}^ond the sea before ; for the statute speaks of a new manufacture within this recdm, so that if it be new here it is within the statute, for the Act intended to encourage new devices useful to the kingdom, and whether learned by travel or by study it is the same thing" [d). The practice of granting letters patent to the first importers of manufactures new within this realm, has been uniformly sustained by om* Courts of Law. It would appear, however, that the Act of 1883 is intended to abolish this class of patentee, for it will be seen, that after declaring that any person alien or otherwise may apply for a patent, it says that the application must con- tain a declaration to the effect that the aj^plicant claims to be the first and true inventor. A form of this declara- tion is given in the first Schedule to the Act, and there is no provision whatever made for a declaration that the applicant is the first and true importer. We have seen that the word "invention" is con- strued by the language of the 6tli section of the Statute of Monopolies, that language has been held in Edgchury V. Stephens [d) and the succeeding authorities, to include an importer of an invention ; but inasmuch as the Act (c) Godbolt's E. 253. '//) 1 Web. P. C. 35. 8 THE LAW OF PATENTS. provides no macliineiy wliereby an importer might apply for a patent, it may perhaps be taken as the intention of tlie legislature that henceforth that class of patentee shall be abolished, and that the patent should only be granted to the first and true inventor of the invention. In 3Iilligan v. Marsh [e) it was held by Vice-Chancellor Page- Wood that a person taking out a patent and making a declaration that he is a first inventor when in truth he is only an importer of a communicated invention, mj kes a false suggestion and the patent is void. Only one of the applicants need make the declaration, so that a capitalist may join an inventor and obtain a valid joint patent. Sect. 34 of the Act of 1883 makes j^rovision for the granting of letters patent to the legal representative of a deceased inventor, provided application be made within six months from the decease of the inventor, the appli- cation must contain a declaration by the legal representa- tive that he believes such person to be the true and iirst inventor of the invention. We have now to deal with the construction of the words " first and true inventor." The reason that the common law has created a pre- rogative of the crown to grant letters patent to first and true inventors, is that the public benefit by the considera- tion which the inventor gives in return for the monopoly privilege which is granted to him. That consideration may be divided into three parts. In the first place, the patentee must be the actual in- ventor, that is, the consideration must move from him. Secondly. He must have invented a new and useful invention. Tliirdly. He must publish his invention. {(>) 2 Jur., N. S. 1083. ( » ) CHAPTER II. THE CONSIDERATION — BEING THE ACTUAL INVENTOR. An actual inventor is a person wlio, cither by accident or design, produces or discovers an art or manufacture. The process of invention may be divided into two parts. The operation of the mind, and the carrying out of the results of that operation by tlie hands. It is true that when an invention is the result of Y)\\re accident, the physical joroduction may precede the operation of the mind in perceiving its applical)ility, still, as a general rule, it will be observed that the operation of tlie mind must precede the physical production. The operation of the mind must in all cases be that of the mind of the in- ventor. The carrying out of the results of the operation of the mind may be done by the hands of the inventor, or by those of anyone else whom he may employ for that purpose. In Tennanfs case («), a material portion of the invention claimed was found to have been suggested by a chemist at Glasgow. Lord Ellenborough held, that the patent was bad because the plaintiff was not the inventor. It will be observed in this case, that although it is possible that the plaintiff was the first person to use the particular method for making a bleaching liquor, still, inasmuch as that method of producing this bleaching liquor was thought out by some one else and communicated to the plaintiff, he was held not to be an inventor. In con- sidering this question we must not confuse the idea of first manufacturer with that of first inventor. ''A." may liave invented something, it may liave pleased him to try a few experiments with his invention, and then to abandon it without publication. " B." may {a) 1 Web. r. r. 125. 10 THE LAW OF PATENTS. subsequently have invented the same thing- altogether independently of '' A." If " B." applies for letters patent he is at law the first inventor ; but should it be shown that the jjroccss of invention was not carried on in ^' B.'s" mind at all, but that ''A." communicated his ideas to ^' B.j" although with the full intention of abandoning them, '^ B." will not be the first inventor. Take, for instance, the case of DoUoiid''s Patent (h), this was an improvement in the manufacture of object glasses for telescopes. Dr. H. had made and used identically similar object glasses for his own purposes, but he had in no way published his invention. Dollond, Avithout any com- munication from Dr. H., had re-invented these object glasses ; held that Dollond's patent was good. In E. V. Wheeler (c), Abbott, C. J., delivering the judgment of the court, said: ''If the patentee has not invented the matter or thing of which he represents himself to be inventor, the consideration of the royal grant fails." In Barber v. Waldiiclc (d), it was proved that the invention was made by a workman in the work- shop of the j^a^tentee, that he communicated it to his master : the patent was opposed on the ground that the patentee Avas not the inventor. In Bloxham v. Bisee(c), the patentee had worked out the principle of his invention in his own mind, but he intrusted the mechanical details to Mr. D., an en- gineer. Mr. D. had suggested several parts of the machine to the patentee. An objection was taken that the patentee was not the inventor: the objection was overruled. It will be seen in this case, that the patentee's mind conceived the invention, and that Mr. D. was only, so to speak, the intellectual hands employed by the patentee to carry out that wliicli lie had previously conceived in his mind. The sunnning up of Mr. Baron {b) 1 Wob. P. C. 43. {(l) 1 Carp. V. C. 438. (c) 2 B. & Aid. 345. {e) 1 Wob. V. C. 132, n. THE CONSIDERATION — THE ACTUAL INVENTOJ^ 1 1 Alderson, in tlic case of Mhitcr v. Wells[f), is instructive upon this point: — "The patentee," said tlic learned judge, '' claims under the patent, stating it in his peti- tion to the crown, tliat he is the true inventor of the machine in question, and if it could be shown that he was not the true inventor, but that some one else had invented it, the crown is deceived in tliat suggestion, wliicli was the foundation on which it granted the patent, and then the law is, that the patent obtained under sucli circumstances would be void, and no action could be maintained against the party for the infringe- ment of the patent, .... If Sutton suggested the principle to Minter, then he, Sutton, would be the inventor; if, on the other hand, Minter suggested the principle to Sutton, and Sutton was assisting him, then Minter would be the first and true inventor, and Sutton would be a machine, so to speak, which Minter uses for the pm'pose of enabling him to carry his original con- ception into effect." In Lewis v. Ilarlin// ((/), Mr. Justice Bailey said: "If I discover a certain thing for myself, it is no objection to my claim to a patent that another also has made the discovery, provided I first introduce it into public use." The suggestion in that case having been that the patentee had acquired his invention by seeing a model of a similar machine which had been brought from America ; it was disproved that he had seen the model, and conse- quently he was held to be the first and true inventor. In Cornish v. Kccnc (//) Chief Justice Tindal said : '' Sometimes it is a material question to determine wliether the part}^ wlio got the patent was the real and jrlguial inventor or not, because these patents are granted as a reward, not only for tlie benefit that is conferred upon the public by the discovery, but also the (/) 1 AVob. r. C. 127. {h) 1 Web. V. C. 507. (V) 10 B. & C. 22. 12 THE LAW OF PATENTS. ingenuity of the Jirst inventor; and although it is proved that it is a new discoveiy so far as the world is concerned, yet if anybody is ahle to show that although that was new with the party who got the patent, he was not the man whose ingenuity first discovered it, that ho borrowed it from A. or B., or had taken it from a book that wa^ printed in England, and which was open to all tht world — then, although the public had the benefit of it it would be an important question whetlier he was tlip' first and original inventor of it." There is no doub that under the circumstances stated by the Chief Justice, the patentee would not be the orighial inventor. Inasmuch as we have seen that the Act of 1883 prob- ably abolishes frst importers, and recognizes the right of all persons, whether British subjects or not, and whetlier resident in England or not, to become patentees, a serious question will arise for the consideration of the Courts as to whether the validity of a ^oatent, and the claim to be a true and first inventor, must be supported upon an investigation of what has been published and become public prcjperty not only in England, but in any other part of the civilized world ; and for the purpose of calling, himself a first and true inventor, it will not only be, not sufiicient f })ublic how\ this degree of purity could ])racti( ally be obtained. It was not iiiatci-Ial to lliciii 1o iii(|uire whether these were means previously known, wliidi Ili(> companies had failed to make use of from ])ar,sImony, n(>gligence orj iii-uorance, or whether there was some new idea whicl (m) L. ]^, 3 App. ('. Hi ].. 'Jl.!. THE CONSIDERATION — THE ACTUAL INVENTOR. 15 had been developed during the course of their inquiries, which made these okl means iDracticably valualjlc when before they were not. Tliey were not at all required to distinguish new from old. In all these respects the report was quite different from a specification. But, as soon as they became aware that the gas could be prac- ticably brought to this degree of purity, their duty was to fix the maximum accordingly, and to make known to the public the means by which this could practicably be done. The report of the 31st January, 1872, is drawn up as it ought to have been. It shows that, by some means there explained, purity to a great extent could practicably be obtained, it makes no attempt to show how much of this was previously known though neglected, and it nowhere states that any part of what was now disclosed was invented by one of their own body." In the Court of Appeal Lord Justice James had said («) : '* Although it is not necessary for the determination of this suit to pronounce any final decision on this point, we deem it right to say we think it at the least very questionable whether it can be competent for a member of final commission or committee to take out a patent for the subject-matter of their official investigation, . . . it is to be borne in mind that the report then made be- longed absolutely to the State. Every fact and figure in it had been obtained at the public expense, every hour of every referee and of the secretary employed in the production of it was public time . . . the considera- ition for every patent is the communication of useful infor- mation to the public. What consideration is there when jthe information was already the property of the State." \ These judgments, although going to a point which was hot absolutely necessary for the decision of the case (for the case was decided upon the ground of want of novelty n the invention), tend to show that it was in the minds («) L. E., 2 Hi. L). at p. 832. 16 THE LAW OF PATENTS. of the judges that the mental hiboiir of making- the dis- covery being an essential element for the consideration of the grant, if that mental labour had already been paid for by the State, it failed as a consideration to support the patent. By sect. 80 of the Act of 1S8'3, " A patent granted to a true and first inventor shall not be invalidated by an application in fraud of him, or l)y provisional protection obtained thereon, or by any use or pub- lication of the invention subsequent to that fraudulent application during the period of provisional protection." This clause is only a re-enactment of that ■\vhicli had been decided to be the law })revious to the Act. In Ex parte Scott and Younfj[o)^ the servant had filed a pro- visional specification of an invention, after which the master filed a specification for a similar invention, and subsequently filed a conqDlete specification, and obtained letters patent. It was held that, under the circumstances, the Great Seal might be aflixed to the letters patent of the servant's invention, and that the i)atent might bear the date of his provisional specification. Ill tlie case of Ex parte Bates and Iicdn tlic liist provisi(jnal S2)ecificati()ii was h'l't, and in such a case letters jiatcnt will not b(> granted to the lirst applicant for any j)art of his invention, which is coveredi by the letters ])atent already obtained by the second applicant, but in tliis case; tlicro was no suggestion of' fraud on the part of tlie second aj)j)Iicant. This decision i has, however, been doubt(>d in /ir Drcrintj^s l*(ilcnt{q\,i {o) L. K., G (Jh. D. 2t31. (y) l;j Ch. 1). 3'.);{. {p) L. R., 4 Cli. 577. THE CONSIDERATION THE ACTUAL INVENTOR. 17 by Lord Cuirns, who said : ''I may, however, state my objections to that decision" [Bates and Red gate), ''which I never coukl thoroughly imderstand ; it has always seemed to me that if Parliament held out to inventors the advantage they could get from provisional pro- tection, the inventor should have the enjoyment of that advantage for the six months granted to him. Parliament intended the six months to be for the com- pletion of the invention, and for perfecting the specifi- cation, and never said that the applicant should be deprived of or lose that privilege for want of any due diligence on his part." Tlie difficult questions, however, which arise in these cases, seem to be set at rest by the l-4th section of the Act of 1883 : "Where the application for a patent in respect of an invention has been accej)ted, the invention may, during the period between the date of the applica- tion and the date of sealing such patent, be used and published without prejudice to the patent to be granted for the same. And such protection from the conse- quences of use and publication is in this Act referred to as provisional protection." The general question of concurrent applicants, where there is no fraud, that is, where each applicant is in a position to offer the consideration of mental labour, will be considered in the next Chapter. It is only material here so far as concurrent application is brought about by reason of one man fraudulently ai^propriating the invention of another. We have intimated that in all probability it will be held that the Act of 1883 has disqualified a true and first importer from becoming a patentee ; but the provisions of the Act are not so clear as to warrant our omitting to give some account of the law which has hitherto been in force, and the more so since it is evident that on the 1st January, 1884 (the date when the Act of 1883 comes T. C 18 THE LA^Y OF PATENTS. into force), there ^vill be in existence large numbers of patents granted to first importers, which will still have many years to run and which in all probability will at some time or other be the subject matter of litigation. The right of the Crown to grant letters patent to true and first importers of inventions appears to have been a common law right. We find that so far back as 1567 a patent had been granted to one Hastings (r) for the nuiking of frisadoes in consideration of his having im- ported the skill of manufactming them from abroad. So in Mathey's case, " It was granted unto him the sole making of knives with bone hafts and plates of lattice, because, as the patent suggested, he brought the first use thereof from beyond the seas." This was in the reign of Elizabeth. In the clothworkers of Ipswich case we have this (s) said, '' The king granted unto B. that none besides liimself should make ordnances for battery in the time of war : such grant was adjudged void. But if a man hath brought in a new invention and a new trade in the kingdom in peril of his life and consumption of his estate or stock, &c., or if a man hath made a new dis- covery of anything, in such cases the king, of his grace and favor in recompense of his costs and travail, may grant by charter unto him that he only shall use such a trade or trafique for a certain time ; because at first the people of the kingdom are ignorant, and have not the knowledge or skill to use it. But wlicii tliat patent is expired the king cannot make a new grant thereof." This was in 1015. Tlien cani(^ the Statute of Monopolies, and we have seen that the (Ith section of that Act carefully cxcei^ted ''the solf> woi'king nr nmkiiiu" of any ni;iim('r of new mainifactures within this realm, to the true and first inventor or inventors of sucii nianul'acturcs, which others (;•) 1 W.l.. J'. ('. (i. (s) 1 W.'b. 1'. C. (i ; 1 (.'(.(lb. '2')2, 254. THE CONSIDERATION THE ACTUAL INVENTOR. 19 at the time of making such letters patents and grants sliall not use." Afterwards came the decisions of Darcij v. lUUn {t\ and Eilgehury y. Stevens (n), where it is said, "for the statute speaks of new manufactures within this realm, so that if it be new here it is within the statute, for the Act intended to encourage new devices useful to the king- dom, and whether learned by travel or by study it is the same thing." See the remarks of Eyre, C. J., in Boulton V. Bull {x). In the early days of manufacturing enterprise, when true inventors were so exceedingly rare as scarcely ever to be heard of, the word inventor had not acquired the meaning which it has at present, and seems to have been used to designate a first introducer rather than a first inventor. In the early reports shortly succeeding the Statute of Monopolies we do not find the judges in any difficulty in dealing with the words ''true and first inven- tor," showing that the word inventor had not the precise meaning which it has since acquired. In MarscJen v. Saville Street Co.{f/) in the Court of Appeal, Jessel, M. E,., said, speaking of imported in- ventions, '' It has been argued that before the Statute of James such patents were valid and were allowed by the judges, and that the statute merely restricts the duration of the patent and does not destroy the right as it pre- viously existed. Even supposing that were so, the statute defines who are considered to be worthy recipients of the grant of such a monopoly, as it was then called, and the definition so given has been followed ever since. It is difficult to say a 2^^'ioyi on what principle a person who did not invent anything, but who merely imported from abroad into this realm the invention of another, was treated by the judges as being the first and true inventor. (0 1 Web. P. C. 6. {x) 2 H. Blue-. 191. (m) 1 AVeb. P. (\ ;3o. (y) T.. P., 3 Ex. D. '10\l. c2 20 THE LAW OF PATENTS. I liave never been able to discover the principle ; and although I have often made encpiiry of others, and of some Avho are more familiar with the patent law than even I am, although I cannot pretend not to possess a considerable familiarity with it, I could never get a satis- factory answer. The only answer was, '' It has been so decided and you arc bound by the decisions." But it is an anomaly as far as I know, not depending on any principle whatever. It has never been declared by any judge or authority that tliere is such a principle, and, not being able to find one, all I can say is that I nmst look on it as a sort of anomalous decision which has ac- quired by time and recognition the force of law." A patent granted to a British subject, in his own name, for an invention communicated to him by a foreigner, the subject of a state in amity with this country, is not void, although such patent be in truth taken out and held Ijy the grantee in trust for such foreigner (,?). Sect. 23 of the Act of 1883, provides for the regis- tration of owners of i)atents. Sect. 80 proliibits the registration of any trust. Tliis does not abolish trusts, but merely prohibits the registration of trusts. The importer of an invention need not be a meri- torious imj)orter, but may only Ije a mere agent, Beard V. Ei/erlon i^a). The importer need not liavc accjuircd the inloniiation from a foreigner abroad, ])ut may liave done so from a liritisli subject abroad (/>). Jiiit a conmnmication nuide in England l)y on(> British subject to anotljcr, of an invention, does not make tlic person, I0 whom ihc coinniunical ion is niaiK', the lirst and line inventor Mitliin tlic meaning oi" the statute (2) Jiranl V. Kyndni, '.) V. 13. [hj Mchls v. Ross, 8 C. 13. at 97. I». 710, ]...!• Kiirl, C. J. {a) Siijirii. ;it ]>. lL'I>. THE CONSIDERATION THE ACTUAL INVENTOR 21 21 Jac. 1, c. 3, so as to enable liim to take out letters patent for the invention (c). When a patent is taken out as for an original inven- tion the subject of the i)atent being-, in fact, a communi- cation from abroad, the patent is void. MilUgan v. Marsh (d). This latter case very much strengthens our previously expressed opinion, that the Act of 1883 abolishes patents for imported inventions, since if the directions of the Act be followed, it is impossible to take out a patent for such an invention without making a false suggestion within the meaning of 3IilUgan v. Marsh. '' The merit of an importer is less than of an in- ventor and it is an argument against the patent, that it was imported and not invented. I do not say it takes away the merit, but it makes it much smaller." Per Lord Brougham in re Soamc's Patent (<'). We have now shown what is meant when it is said that the consideration for a patent must move from the patentee personally. (c) Marsden v. Sav'ille Street (d) 2 Jm\ N. S. 1083. Co., C. A. ; L. E., 3 Ex. D. 203. (e) 1 Web. P. C. 733. 22 THE LAW OF PATENTS. CHAPTER III. THE CONSIDERATION (contillUcd) — A NEW AND USEFUL INVENTION. The second branch of the consideration is that the in- ventor must have invented a new and useful invention. It is evident that a person may liave invented a manu- facture whicli, aUhough new to him, may not be new so far as the world is concerned. He may have had all the work and labour of discovering for himself a process which, although not generally known, yet tlie previous knoAvledge of which may amount to prior user. In such a case, inasmuch as the public are considered at law to be in full possession of the invention, it is evident that the a})plicant for letters patent has no consideration to offer in return for the grant. The Gth secticjn of the Statute of Monopolies defuies a new inven- tion as "any manner of new manufacture which others at the time of making such letters patent sliall not use." AYe have seen tliat tlie Act of 1883 has adoj^ted this definition of an invention. We have now to consider tlie legal meaning Avhicli has been placed u2)on the words *' New Manufactures." A new manufacture does not mean, as it is errone- ously sonu'tinu\s supposed, onl}' a new article of manu- facture, but it also means a new process (U- method of manufacturing sometliiiig n(;w or old ; it does not mean a new ])iiiicii»l(' ol' manufacturing, but it means a new application of ])rlnciples. No man can claim an invention In a principle (*-/), for that would Ix' to Invent the (a) linulln,, V. Jiiill, '1 II. ]'.l. .\rils,,n, 1 W'rl.. P. ( '. OT.'} ; Cross- 479; J/ornbfoirrry. lioulton, H T. />,/ v. J'o//rr, ]\Ia. . 1'. ( '. 210; 1,'. l')I ; Jupr Y. /'rn/f, 1 Wil). I'. I'dl Icfson v. Tlic (/as Liijlit Co., ('. I IC; Nrihonv.IfdrJ'iinl, 1 W'.l.. L. K., 3 App. Cas. 21G. I'. ('. ;M2; The llonsrhiU Co. v. THE CONSIDERATION — A NEW AND USEFUL INVENTION. 23 laws of nature, wliicli have always existed. Man merely discovers the principle, and if, when he discovers a principle he can discover a method of utilizing the principle so as to make it applicable to the production of a new manufacture, he can obtain a patent for the method. In Ilornhloivcr v. Boulton [b), decided in 1799, the patent was granted for a method for lessening the consumption of steam and fuel in fire engines, by apply- ing certain principles of combustion. It was held that the invention could be made the subject of a patent. The language of the learned judges does not seem very clearly to expound the doctrine upon which that judg- ment was based; but Mr. Justice Grose said, "I am inclined to think that the patent cannot be granted for the mere principle; but I tliink that, although in words the privilege granted is to exercise the method of making or doing anything, yet if that thing to be made or done be a manufacture, and the mode of making that manufacture is described, it thus becomes in effect (by whatever name it may be called) not a patent for the mere principle, but for the manufac- ture of the thing so made, and not merely for the principle upon which it is made." In Boulton v. Bull [c) the Lord Chief Justice Eyre said: ''When the effect produced is some new substance or composition of things, it should seem that the privilege of sole working or making ought to be for .such new substance or com- position, without regard to the mechanism or process b}'- which it has been produced, which, though perhaps also new, will be only useful as producing the new substance. When the effect produced is no substance or composition of things, the patent can only be for the mechanism, if new mechanism is used, or for the process, if it be a new method of 02)erating with or without old mechanism, by which the effect is produced." Mr. Justice {b) 8 T. Eep. 95. (c) 2 H. Bl. 463. 24 THE LAW OF PATENTS. Ilcath spcakinj:: said. " W'liat tlicii falls within the scope of the proviso y siu-h iiiamifactiuvs as are rodiK'il)lo to two classes: the iirst class includes macliin^'ry, tho second, substances, such as medicines formed hv chemical and otiier jjrocesses, where the vendihle suljstance is the thing })r-^\ important inventions were inventions in the process ot" making old and well-known articles of conmu'rce, and so it became eviflent that should the c<»nstruction of the words '' n(»w numufactin-es" b<' entirely limited to th.e production of new articles, to the exclusion of the process of manu- facturing old articles by cheaper, better and more ini- ])rov<'d methods, the inducement which the connnon law inten bottoms of sliijis. Tlie improve- ment consisted of usin^- an alloy of zinc and coj)per in certain pro|)ortions for the manufacture of the jdates, and for this pur})ose copper alone had hitherto been used, '^riie alloy of zinc and copper was to ])roduce an old and well-known material, still tli(> ajiplieation of that old material to sheathinj^ of ships had not before been dis- covered, and upon its bein^i^ shown that such an applica- tion was a '^'•reat improvenuMit on the old nu'thod of Hheatliin;:: with cojjper, it was laid ili;it the patent could b(; sustained. The niei-e application of a known instrument or machine to a new purpose will not sujiport a j»atent unless the means or metho!,. V. Cutler(u) Lord Ddimini said: ''With (y) 8 E. & n. lit p. 1017. (/) 7*011? V. Tuuninn, 9 Jur. I ().><). (r) l.l W. ]{. at p. VX). (m) 3 C. & K. 21.1. («) 2 Woh. 1'. C. lO.'l. THE CONSIDERATION A NEW AND USEFUL INVENTION. 29 regard to tlic third and fourt]i claims, in which the defendant claims the application of tubes in the con- struction of tubular flues, it appears to me that he has no right to take out a patent for the mere application of particular things to any particular purpose. If he had made a new combination, that would have been a new discovery, and a proper subject for a patent ... I think that the application of an article to produce any ])articular result, the party having no claim either to the mode of producing the article, or to the mode of applying it for attaining that result, forms no ground for a patent." Lord Denman's distinction between the mere a23plication of an old instrument to a new purpose and a new combination, appears to have been followed, and to be a correct exposition of the law. In the case of Sterner v. Heald {x), in the Exchequer Chamber, the head-note is inex^^licablc and erroneous. If the case itself is read, it Avill be found to be in accord- ance with the other decided cases on this subject : In the ordinary process of dyeing, by means of madder, the colouring matter was obtained from fresh madder by the apj^lication of hot- water ; the refuse, after boil- ing, was called spent madder. It had long been knoTvai to dyers, that a portion of the colouring remained in the spent madder, but it was not known how to ex- tract it, as it remained in combination with the j^lant ; recently it was discovered that by means of acid and hot-water the ])ure colouring matter of madder, called garancine, could be obtained from fresh madder, and that this i)rocess extracted the colouring matter of the plant. The plaintiff obtained a patent for the new manufacture of garancine, by applying the same process of acid and hot-water to the sj^ent madder; since his invention the spent madder, which was previously worth- less, became valuable. («) 20 L. J. Excli. 410. 30 nn: law oi' tatknts. At till' trial L'liifl Baruii J'ulluck tlirccteil the jury to fiiul a verdict for tlie dofondaiit, upon the ground ap- parently that there Avas no subject for a i)atent ; in re- versing this decision Mr. Justice Pearson said : " Now s])cnt madder might he a very different thing from fresh maddiT in its i)ruperties, or it might be in eft'ect the same thing as fresh madder in its properties, chemical ami otherwise, with ihc difference <»nly that part of its colourin"- matter had been already extracted. A^ain, the properties, chemical and othi>rwis{\ might or might not have been known to chemists and other scientific persons, so that they could liud out whether fresh madder and spent madder were different or substantially the same things. The j)oints a})i)ear tons to be questions of fact, and nuiterially to alfect the validity or invalidity of a j)atent." It will aj)})ear, therefore, that the Court were of opinion tliat it was a (juestion of fact whether spent nuidder and Iroli madder weic tlie same thing in their chemical i)roperties ; if they were, no patent; if they were not, the validity of the jjatent would be sustained, but the fact nuist be decided by the jurv. in />'//>// V. /'ba; (//) Chief Baron Pollock graphicallv illustrated the ])oint we aie now discussing, he said: "I think if one man invents a new mode of lo(»king at the moon, Sijmebody else cainiot take out a new patent for looking at the sun. If a man were to take out a patent for a t<'lesc<»pe to be u>ed to make observations on land, I do not think anyone could huy, * 1 will tak(^ out another j)atent for another telescope to be used for taking observations (»n tlu; s(.'a.' " That cas(» was idtimately confirmed in the House of Lords (,r). In Brook v. Afifoii, Baron Martin Kaid(f/): ** The aj)j)li(ation of a well- known tool to work ju'eviously untried nuiterials, or to jirodiu'o new fonns, is nf»t a subject (»f a jiatent." ^y, Miirrori..'M 1'. C. IGI. (fl) K K. & J5. Ih;,. (x) 5 II. L. ('. 707. THE CONSIDERATION — A NEW AND USEFUL INVENTION. 31 It is evident to anyone considering these cases, that the border line is exceedingly fine. In Penn v. Bihhu [h) Lord Chelmsford, L. C, recognized the difficulty of stating any definition which should be applicable to any case. He said: "It is very difficult to extract any prin- ciple from the various decisions on this subject which can be applied with certainty to every case, nor indeed is it easy to reconcile them to each otlier." He then proceeds to dissent from the definition given by Lord Campbell in Brook v. Aston ^ doubting the accuracy of the report, and proceeds to say: '' Lord Chief Justice Cockburn ap- 2:)roaches much nearer to the enunciation of a principle, or at least of a rule for judging in these cases, in IlarivoodY. G. N. R. (c), where he says, '' although authorities esta- blished the proposition that the same means, apparatus, or mechanical contrivance cannot be applied to the same purpose, or to purposes so nearly cognate and similar as that the application of it in one case naturally leads to the application of it when required in some other, still the question in every case is one of degree, whether the amount of affinity or similarity wdiicli exists between the two purposes is such that they are substantially the same, and that determines whether the invention is so suffi- ciently meritorious as to be deserving of a j^atent.'" The case of Hariuood Y. G. N. i?., quoted above by the Lord Chancellor, was carried to the House of Lords, where Lord Chelmsford, then Lord Chancellor, said : '' The question is, whether there can be any invention of the plaintiff in having taken that thing, which was a fisli for the bridge, and having applied it as a fish for the rail- way, upon that I think the law is well and rightly settled viz., that you cannot have a patent for a w^ell-known mechanical a2)pliance, merely because (5) L. E. 2 Ch. 127. 223 ; Jordan v. Moore, L. E., 1 C. (c) 29 L. J., Q. B. 19.3; also P. 624 ; Parhes y. Stevens, L. E., Ralston V. Smith, 11 H. L. Cas. 8 Eq. 367; L. E., 5 Ch. 3(5. 32 Tin: law or patents. it Is aj)})llc(l in a iiuniiu'r or to a jjiirposo wliicli is anal();;:()iis t<» the maimer i»r purpose in or liy wliicli it has liitliurtu been notoriously usecl(uj»|iose it will not now be disputed that a new cum- liination of (»ld materials, so as to jiioduce a new elYect, may b(! the subject of a })atent.'' Tiu're may be a valid patent for new combination of materials previously in use for the same ])urpos(? (//). In Foxivi'll V. Jiosloc/c(/i), Loid We^tlniiy said: " it" a <'ombination of machinery for eilectinj^ certain results has jireviously existed and is well known, and an im- provenu'iit is afterwards discovered, consisting, for examjile, of the introduction of some new ])arts, oi- an altered airan;:-ement in some |)ait ieulars of the existin*^ constituent paits of the machine, an imjtroved arrange- ment or improvc(l combination may be patented." Jiovill's patiMit consisted of a comljination of a blast, with an exhaust of air to millstones, for the ]iin'j)ose of preventing the heat generated in grinding cnm and (d) II II. b. (>UH. 6:^1 X. S. I.'l"; Ornixnn v. Clarkr, 11 \e) Curlin V. I'latt, 3 ( h. D. C. H., N. 8. 175. 135, n. ; Uunhtnu v. franlr;/, L. U., (/) Daw. p. r. 207. 10 t^}. 622; The Piilnit liottlr l-ln- {g) Vvr I/»ril Eldon, Ilill v. rrlnpr ('.,. V. Sttjmrr, r, C. B., N. 8. Tfiompion, I Wob. V. C. 237. 161 ; JIurtun v. Mabon, 12 C. 13., (Aj 12 W. li. 725. THE CONSIDERATION — A NEW AND USEFUL INVENTION. 33 saving the dust generated. It was proved that a blast and an exhaust had been used separately. But that the combination was a substantial improvement. The patent was held good (/). In Crane v. Price {Ji:\ the j^atentee, in his specification, after specifically disclaiming the use of the hot blast or the use of anthracite coal, proceeded : '' What I do claim as my invention is, the application of anthracite or stone coal or culm combined with the using of hot air blast in the smelting and manufacture of iron from ironstone, mine or ore as above described." The patent was held valid for the combination. This decision was afterwards questioned by Lord Justice James in Murray v. Clayton [l), but not on the ground that a combination could not form the subject of a patent. In Murray v. Clayton, the decision was followed and a patent of this description was upheld. A patent was granted in 1870 for railway signalling apparatus ; in 1871 another patent was granted for other improvements in railway signalling apparatus; in 1874 the plaintiffs obtained a patent for a combination which, in effect, was constituted of the improvements in the 1870 and 1871 patents ; any person of ordinary know- ledge of the subject Avould, by placing the two inA^entions of 1870 d!id 1871 side by side, be able to effect the desired comlnnation without making any further experi- ment or gaining any further information. Field, J., held the 1874 patent void(?«). In Cannington v. Nutfall (n), it was held that the patent could be sustained, although each principle or process in it was previously well known, provided that the mode (0 ^0177/ V. Kei/icorfh, 7 E. & gerfieU^. Jones, 13 L. T. E., N. S. B. 725; Brunton v. Haickes, 4 B. 142. & Aid. 550 ; Lewis v. Davis, 1 (k) 1 Web. P. C. 393. Web. P. C. 488 ; Carpenter v. {I) L. E., 7 Ch. 584. Smith, 1 Web. P. C. 538 ; Allen {in) Saxhy v. Gloucester Wagon V. Rawson, 1 C. B. 551 ; Lister v. Co., L. E., 7 Q. B. D. 305. Leather, 27 L. J. Q. B. 295 ; Dan- («) L. E., 5 H. L. 205. T. ^ 34 llli: LAW OF PATENTS. of combining these processes was new and produced a beneficial result, and provided also that the specification claimed not the old processes or anv otiier, but only the new combination. This case is very instructive, as clearly demonstratinff what is meant by a " new combination." Having now consideicd the interpretation which has been placed by the Courts upon the word *' manu- facture," we next examine what has been held to be a '* new manufacture," that is to say, to what extent j)rior user is an answer to an action for the infringement oi. a patent. It is evident, that, if the alleged new nuuui- facture can be shown to have been in the possession of the public before the application for the grant of letters patent, that there is no consideration for the grant. The patentee oilers to the public, in return for the monopoly privilege, his information and knowledge respecting a new manufacture ; if tlie ])ul)lic is already })0ssc8scd of the information or knowledge the su})posed inventor has nothing to give. Wc shall see hereafter, when we dis- cuss the practice of the Courts in actions for the infringe- ment of ])atents, that tlie bui'den of proof lies on the alleged infringer when he sets ujt a defence of prior user, i. r, of want of novel! \' in the alleged manufacture at the date of the patent; and it is as well to keej) this in mind in reading the cases which hav(* been decided as to what amounts to prior user. We have seen that thi» Statute of iMonoj)olies is a mere declaration of that which was the law before it was passed ; it was alwavs held l>v the ( 'ourts tliat t]i(» ])rin- ciple of a j)atent grant was not an arbitrary advantage granted l)y the Crown to one Hubject in detriment to the rest, but that it was an advantage grantecl ]»y the Crown to persons who introduced a new manufacture, and that it was granted upon principl(\ not f(jr the benefit of tlie juitentee but for the benelit of the public: it being considered t«. th(> benefit <»f the public that THE CONSIDERATION — A NEW AND USEFUL INVENTION. 35 reasonable encouragement should be given to inventors to induce tliem to devote their time, energies and resources to the improvement of the arts and manu- factures of the realm. In the case of Hasting'^ s Patent (^r), decided in 15C7, the patent was in consideration of the patentee having brought into the country the making of trisadoes as they were made in Haarlem, in Amsterdam, being not used in England. The infringers defended the patentees' bill in the Exchequer Chamber, on the ground that they had made bales very like to Mr. Hasting's frisadoes, prior to the date of Mr. Hasting's patent; they were therefore not restrained from making bales like his frisadoes. The monopoly patent granted to " one Humphrey, of the Tower, ' for the sole and only use of a sieve or Instru- ment for melting of lead, supposing it was his own in- vention, and therefore prohibited all others to use the same for a time; ' and because others used the like instru- ment in Derbyshire, contrary to the intent of his patent, therefore he did sue them in the Exchequer Chamber by English bill, in which Court the question was whether it was newly invented by him, whereby he might have the sole privilege, or else used before at Mendip, in West country, which if it were there before used then the Court were of opinion that he should not have the sole use thereof (-s)." The general question in disputed patents is whether the invention was known and in use before the patent ? In Rex V. Arhvright{t\ decided in 17«5, Mr. Justice Buller gave a definition of a novelty which now would be considered too wide. " Thus the case stands as to the several component parts of this machine, and if (;•) 1 Web. p. C. G. Liardet \. Johnson, 1 Web. P. C. (s) 1 Web. P. C. 7 ; Darcy v. 52 and 53. AlUn, 1 Web. P. C. 6 ; MUchell (/) 1 Web. P. C. 64. V. Reynuhh, 19 Mod. E. 130; d2 3G Tin: LAW ((F I'ATKNT.S. Upon tlicni you are satisfied that none of them 'svere in- ventions unknown at the time this j)atent was <::rantecl, or that they were not invented by the defendant upon cither of tliese points, the prosecutor is entitled to your verdict." When we speak of an invention being" new, wo mean that it must be new so far as the ])ul)He are concerned, that is, so far as tlie means of information of tlie public goes. If a man liad invented a machine and made it and used it secretly, so tliat no imv but liim- self had access to it, and the general ])ublic had no means of information upon it, there is no doubt that a subse- (pient inventor, re-inventing, so to speak, the same nui- chine, and disclosing his knowledge to the })ublic in his specification, would be entitled to a valid patent. A machine made by the person wIkj kept it secret would not amount to such a j)ublic knowledge as would antici- pate the invention of the patentee, but if the iirst-nuule machine liad Ixcu used in such a manner that other persons had been enabled to accpiirc tlic knowledge of its use and application, there would be a j)rior user to void the suljsecpient 2)atent. L(M'd Chief .lustice Tindal said, in Cornish v. Kerne (ii): ''If it was known at all to tlie world pul)lic]\-, or pi-actiscd nj)cn]\- so tliat any other person might have tlic means of ac(piiring a knowh'dgc of it as well as {\w, invintor, then the ))atent would be void.'' In Carpenter v. Smith (.r), Lord Abinger, C. 15., analyzed the meaning of the words *' public use." " Public use does not mean a use or exercise by the public, but a use or exercise in a j)u)>lie nuumer." Taking that as a definition of the nu\ining of \ho words "j)ublic use," it will l)e aj>parent that the (pu'stion of j)rior user is one of fact, and one which will have to be considered by (m) 1 Wob. 1'. ('. r,OS. lai) ; Marfan V. Seaiiard, 2 11. & (x) 1 Wob. V. f '. 5.3-1. Soo also W. .VI I ; lirtfn v. Mrnziet, 1 E. & Inrij, V. Marliixj, lO H. & C. 20; K. lOOH; Jlanrnodx. (i. X. Ii., 29 .\fn.f., V 1A„/,, 1 W.l. V C\ L. J., Q. r. ir»n. THE CONSIDERATION — A NEW AND USEFUL INVENTION. 37 a jury or a judge sitting as a jury upon the facts of each particular case. The decided cases only offer illustrations of that which has been held to be public use or prior user in the different cases which have come before the Courts. In Walton v. Bateman (?/), Cresswell, J., said, referring to the words in the statute, " which others at the time of making such letters patent and grants did not use," said: ' ' Xow that has been held to mean a user, not by way of experiment, but a public user, in distinguishing which the knowledge of the parties as to the article in use will be material for your consideration Whether it is a mamifacture within the meaning of this Act I apprehend to be a question of law." The learned judge then proceeds to sum up to the jury upon the ques- tion of fact as to prior user, " First, was any article made before, answering the purposes or having the properties of that which the j^huntiff has made and claimed as in the patent then even sup- posing that article did embody the principles of the plaintiff's, so as to present to persons using it the pro- l^erties, qualities and advantages in principle of that article which the plaintiff makes, the question for 3'ou will be whether that user is not to be considered rather in the nature of an experiment than of any public use of the article, so as to deprive the plaintiff of the fruit of his discovery in respect of this manufacture." The learned judge then proceeds to quote the words of Tindal, C. J., in Cornish v. Keene{z)\ '''The question raised for the jury was this, whether various instances brought forward by the defendants amounted to proof, that before or at the time of taking out tlie patent the manufacture was in public use in England, or whether it fell short of that point and proved only that experiments had been made in various quarters and had been after- (y) 1 Web. P. C. 615 to 619. {z) 1 Web. P. C. 519. 38 THE L.\W OF PATENTS. wards abandoned/ " It is very dillicult to reconcile the meaning of Mr. Justice Cresswell wlien lie says, tliat '' the question of prior user is one for the jury,'' with his remarks in the latter part of the judgement. " The third issue is much wider. The defendants say that tho alleged invention was not, nor is, a new manufacture within the meaning of tho statute concerning monopolies. Now that is put to him as a question <»t law . . . and I am confirmed now, on further consideration, in tho o]»inion I ])reviously expressed, that there is sufHcient of a new manulacture in this case to justify and maintain tho patent that has been granted. I think that there is a new i)rinciple developed, carried out and embodied in the mode of nsing that j)rinci})le." The learned judge must have had ])resent in his mind that the })oint of law was as to whether the manufacture was a manufacture in tho meaning of the statute or not, for the novelty of tho manufacture is certainly a question of fact. As further illustrating the distinction between ^' jiublic use" and " secret use," we may quote the words of Mr. Justice Williams in Jluncoclc v. SomrrvcU, which is quoted in *' Newton's London Journal," \'nl. XWIX. p. IVs. "The defendants say that the Invention had been sub- stantialU' published and was in use, not in secret use, but in public use in Kngland before the date of the patent, and if that is so, it would entitle the defendants no doubt to a verdict ujjon this novelty issue. I'jton that part of the case the view that it seems to me ought to bo taken by you is this, you will first consider whether tho material wa.s before the public; it is not necessary that it should bo UHod }>y th(? public if it is in jjublic use, not in secret use. ... I >h«»uld here say that I do not tliinl\!»it neces- Hary the u.se should be actually for sale; if it were in public u.se it need not b(» sold ; it would be suHicient, for instance, if it were in use, handed about the country for tho purpose of attracting customers. If you should think THE CONSIDERATION — A NEW AND USEFUL INVENTION. 39 that the material being so in use, it was so palpable that you could make it when you got the material, that sub- stantially the disclosure of the material was a disclosure of the means of making it, that would be a public use." In Stead v. Anderson (.e-). Baron Parke placed some con- siderable limitation of the meaning of the words ''public use" in saying, "if the mode of forming and laying blocks at Sir W. Worsley's had been precisely similar to the plaintiff's, that would have been sufficient user to destroy the plaintiff's patent, though put in practice in a spot to which the public had not free access." It is difficult to draw the line precisely between public and secret use : we do not suppose that for the purpose of showing that some use was secret use, it would be neces- sary to show an intention of secrecy, but in all cases it will be a matter of fact whether the use was so private and so secret as to make it practically impossible that the ])ublic should become acquainted with the manufactm^e. Mr. Justice Erie, in Heath v. Smith («), cast a doubt even upon w^hether secret use would not amount to anticipa- tion. He said, " If one party only had used the process and had brought out the article for profit and kept the method entirely secret, I am not prepared to say that then the patent would have been valid." But this seems to be in direct contradiction to the decision in Dolland^s Case (h). In that case the objection to Dolland's Patent was, that he was not the inventor of the method of making new object glasses, but that Dr. Hall had made the same discovery before him ; but it was held, that inasmuch as Dr. Hall had confined it to his closet, and the public were not acquainted with it, Dolland was to be considered the inventor (t-). (z) 2 Web. P.O. 149. See also (0 See also the remarks of Stead V. WilUams, 2 Web. P. C. Buller, J., iu BouUon v. Bull, 2 H. 13G. Bl. 463 to 470, and Mr. Justice (a) 3 E. & B. 256. Dallas in Hill v. Thompson, 1 Web. {b) 1 Web. P. C. 43. P. C. 244. 40 THE L.VW OF PATENTS. In Beflsv. Xeilson ( may 1)C public use of a i)atented article, without actual sale of the goods manufactured." There are some conflicting oases on llio subject of secret use, Tt does not appear to be open to nuicli (loubt tliat purely secret use, ^vithout i)ublicatlon, even if accompanied with the sale of the article manufactured, provided the article itself, by its aj)- pearancc or other qualities, does not disclose the in- vention, ouiiht not to invalidate the letters patent <,n'anted to a subsecpient inventor, since he is in the position to and does jifive to the public the full con- sideration rerpiired by the Statute of Monopolies and the comuKm law, for the i)atent grant which he aj)plii's for. On the other hand, if the secret use has been by himself, and he <-)nly a})plies for letters i)atent when ho has any fear of his invention being discovered, then, j)robablv, the })revious secret use of lb(> inventor would be held to invalidate his patent; Init that nuist be on the ground of want of bona fides on tlie j)art of tlie inventor, and not on the ground of prior user, and want of bona fides has always Ix'cn lidd to invalidate letters patent (<•). 'IMiis (pu'stion is discussed hereafter (]). 47). In Smith V. Ditrldmn^ a Scotch case (/), the Lord President said, "In order to invalidate letters j)atent on the ground of previous use it is nect^ssary not only that the use sliall liave Ikm-ii \\v'u^Y to the dale of letters patent, but that it should be a ]iulilic and imi a secn.'t use," The remarks of i.onl ihamwcll, in lliUa v. J^mdnH (itLsllijItt Co.(f/), on tliis suljjcct were as folh)W8: " If a person lias invented anvthing wliich istlu' subject of a patent, and lias kr-jjt it to lniii>eh or eounminieated it j»rivately to one or two, in fact lias not made it (rf) L. R., 3 Ch. 129. (/) 19 C. 8. G9I. («) 8oo 7Vn;iflfi/'* ca»e, 1 Wob. (ff) 5 TI. & N. .33fi. P.O. 125. THE CONSIDERATION A NEW AND USEFUL INVENTION. 41 public knowledge, if anyone else discovers that invention it is new, that is to say, new in the sense that the first invention has not been published." There is another description of anticipation which is capable of invalidating a patent besides that of public use, and that is prior publication. Prior publication means the printing, writing or publishing of some docu- ment to which the public have access, containing such a description of the invention as will enable a practical man to carry it out from the description given. Vague hints or descriptions of experiments, incomplete, or im2:)erfect, are not sufficient to invalidate a subsequent patent. It is not necessary that that which is described in the book or publication should have been carried out in practice, it equally anticipates the patent [h). The question will always be one of fact, depending on the circumstances of each particular case, and the point which should be left to the consideration of the jury is, wlicther upon the whole evidence there has been such a publication as to make the description part of the public stock of informa- tion (/). It is necessary that the description in the publication which is relied u23on as evidence of prior publication, should be such as will when carried out produce the patented article ; otherwise, however similar the descrip- tion may be, if it will not produce the alleged invention it will not amount to anticipation (/). Yicc-Chancellor Wood, in Bctts v. Menzies (Z"), said, ''I think that if a man sits down and takes out a patent from his own conjectures without ever having tried the experiments set forth in it, that will not invali- date a subsequent patent taken out and practically (Ji) See The House/till Company P. C. 142. V. Neilson in the House of Lords, {j) Miintz v. Foster, 2 "NVeb. 1 Web. P. C. 718, n. P. C. 94. {{) Stead V. fnUiams, 2 Web. {k) 3 Jur. N. S. 358. 42 THi: i^^w or patents. worked, ospooiallv wlion it turns out tliat tlic method prescribed by the earlier i)atent is praetieally useless." This remark of the learned Vicc-Chancellor indicates h(»\v ditlicult 11 thinscrip- tion in the book or specilication would be sulHcient to invalidate any subsequent i)atent for the same in- vention. ill Jh'f/s V. Mcnzics [ante) the Vice-Chancellor had before him a case where the method described in the earlier publication was jiractically useless. In that event there is no doubt that the descri])tion would not invalidate a subsequent j)atent, because I'urther invent idii would bo necessary to brlii«^ the matter to ii successful issue. When Jirll.'i V. JIt'n.vif[uent jjutcnt (n). Ililh v. London Gas Lii/lit Conipan// (o) illustrates ver}' clearly the prin- ciple laid down by Lord Westbury in Bcfh v. Jfcnzics. The plaintiff obtained a patent for tlic iin[)loymcnt of hvdrated oxide of iron in purifying coal gas. A specifi- cation was put in evidence as puljlished some ten years prior to the j)hiintitrs })atent by one C'roll, in which he said that coal gas could be purified by using the oxide of manganese, the oxide of zinc, or the- oxide of iron. Now there arc two descriptions of oxide of iron, hydrated and anhvdrous. Anlivdrous oxides of iron will not purify coal gas. It was held, therefore, that inasnuich as further experiments were required to discover that the action of li\(lrated oxide of iron wus diiVereiit tVom that of aidiy(U'(nis oxide of iron in tlie pui-lli<-;it ion of coal gas, that tlie antecedent speeilieation did not anticipate^ the plaint iifs specification. In Ni/l.i v. Et'fnif<(p) \jm\ A\'estburv said : '* The ante- cedent statement must, in oidi r In invalidate the Hubse(pU'nt patent, be such that a person of ordinary knowledge.' of th«' subject would at once ])erceive and understand and in- aiih* practicallv to aj)j»lv the dis- coverv without the nccessitv of making fuithcr experi- mcnt.s." It is not necessary that tlie book ct»ntainiiig the description of tlu" invention should be sold so as to constituttj an anticijiation. Men; exliibition in a hook- (hj } oil tit/ V. Frriiir, I'J W. \{. Jlairixoii, Cox, Walker ^- t'u., 901; I'limplon v. Spillrr, L. ]{., L. !{., IM Cli. D. 720. fi f Ti. I), n 2 ; aU) I'atlrrtnn v. (iaa (n) '2'J L. J., Ex. 109. Liyht and Cokr Co., L. K., .T App. ' p] .Tl L. J., ('\\. 403. Co*. 2.3t», United Telrphone Co. v. THE CONSIDERATION A NEW AND USEFUL INVENTION. 45 seller's window for sale is sufficient publication, or send- ing it to a bookseller's in this country to be published. " There is no difference between a foreign inventor and an English one if, when the inventor is a foreigner, lie publishes the book in a foreign language and sends it over to the booksellers in this country for the purpose of being sold" [q). Prior publication in a foreign journal and in a foreign language will invalidate an English patent if it can be shown that a single copy was deposited in England in a public place, and was open to public ins^^ection (r). An inventor may invalidate his own invention by previous publication in a specification. For instance, if an inventor applies for letters patent and files a specifica- tion, and after the ^publication of the specification aban- dons it and begins again applying for letters patent for the same invention, the previous publication of the speci- fication will invalidate a subsequent patent. Prior to the Act of 1883, it would have been otherwise if he made his application for a second patent prior to the expiration of the period of provisional protection for the first inven- tion, and therefore before the first specification had been published, provided that he had not in the meantime published his own invention [s). The secret manufacture and sale by the inventor himself of a subsequently-patented article j^rior to the date of the patent, would of itself constitute an anti- cipation of the invention. This branch of the subject is surrounded with considerable difficulty, for bearing in mind that the consideration which the inventor gives for the patent is the information which he is in a position to give to the world, it is difficult to undcr- {q) Per M. E. in Lm^g v. Gls- L. E., 21 Ch. D. 720. home, 31 Bevau, 135. (s) OxJcy v. Iloldcn, 30 L. J., (r) United Telephone Co. v. C. P. 68. Harrison, Cox, Walker ^* Co., 4G THE LAW OF PATKNTS. stand upon what i)riiK'i])lo, if lio koops tliat infoiTna- tlon to liiniself and nianiifacture.s an articlo which of itself does not disclose his invention, he should not have a patent ; since he is always in a position to give the infonnation to the puhlic, and to ^ive a valid considera- tion for the grant. Tidess indeed we rcjj^ard the grant of letters patent, as not only the result of a contract between two parties, the state and the inventor, but also as some- what after the nature of a reward for invention, which is only given for merit. There is, as we have pointed out before, no merit in publishing an invention which you find it difficult to keep any longer secret. Of course it would be otherwise where the article itself, by its appearance or by its pro})erties, discloses the invention ; the Courts, in their decisions, seem to have recognized the difiicultv of this question. Baron l*arke, in M»nf(in V. Scdivard (I), said: '' For if the inventor could sell his invention, k(H'ping the secret to himself, and, when it was likelv to be discovered by another, take out a patent, he might have practically a monopoly for a very much longer period than fourti'cn years.'' It does not seem to liave been ex])ressly decided that if an article sold did not disclose the invention, the use of the invention, if kcjit secret, would invalidate a subsccnicnt patent by the inventor. Haron I'arke seems to have thought that it would; on the other hand, if th(» original inventor manufactured articles, but kept the invention secret 8o that no one else could practise it, and someone else were to re-invent the same niattcM* subsecpuMitly, can it bo said that the secret \isv of tlu^ invention by the first inventf)r would invalidates the ])atent (»f the second inventor? and if not tln» ])atent of the second inventor, why, upon principle, should one persfin from whom the consideration would move personally be in a worse position than another? It may be said, perhaj)S, that the (/> 2 M. & W. .VM. THE CONSIDERATION — A NEW AND USEFUL INVENTION. 47 common law contemplated hona fides on tlie part of the inventor, and a honci fide discovery of the invention to the public within a reasonable time, and that the work- ing of the invention in secret and subsequent ajoplication for the patent Avas strong evidence of mcda fides^ and consequently would avoid the patent on the ground of a constructive fraud upon the public (?<). Mere experiments with a view to discovery have been frequently held not to invalidate a subsequent patent ; few inventions could be made without trial, and there are some things of such magnitude that the trials cannot practically be conducted in private : hence it has been lield that the mere making of experiments, with a view to invention, does not invalidate a patent (.-?'). Not only must the invention be new, but the whole of the invention which is claimed in the specification must be new (,?/) ; and if any material part of it can be shown to have been anticipated, there w^ould be a valid objection to the patent, and an action for infringement, even of the parts that are new, would not be main- tainable. We shall show hereafter that the claiming of too much in a specification, that is to say, the claiming of things which are not new, is not incurable, but that it operates in such a w^ay as to prevent the inventor from {u) As to piiljlication by sale Light Compamj, 29 L. J. Ex. 409. see Wood r. Zimmcr, 1 Web. P. C. See also Jones v. Pcarce, 1 Web. 44 ; Losh V. Hague, 1 Web. P. C. P. C. 122 ; Bramah v. Hardcastle, 205; Gibson T. Brand, 1 Web. Holroyd, 81; Cornish \. Keene, 1 P. C. 628 ; Carpenter v. Smith, 1 Web. P. C. 508 ; Galloicaij v. Web. P. C. 536 ; MuUins v. Hart, Bleaden, 1 AVeb. P. C. 525 ; Stead 5 Car. & K. 297 ; Heath v. Snuth, v. Williams, 2 Web. P. C. 135 ; 2 Web. P. C. 208 ; Honihall v. Househill Company x. Neilson, 1 Bloojner, 2 Web. P. C. 200 ; Web. P. C. 673. Oxley V. Holden, 8 C. B. N. S. (y) Plimpton v. Spiller, L. R 066. Ch. D. 412, & per Jesscl. M. E. (.r) Neicall v. Elliott, 4 C. B., in Frearson v. Loe, L. R. 9 Cli. D. N. 8. 269 ; Hills v. London Gas 58. 48 Tin: law or tatknts. succcssfiillv inaIntaiiHn{j: an action as:ainst an infringer until lio lias taken the proper stoi).s to obtain a disc-lainicr of tlio tainted })()rti()n, so to speak, of his speeilieation. In Uramuh v, Ilardcastlc [z) Kenyon, J., said: ** Un- learned men li»i»k at tlie speeilieation, and su})posc cven'tliing new that is there ; if the whole be not new, it is han^iniz: terrors over them." In ///// v. Thomp- son (^a), per Dallas, J., " If any j)art of the alleged dis- covery, being a material i)art, fail (the discovery in its entirety forming one entire consideration), the patent is altogether void.'' In Bninton v. Ilun'kcs {!>) Abbott, C. J., said : " T ftu'l myself compelled to say that I think so much of the })]aiutitrs invention, as respects the anchor, is not new, and that the whole j)atent is therefore void." A process incidental (o llic niaiuifacture, which is not one of the substantial elements of the claim, will not invalidate a ])atent {<•). A dcsciiption of two ])rocesses, one of wliidi is old, and tlic otlicr new, a chiiiii of the coiiibiiiat ion of the two would be valid for the (•(»nd)ination ; but if the claim is not for the combination, but for the two j)i"o- cesses, then the ])atent is void [d). When a ])art of a described invention is did, the question will alwa\ s arise as to whether the claim is tor the several parts as described, or for the cond)ination. Wc shall treat this sul>ject at IdiLith wluii wc deal w ith tlie specilicati«»n. We 1U)W come to the cnn>-i(lcrat lou df the (juotion of utility, for not oiil\' niu->t the iuM-iitiou lie new, but it must be new and useful. The Cttii section of the StatutO of .Monopolies does not refer to the necessitv of utility in the ijivciition, but saving, as it does, the common law (z) 1 Cari.. 1*. C. IGH. C. 112. (o) 1 Web. 1'. C. J ID. ^tl^ Templcton V. Marfiirlaur, I (6) 4 IJ. & AW. hi 1 . 11 I ,. C. 695 ; McConuick v. Gray, (c) Muntz V. Fotln. :' \\. i, J- ,11 ,^ N. 2.5. THE CONSIDERATION — A NEW AND USEFUL INVENTION. 49 prerogative of the Crown in respect of inventions, it refers us back to what had previously been held to be the necessary elements of an invention. In Daraj v. AlUn{e), decided in 1602, it was held, the invention must tend to the furtherance of trade, and be for the good of the realm, and that the monopoly was granted in consideration of the good that the inventor doth bring by his invention to the commonwealth, otherwise not. Consequently an essential element of a valid grant is, that it should be for something which is for the good of the realm, that is, it must be useful (/j. In Boidton v. Bull(g)^ Rooke, J., said: "The public have a right to receive a meritorious consideration in return for the protection granted." In the same case, Buller, J., said : " The invention professes to lessen the consumption of steam, and to make the patent good the method must be capable of lessening the consummation to such an extent as to make the invention useful." And in the case of TJie King v. Ar Jew right (Ji), the same judge, in leaving the matters to the jury, said: "There is another question, whether the stripe in it makes a material alteration, for if it appears, as some of the witnesses say, to do as well without the stripes, and to answer the same purpose if you suppose the stripes never to have been used before, that is not such an invention as will support the patent." It Avill always be a question for the consideration of the jury, Avhether the invention is useful, that is, whether that wdiicli is new is a sufficient advance or improvement upon what was already known by the public as to add to a material extent to the public stock of knowledge. It does not mean that there must necessarily be a great deal {e) Noy, E. 182. Web. P. C. 80. (/) Edgehunj v. Stephens, 1 {g) 2 H. Bl. 478. Web. P. C. 3o ;" 7?. V. Arkwrlght, 1 (A) 1 Web. P. C. 72. Web. P.O. 72; Turnery. Winter, 1 T. E 50 Tin: LAW OF PATENTS. of invention, or an extensive operation, to supjjort tlie patent, but that tlic invention when carried out in somo wav materially improves the })rocess of manufacture, cither by cheapening the article produced, or by im- j)roving its quality, or by improvin<4' the method of pro- ducing, or the uses to which it can be put. Each of the cases which have been decided uj^on the question of utility deal, and necessarily must deal, with an independent state of facts, and consequently, no case can be said to be an authority for another case; but they U'o to show the <:(Mieral })rinciple that ''utility" means a substantial improvement, and not necessarily an exten- sive process; for instance, a man miiilit invent a large and complicated machine for the manufacture of boots, which, when com])lcted, would do nothing which was not done before, and would not make them an\' quicker or any cheaper than they were made before. 8uch a machine would not form the subject of a patent. ( )n the other liand, a man might discover a new needle for stitching boots, which would economise half-an-hour in the manu- facture of each boot; such a needle would be the sul)j(>ct of a patent, although the whole improvement might consist of a bend. In Crane v. Prior, 'J'indal, C J., said: ''If the inven- tion be new and useful to th(^ public, it is not material whether it l)e the result of long exj)eriments and pro- found research, or whether by some sudden or lucky thought, oi- mere accident o|' discovery" (/). We have seen that tlic inventir)n nnist be 7icf(f in every ])art. It is nr)t, however, necessary that it should be icsr/ul in every part. I'i<»vi(led always, that useless parts have not been added to the s])ecification for the j)urpose of deception, or ol" nuslcading tlic jiublie as to what the real nature th section of the Act of ly^iJJ, it is provided : — "(1) The application for a patent mu>t be nuide in the form sot forth in the first schedule of this Act, or in such other form as may be from time to time prescribed, and must be left at or sent by post to the J'atent Ollice in tlic prescribed manner. ** (2) An application nmst contain a dcdaiation to the effect that the aj)j)licant is in ])ossessioii of ;tn invention whereof he, or in the case of a joint iippbcal Ion. one or more lishcs his invention, that is, dedicates it to the jmblic. W'c Ikinc observed that two descriptions of speciticatioiis are provided foi", one called " jirovislonal," and the otiier " completer ;■' the applicant lor letters patent may, it he so ))leases, in the first instancj', file a complete specilicatlon, or li(» may (ilo a 8pecificatif)n whieh. I'nr want ol" a better Word, has been described as })rovisional ; subsecpieiitly, and within the prescribed time, fding a cojuplete specifuation, which ]iai*ticularlv descrilx's and ascertains his ijivention. It is only necessary, ho\v(!ver, that the provisional specifica- tirm sliould describe the nature ol the invention; and nltliough it is not absolutely necessary tliat lull details THE CONSIDERATKJX — THE .SrECIFICATION. 00 should be given as to the method of working the inven- tion, care should be taken to ascertain to what extent and in what direction the invention goes. There are three things, in the specification, which must agree with each other — the title, the provisional sj)ecification, and the complete specification. The Title. The title of the specification must disclose the object of the invention («). The title is a part of the specification, and should be read into it so that it may limit the patentee's claim, which otherwise would be too large (b). In the case of Bex v. Ulse (c), the title of the patent was held to contain the claim, there being no other claim. It has frequently been held that the title must not go too far; for instance, a man who had invented a new street lamp, and described his invention in the title as being ''a method or methods of more completely lighting cities, toAvns and villages," was held to have vitiated his patent by going too far in his title. His claim should have been for a new or imj^roved street lamp (d). So care must be taken that an improvement in buttons, for instance, is not described as an improvement in the manufacture of buttons; if the improvement is in the article, it must be so stated, and if in the process, likewise. In Campion v. Bewjon (c), the title was a new and improved method of making and manufac- turing double canvas and sail cloth with hemp and flax, without any starch whatever ; the title, therefore, described an invention, the novelty and utility of which (a) HousehiU Co. v. Keihon, (f) 1 Web. P. 0. 76. 1 Web. P. C. 678. \d) Cochrane v. Smethurst, (b) Newtony. Vauc/ier, 21 L. J., Davy's P. C. 354. Ex. 308. (e) 6 B. Mo. 71. 56 THE LAW OF r.VTENTS. was to omit the use of starcli, but upon reading' the speci- fication AVi' iind tliat the real invciitinn ^vas an improved mode of t\\'istin observed that tlic complete specification to wliich we shall refer at with a distinct state- ment of the invention claimed. The ca.ses which we have quoted, and ^^lli(•ll were decided ])rlor to the year iS.Vj, as to the fatal nature of a variation between the title and the s})ecification, will applv ('([uallv to the consideration of a variance between a provisional and a complete specification. It is evident, however, that the oltject of the l(^<;-islature in creatin*;* a ]irovi>Ional specilication, and foundlnu' upon it a peiiod of pnjvi.sional protection, was to enable the inventor in that interval to improve and j)eil"ejioiilil br prevented iVom adding* to or sulttractin^' from Ins in\cntion: tor, in lliat case, the object of the le^^islature would be det'eated. In yrif'il/ v. Ellinit (m) Pollock, C 11.. said: " 'I'lie oldect of the statute which re(pnres a |)ro\ isional specifi- cation is n«)thin;,'' nutre than a Ie«i-islat ive reco;^nition of the custom which called u])on every patentee, when ho aitjflies for a jiatent, to ;^ive sonu- notion of what his invention is; that has l)een followed by Act of I'arlia- nu'ut rc«niiring it to be done ; but the object ni both (m) injur., N. 8. 955. THE CONSIDERATION — THE SPECIFICATION. 61 cases is to ascertain the identity of the invention, and make it certain that the patentee shall ultimately obtain his patent for that invention which he presented to the Attorney-General in the first instance .... I have no doubt that the object of the Act of Parliament was not to ascertain the entirety of the invention, but the identity of the invention, so as to enable the Attorney- General, and, in fact, to enable a jury ultimately to determine whether the invention fully specified was the same invention as that which was presented to the notice of the Attorney-General by the provisional specifica- tion." Mr. Baron Channell in the same case, at p. 960, describes a provisional specification as a "short note or minute of that which was ultimately disclosed in the full specification." It will be observed that in the cases to which we drew attention upon the subject of variance between title and specification, the point always was as to whether the title and the specification varied in the descrij^tion of the nature of the invention ; and the same principle holds good when considering the variation between the provisional and complete specification, the question always is, Do they differ in their descrip- tion of the nature of the invention ? In Neivall v. Elliott {n) Mr. Justice Byles said: ''The ofiice of the provisional specification is only to describe generally and fairly the nature of the invention, and not to enter into all the minute details as to the manner in which the invention is to be carried out " (o). Lord Chelmsford, in Penn v. Bibhij [p)^ said: "The relation which the provisional sj^ecification bears to the complete specification is much the same as that which Ijefore the Patent Law Amendment Act a title bore to the specification the only objection then which is open upon the complete specification, is whether (n) 4 C. B., N. S. 269. E. 723. (o) Foxwell V. Bostock, 12 AV. (/;) L. E., 2 Cli. Ap. C. 127. 62 THE LAW OF PATENTS. it is sufficient in itself, and wlietlier it aofrces with the provisional spcciiication. Now, by ap-ecment is not meant a perfect correspondence, but merely that there shall l>e nothini,^ in the complete specification at variance with the provisional." The learned l^ord Chancellor then proceeds to quote KcivaWs case, to anIiIcIi avo have referred, and proceeds: ''Nor is it at all luTCssary that the specification should extend to everythin**- comj)re- honded in the provisional sj)ecilication. Pcrhajis a better illustration of this pro})osition could not be given than that which was oflfered in the course of the argument. It' the patentee were to introduce into his complete si)ecification everything which was Avarranted by the terms of the provisional s])ecification, and afterwards found that a part of that Mhich he had claimed would invalidati! his patent for want of novelty, or for any other reason, he might afterwards cure the objection by a disclaimer. Now if he would be allowed to disclaim in such a case, which is a matter of indulgence, he must have a right to waive his claim to any ])ortion of the grant which the allowance of the provisional specification had entitled him to demand. It is clc;!!-, therefore, that unless a complete sjjecilicatioii in this case claims some- thing (U/j'ercnt from the provisicjiial sj)ecilication, the objection to the patent under consideration cannot prevail." In the absence of fraud, any ]»art, whether in the descrij)tion or the claim of the jtrovisional specifi- cation, may be (emitted in the comj)lete specification without the necessity of any disclaimer (;). Jn Sloncr v. Toihl{if)^ Jessel, M. li., sair<\ < 'holmiifortl in I'mn v. THE CONSIDERATION — THE SPECIFICATION. 63 the same invention. A provisional specification was never intended to l)e more than a mode of protecting an inventor ; until the time of filing a final specificationj it was not intended to contain a comjDlete description of the thing so as to enable any workman of ordinary skill to make it, but only to disclose the invention, fairly no doubt, but in its rough state, until the inventor could perfect its details, the provisional specification as such is not and cannot be knoAvn to the public. It is never published unless with the final specification, when they become parts of the same document." In the case of Baileij v. Rolcrton{t), decided in the House of Lords, the provisional specification stated the object of the invention to be the preserving of animal substances in the fresh state, and the patentees claimed the use of a solution composed of a certain quantity of gelatine mixed with bisulj^hite of lime, but in the comj^lete specification they claimed as solution No. 1 a solution composed of bisulphite of lime alone, and gave no direction how this solution was to be used. Bisulphite of lime had been used by a prior patentee. In the action for infringement against the defendants who had used bisulphite of lime pure and simple, it was held that the complete specification, if large enough to cover the employment of bisulphite of lime for the preservation of animal substances as j^ractiscd by the defenders, would claim an invention larger than and diferent from that disclosed in the j^rovisional speci- fication. It will be observed that in this case the invention, which was described in the provisional speci- fication, was the coating of animal substances with a film of a mixture of gelatine and bisul23liite of lime ; the complete specification claimed the dipping of the animal substance into a solution of bisulphite of lime in water ; it is apparent, therefore, to anyone acquainted with the (0 L. E., 3 Ap. C. 1055. G4 THE L.VW OF PATENTS. action of antiseptic .substances upon aiilnial decomposi- tlnii, tliat the operation of ii lilni of ^'elatine with bisulpliitc of Hnie is entirely ditferent from the oi)eration of a .sohition of bisul])liite of lime; it is a totally dif- ferent idea, and therefore a different invention ; the complete specification, therefore, was not an extension, curtailment or modification of the provisional .specifica- tion, but was a descrij)tion of a totally different inven- tion, and .so it was held bad for variance. Thus we .sec that the i)rovisional sj)eciiication is a mere extension (»f the title; but since variance between the titlr and the .'specification vitiated the patent before the inau;^uration of the provisional specification, variance between the provisional and complete specification also vitiates a patent ; but it is ([uite open to a patentee to extend, inij)r(jve or curtail tlie claim which he has made in his provisional .specification when he comes to file his complete specification. Tin: CO.MPLHTE SPECIFICATION. We now come to the more important subject of the requirements of a complete specification. The conipleto specification is, as we have .seen, one of the essential considerations which the ])atent(M> irivcs for the ;^n*ant wliich is made to liini. It is the disclosure of his inven- tion, and of tlic mode of jtrrloimin;^- it. It contains tlie information wliich lie is IxMind to f^ive to the ])ublic. That informati(jn must b(> hona Jidc , full, complete, and unand)i^^uous ; it must disclose lh(» invention, the nature of it, the intention of it, the way <»l' )»crf<»nnin;^^ it, and an exact statement of what is claimed hy tlic jtatentco. ThcHO conditions are iiiipo.sed bytheconnnon law; they were maintained intact by the Statute of Mon<)polies, by the I'atent Law Amendment Act, IS.VJ, and are now spc- cilically re-enacted in the Act of 1S.S;{. Tlie specification must b( sufficient — that is, it must THE CONSIDERATION THE SPECIFICATION. 65 give a sufficient descrij^tion of the invention to enable a person skilled in the art to which it refers to perform the invention from the description which it gives. It must be land fide — there must be no reserve on the part of the inventor. He must disclose what he knows ; he must conceal nothing, and thus he must give to the public the full benefit of his invention. In Ilaruiar v. Plai/ne{ii), Lord Ellenborough said: — " The object of requiring the specification to be enrolled seemed to be to enable per- sons of reasonable intelligence and skill in the subject- matter to tell from an inspection of the specification itself what the invention was for which the patent was granted, and how it was to be executed." In Morgan v. t^eaward {x)^ Mr. Baron Alderson said: — "The patentee ought to state in his S23ecification the precise way of doing it (referring to the invention) ; if it cannot com- pletely be done by following the specification, then a person will not infringe the patent by doing it. If this were an infringement it would be an infringement to do tliat perfectly, which, according to the specification, requires something else to be done to make it perfect. If that be correct, you would j^revent a man from having a perfect engine. He says, practically speaking, the difference in the length of the rods would not be very material, the difference being small. But the whole question is small, therefore it ought to have been specified, and if it could not be ascertained fully it should have been so stated." We quote this decision at length, because the exposition of the law which it contains is still absolutely correct. The subsequent cases to which we purpose to draw attention have implicitly followed the judgment of Mr. Baron Alderson (//). The specification is a portion of the j^atent [z). (m) Dav. P. C. 316. (s) Hornhhwcr v. Boulton, 8 T. {x) 1 Web. P. C. at p. 182. E. 95 ; Crossleij v. Beverley, 9 B. (y) Ncilson v. Thompson, 1 & C. 62. Web. E. 278. T. F (jO Tin: I.AW OF PATENTS. In tlieca.se of T/tc A7;/y v. Arlcivn't/fii (a), Mr. Justice Buller said, " The public have a ri«j,ht to a fair, full, and true description of the invention in the specification." It is incumbent on a patentee to give a specification of his invention in the fairest and most unequivocal terms of which the subject is capable (i). In the same case, Mr. Justice Buller said: — ''Many cases upon l)atents have arisen M'ithin our memory, mo.st of "which have been decided against the patentees ui)on the ground of their not having made a full and fair discovery of their inventions. AVhenever it ai)pears that the jiatentec has made a fair disclosure I have always had a strcjii^- bias in his favour, because in that case he is entitled to the protection which the law gives him." In Netvhery v. James (c). Lord I'^don said: — " Jn order to support a patent, the specification sliould be so clear as to enable all the world to u.se the invention as soon as the term for which it was granted was at an end." We have next to consider the bearing of the dlA'erent decisions upon the (piestion of what amounts to sufficiency ill a specification. It is al\va\s a (juestlon of fact whether the sj)e(lficatl«)n is sullicient or not, taking can? to distinguish between sufliciency of de.scri})tl<)n and an attempt U) cover too much — it is for the jury to say whether from the dcsci iption given tlic Invention could be carried out. It is for the ('ouit to di'termino whether tin; inventor has claimed that which is not new among that which is new(^/). The (|uestion of the suHiciency of the Hpecification is a (piestion lor the jury (4 (fl; Duv. r. L'. 01. 026. (A) IVr Mr. Juntico AHhunit, in (r) liich/ord v. Skcurs, 1 Q. B. Ttirnrr v. Wittlrr, Dav. 1'. C 151. {•.'58 ; ll'iil/inyfon v. Dafr, 7 Kxch. (c; 2 M.T. I.il. HHH ; /'«;//> v St.,,h.„s, L. ]J., 8 \d) inn V. Thomptun. .'J M. i . i:urse, conlineil to those who are convei'sant with the subject-matter of the in\ ciilion, and if the specification is thus sufHciently iiit(lIiL;iI>l<' it j)erfonns all that is re(piired of it/' lii Clitrlr v. AUIci^m) it was held that the words used in the specification nmst be construe(l like the words in anv other instrument, in their natural sense, accordin;^' to tin- p'ncral jiinjMtse of the instrmnrnt in whi
  • inioii trivcn b\- the judf^'^es to the House of Lords, Mr. .)ustic(! ( 'rompton said, " I think it will be ;i i.!«!r<«\v and a dan;/«< m. 1 1r.n j.. limit the {k) L. U.,0 Ch. I). .|'J2. L. K., It ( h. h. 77 '/ ], ]{., 1 Ap. (\ .181. (n .\nil„n v. \\iu,l„r. u Ivm li. ./. I. i;.. 2 All. v. -I'i.'J; Ihul- K«;i. geon v. Th hi/imou, L. K., { App '2!t L. J.. < '. 1'. H. Cnii. /»'J ; Wrt/m(inr> v ' '- • THE CONSIDERATION THE SPECIFICATION. 69 invention claimed in express words by the mode and 23rocess of working wliicli the plaintiff sets forth as a means of carr^dng his invention into effect." The claims in specifications frequently claim the inven- tion in a general manner with the words added '^ as herein described." It has been held that the meaning of the words "as herein described" is not limited where the invention is for a mode of construction or manufacture, and not for a })articular method of carrying out the princi^^le Avhich is described in the specification. In Betts V. 3Ien.cies ( p) Mr. Justice Blackburn, giving his opinion to the House of Lords, said, " I agree with Avhat was said by Mr. Justice Crompton in the Court below that, if a general claim for the use of an invention were cut down and limited to the use of the invention in the particular way pointed out by reason of the words ' as herein described,' it will be a narrow rule of construction, generally working to the detriment of patentees, and, what weighs more with me, generally giving an effect to specifications dift'erent from what the persons drawing them intended or those reading them understand." In the case of Univin v. Heath [supra), Mr. Justice Williams said, 'Hjut if the invention described and claimed by the patentee in this case is not the j^articular process specified, but the employment of carburet of manganese in the process of the conversion of iron into steel, and if the description of the process in the specification, instead of being a description of the invention, is only one mode of carrying the invention into eft'ect, an entirely dift'erent doctrine becomes applicable to the question, viz., that if the iKitent is taken out for the application of a 2^rincipte coupled luitli the mode of carrijing the iwinclplc into effect the patentee is entitled to protcclion from all other modes of doing so, whether hioivn or not known at the time of ilie specification?'' {p) 10 n. L. C. HO. <(' llli: LAW lli(htij (^p), said: — ''It was contended before me, and the Vice-C'hancellor is reported to have said, that it has been settled by authority that the most liberal construction is to be given to the patent that will sustain it 1 am not aware of any such authority." A ])atent may be, as we have seen, for the application of a newly-discovered princij)le of nunuifacture or, for that of an old principle to a new object or, for a new method of carrying out an <»ld })rincii)le applied to an old object. It frecpiently becomes a matter of con- struction u})on the specification as to which of these branches of invention the sjx'cification is intended to npplv, and tltcrc have been several cases u]Min the subject. Jt is evident that inasmuch as tli(! patent will }je valid jirovided a fair descrij)tion of a new invention in either branch is given, that, in construing the speci- ficatir»n «»f a ])atent a decided case uj)on some other specification will be of vciy little valiir. W'i' do not j>roj)ose, therefore, 1o discuss at length iIm- cnnsli iidions whi<'h have been ])laced uj)on specifications in particular cases. The words '' improvements .... in the manner liereinafter mentioned," followecl by a daiin concluding'' with tin- words ** us above drsci ib( d," hav(^ been held tn limit the claim t<» the jiarticiihir niachin(^ described in the specification or to the j)arti(ular nietliod p IT W K. .^7h, THE CONSIDERATION — THE SPECIFICATION. 71 of carrying out tlie process and not to include the 23rinciplc of tlie j)rocess or any other method than that described of carrying it out (rj). We have seen, and we shall see more fully at length hereafter, that it is incumbent on a patentee in drawing the specification to distinguish that which is new in his invention from that which is old. In the case of Holmes V. London and North Western Raihvay (r), A. obtained a patent for an imj)roved turning-table for railway pur- poses, and in his specification gave a description of the machinery, of which no part was new except certain sus- j^ending rods ; the combination, however, was both new and useful. In the specification the patentee claimed as his invention ''An improved turning-table hereinbefore described, such my invention being, to the best of my knowledge and belief, entirely new." It was held, that no construction of the claim could be put upon it as including a combination of the various parts which were old, but that it must be construed as meaning that the patentee claimed the several parts of the invention as being new, and the combination being the only part which was new, the patent was held void. In the case of Hills V. London Gaslight Company [s), it was held, that where the meaning of a document depends upon its terms and not on matters of fact, dehors the document, the question will be for the judge, even although the terms are technical or scientific ; and where an ambiguity is raised by evidence, dehors the document, which is plain upon the face of it, the ambiguity being as to a term which imports one thing in a scientific sense, and another in a commercial sense. Query, whether it is for the judge or the jury. We should venture to say, that it would undoubtedly be for the jury. The question not being one at all as to the construction of the document, {q) Barker v. Grace, 1 Ex. 339. (s) 27 L. J., Excli. 60. (r) 22 L. J., C. P. 57. 7'2 Tin: law of rvrr-NTS. but l)oiii^- as a matti*r of fact, did the writiT of the speci- fication use the scientific term or tlie connnercial term? A specification is to be construed witli reference to tlic state of kMo\vh*d«^e at the time it is pu1)lislu'd(/). When drawings are attached to a si)ecilication, ahhouj^li the drawin«,''s may be used in construing tlie specification as explanatorx- d" tlie text, tluy will not ()e allowed to be used in limiting the claim in a maiimr not provided for ])V the specification (?/). When two documents such as specifications are ])eforc the Court for comparison, tlic Court must interpret the meaning of the Avords, but the jury must say if they are identical (.r). It is evident that, inasnnu-h as technical exjjressions iwv used in different trad(\s and businesses, and that it is impossible for one })er- son to bi- ;i((|uaint('d witli cvci'N' trade and ('vcr\' busi- ness, and cvcrN' tci-lniical expression used in such trade and business, it is not necessary that the specification should be intelligible to any one, it is sufhciiMit that it should be intelb'^iible to a ])ei-son reasonably skilled in the trade to wliidi It particularly refers, and it must be intelligibh? to them without the necessity of their making new inventions of their own oi- additions to the sjiecifica- tion or experinu'nts(//). In Arkf"ri;ilit v. Xi;ihfiniiaid : " The clearness ol" the sjiecifica- tion must be ac(;ording U) the subject-matter of it; it is ad. /jani,, .'J I L. .T., Ch. l.'.V Cm. 31 A. y /iry. \. Arkuriylit. I W < 1.. (x) /IrllMy. AfrnzirM, 10 11. ]..('. V. ('. M. 117; M,n,tz V. /-'nntrr, 2 W'-l 1 W-l. T. ( . (Jl . THE CONSIDERATION THE SPECIFICATION. 73 stood by those whose business leads them to be con- versant in such subjects, it is intelligible." And in Hornhlotver v. Boidfon[a), to Avhicli we have jireviously referred, Mr. Justice Grose said : "If the specification be such as to enable artists to adopt the invention and to make the manufacture, it is sufficient." In Harmar \.Playne{b), Lord Ellenborough graphically puts it : " No sort of specification would probably enable a ploughman utterly ignorant of the art to make a watch." But it is necessary that the specification should be in such terms as to enable persons of ordinary ability to under- stand it, and it will not be sufficient to show that one individual of extraordinary ability or of very exceptional technical knowledge is enabled to understand the specifi- cation (ct matter. It is addressed to peoj)le who know something about it; ]jut then' are variec(.ii(l class, managers of great manufac- tures, great employers of lal)our. pirsons who have studied (/) 2 Wob. r. C. 2I.'>. l'"r I/ml WcHtbuiy. I.» W. J^ (y) Be© Simpnon V. 11 ol It day, /i/B, (h) L. K., .'} Ch. D. .568. THE CONSIDERATION — THE SPECIFICATION. 75 mechanics, but not to tlie extent of the first class, and scien- tific engineers, but still to a great extent for the purpose of conducting the manufacture of complicated and un- usual machines, and who therefore must have made the subject a matter of considerable study; and in this class I should include foremen, being men of superior intelli- gence, who, like their masters, would be capable of inven- tion, and, like the scientific engineers, would be able to find out Avhat was meant even with slight hints and still more from imperfect descrij^tion, and would be able to supplement so as to succeed even from a defective descrip- tion, and, even more than that, Avould be able to correct an erroneous description — that is what I would say to be the two first classes, which I will call the scientific classes ; the other class consists of the ordinary workman, using that amount of skill and intelligence which is fairly to be expected from him, not a careless man, but a careful man, though not possessed of that great scientific knowledge or power of invention which would enable him l:>y him- self unaided to supplement a defective description or correct an erroneous description. Now, as I understand it, to be a good specification it must be intelligible to the third class I have mentioned, and that is the result of the law." This judgment very precisely lays down the law upon the subject of intelligibility generally. The next question, as to what is a sufficient specifica- tion, is by far the most important branch of the subject. We have seen that the consideration for the grant of letters patent is, that the inventor shall particularly describe and ascertain the nature of his invention, and in what manner it is to be performed ; consequently for a specification to be sufficient it must jiarticularly ascer- tain — (1) What the invention itself is; (2) How the in- vention is to be carried out. Under the first head the inventor must describe exactly and accurately what he has invented, and if in the course of the description of 7G IHi: LAW OF TATENTS. Ills Invi'iitioii it sliull[i): " Suj)i)o.se ii newly-invented chemical ])rocess, and the sj)ecificatlon should direct that some j)artlcular chemical substance should be pouj-ed u])on gold in a state of fusion, it would lie necessary that, ill (.rder tut into a ciiicible, and should be melted in that crucible, but it would be hardly necessary to stale in \\\v sp<'cification the manner in which, or th<' utensils with whh'h, the operation ot idittiii;^- ;:(tlnt, already ])art of the public stcjck of knowledge or not ? The j)ublic stock of knowledge consisted of the speci- fication, which is put I'oilJi as anticii)ating the ])atent, together with all knowledge on the subject which can be ])rove(l to have been published or used ])rior to the tlate of the jilaintilV's patent, and so in reading a speci- fication with a view to ascei taiiiiiig wiiether it anticipates a subscvpient patent you must nnid into tliat specification all subse(pientiy-ac(piired kn(»wledge of the sul)ject prior to the date of the j)atent; but in discussing the sulli- ciencv of the sjx'cification which is actually in dispute, you cannot nuike use of information which has been ac have seen, it is douljtfid whether this does not only alVect those patents whieh "vvere obtained before the Act of 188'], known as " cniiuiiunications from abroad.'' It will be seen that the last-mentioned ease is distino far back as isl.",. ^ivcs a very clear idea <»f the law upon this bran .stillicieiit to make verdigris, but that Zimk had been aecustmiicd, clandi'stinelv, to put aipiafortis int<. the boiler, whereby tlu; metallic coj)j)er was dissolved njore raj)idly, but the ver•) 1 Wob. V. C. 117. T. G 82 Tin: law n(i //V/c, full, and camlid disclosure.'" The case referred i<» liy the learned judge was the case of Liankl v. Johnson (7). in Tellryy. Eusfon(n), Pollock, C. 15., said: ^' A man has no right to ])atent a j)rin(iple and then give to the public, the Innnblest instrument that can be mad(^ from his prin- cij»lc, and reserve to himself all the better })art of it;" and in //"//// v. I'nirin(v)^ Coleridge, C. J., said: "If tlio inventor of an alleged discoverv, knowing two e<|uivalent agents for effecting the end, could, by the disclosure of one, preclude the j)ublic from the benefit of the other, he might, foi- his own j»iofit, force upon tlie public an expeubive and dillieidt process, keejiing back the slmjile (#) 1 Wfl.. 1'. C. 171. (ei) Muc. V.r. 7fi. (/) I Web. ]'. r. :,:\- un,l iJull. (r) 2 AVob. 1'. C 21.). N. IV 7r,. THE CONSIDERATION — THE SPECIFICATION. 83 and cheap one, it Avoiikl bo directly contrary to the good faith required from a patentee in his communication to the pubHc." UjDon the same ground of mala fide it has been held, in a large number of cases, that if the 2:)atentee in his specification gives details which are not necessary to the invention, which of themselves do not constitute an invention, and which are merely put in for the purpose of misleading the public as to either what is the nature of the invention or how it is to be carried into effect, then the patent will be void. Baile}^, C. J., in Leivis v. Mayling{iv), said: "If the party knew that it was un- necessary the patent would be bad, on the ground that this was deception ; but if he thought it was proper, and only by a subsequent discovery finds out it is not neces- sary, I think that it forms no ground of objection." If the extraneous matter is put into the specification, hond fide thinking that it was necessary, the patent will not be held to be void ; if it was put in maid fide, with the intention of deceiving or knowing it was extraneous and useless, the patent would be void. If the extraneous matter is in itself misleading, and would prcA^ent a skilled workman from successfully carrying out the inA^ention, whether it is jmt in maid fide or hond fide, the patent will be void. It will be seen that in the latter case the specification is insufficient, and in the former two cases the question is one simply of hond fide on the part of the inventor (.r). "We now come to that portion of the specification which is described as '' the claim." By sect. 5, sub-sect. 5, of the Act of 1883, it is provided that '' a specification, {w) 1 AYeb. P. C. 496. Web. P. C. 83 ; Bickford v. [x) Simpson v. HoUiday, 20 Skeices, 1 Web. P. C. 218 ; i\^//- Newtou's London Journal, N. 8. sun v. Harford, 8 ls\. k W. 800. 108. Cromptun v. Ihhertson, 1 g2 . 84 Tin: law or tatknts. "Nvlu'tlior provisioiKil or t'()m})loto, must commence witli tlic title, and in the case of a complete specitication must end -Nvith a distinct statement of the invention claimed.'' This is, j)erhaps, emphasizing, in a more distinct manner than had been provided before the passing; of this Act, the necessity of the invent* »r makini;" a distinct and unam- bi^ifuoiis claim, lie must not claim too much, and yet he must claim sufficient to show a useful manufacture, and he mu>t distinguish in his t-laiin what it is that is new in the process ■which he has described and what is old. 80 far as this goes, there is no doubt that the old law provided for similar declarations on the part of the inventor. In Bovill v. Moore (//), Gibbs, C. J., siiid : " If the plain- tiff has in this specification asserted to himself a larger extent of invention than belongs to him, if he states him- self to have invented that which was well known befor(\ then the speciliealioii will be bad, because that will affect to give him, through the means of this jiateut, a larger privilege than could be legally given to him." hi the case of (.libson v. Jin(ii(l(a), Tindall, L\ J., said: '' Looking at the sijccification in the ca.se, it ap})ears to me that this patent cannot be suj)ported at law, because the plaintiffs have in the cour.se of it claimed more than they are entitled to." The Coui't must be taken to (li>tiiigui>h between describing too much and claiming too much. In the course of a well-(lrawn specilicatiou it is l're(|uently ncccH.sary to describe something whit:in('0, if the invention l)c for an improvement upon an old process very g-reat care should be taken that the inii)r(A'enient alone is made the subject of the claim ; so if it bo for a combination of old well- known parts, care must be taken that it be clearly shown that the patentee claims the combination, and not the parts. James, V.-C, in Farkcs v. Slt'j>hens{f)^ said : ''It is obvious that a patentee does not comply as he ouirht to do witli the condition of his orant if the improvement is only to be found, like a i)iecc of gold, mixed up with a great f|uantity of alloy. And if a j)erson desiring to tind out what was claimed as new would have to ^ci rid of a large portion of the specifica- tion, bv eliminating from it all that was old and connnon- place, all that was the subject of other ])atents, or of other improvements, bringing to the subject not only the knowledge of an ordinary skilled artizan, but of a patent law}'cr or agent." In Harrison v. T/ia Aud'rsfon Foundry Co. [ff\ it was finally held by the House of Lords that if the combi- nation and api)lication of old nuichinery be new and beneficial the invention of this combination may bo protected b\' a ])a(cnl. '\\\Q specllicat inn counuenced : '•'i'he invention consists of anew or improved simple and njost ellieient mode of and arrangenu'ut of mcH'hanism for connecting the set or sets of compound or multiple Khuttlo boxes of looms for weaving strip(», cheek or other onuimental or liLiiiicd t"abi-i«-s ic(|iiiriiig two, three f»r nioro Hlmttle boxes in each set." 'J'he specification then described in detail and bv refereiic(» to drawings the arrangement of niecjianisui in (|U(>fi(»ii, and then con- tinued: ''What we iM'lieve to he iiovd iind original, and tlicrcforc claim as the invention sccuicd to us by letters j)atent, i»— (1) 'J'hc constiuct ion and aiianL:<'iiicnt of iho (r) Litter V. Leather, 8 K. & li. (/> J.. J{., H K4. Or,.--,. 1004. (V) L. 11., 1 Api>. V. 678. THE CONSIDERATION — THE SPECIFICATION. 87 parts and portion of tlio mechanism, and (2) a shuttle-box moving and holding mechanism as herein distinguished generally for actuating the shuttle-boxes of power-looms, all substantially in the new or improved manner herein described and shown in the drawings or any mere modification thereof." A great number of the joarts of the machine were admittedly old, and one of the questions in this case was, whether the first claim above set forth was a sufficient claim to a combination. Lord Cairns, in giving judgment, said : " It is as I read it a claim for a combination, that is to say, a combination of all the movements going to make up the whole mechanism described; it must, for the present at least, be assumed that this combination, as a combination, is novel, that it is, to use the words of the Lord President, a new combination of old j^arts to produce a new result or to produce a known result in a more useful and beneficial way; it is not doubted that a combination such as this is may be tlie subject of a patent, what, then, are the objections to the first claim viewed as a claim for the combination; the first is an objection said to be founded upon the case of Foxwcll v. Bosfoclc(h), decided by the late Lord Westbury. It is said to be determined in that case that where there is a patent for a combination there must be a discovery or explanation of the novelty, and the specification must show what is the novelty and what the merit of the invention. I cannot think that, as applied to a patent for a combina- tion, this is or was meant to be the effect of the decision in Foxwcll V. BostocJc. If there is a patent for a combina- tion the combination itself is ex necessitate the novelty, and the combination is also the merit, if it be a merit, which remains to be proved by evidence." In the same case Lord Hatherley said: ''The judges extended, as it appears to me with great respect, the (A) 4 Do G., J. & S. 298. 88 THK LAW i)V PATENTS. doctrine of Foxwell v. Bostnck in tliclr :i])])lirati(in (»f it in this case; it was there lu-Kl. and lliat I think was all tliat was hohl, tliat it is not competent to a man to take a well- known exist in*:: machine, and, having- made some small improvement, to i)lace that l)ef()re the ])id)lic and say, ' I have made a better machine, there is this sewing machine invented hv so-and-so, 1 have improved upon that. That is mine I it is a much better machine than his ;' that will not do ; }ou must state clearly and distinctly what it is in which you say you have made an improvement. To use an illustration which was adopted, I think, b\' James, L. J., in another case, ' 1 think it will not do if you invented the gridiron j)endulum to say, I liave invented a better clock than anvbody else, not tellinir the public what vou have done to make it better than an\- other clock which is known.'" In Clark v. Adie(i), Lord Ilatherley said, speaking of FoxircU V. Bostock : "You must in some way or other inform those whom you are dealing with, by which I mean the general ))ublic, whom you wish to exclude for a certain limited mnnlter of years from using your inven- tion, you nnist inform them in some mode (n- other whether you have sub-divided, if I max so term it, Nour ma<'hino into th(\se separate j)ails and claim for each the merit of novelty, or whether yoti an^ simj)lv making a couibination of things y^r;* «f old Imt wliicli hav<' ni'verbccn used behtro in combination, and which make uji, as \ nu sav, your machine^, for which ^■ou claim protection, as a novel and useful machiiu'." These* two judgments of the 1 Inline ni Luids show tho extent to •\vliich the; law wcnl jtrior to the Act of 188:}. We have neen that siiu-e the Act of l.S.S;] the claim is an absolute essential, and th(> words of the Htntute are, "A distinct statement of the invention claimed." To what extent the words " a distinct statc- (0 L. \{., '1 .Aj.i.. C. 328. THE CONSIDERATION — THE SPECIFICATION. 89 mcnt " will be construed it is at present difficult to say ; but it will undoubtedly be advisable for inventors to be more careful that their claims are more accurately defined, it being very probable that the law as it at present stands wdll be held to be much more stringent in its require- ments than it w^as before the Act of 1883. 90 Tin: LAW ov patents. niAlTKK V. am?:ndmi:nt or specifications. Tin: Patents, &c. Act, 1883, provid(\s tV>r tlio amond- mcnt of spocifications in two ways, compulsorily and voluntarily. Wo liavo seen that sect. (J directs tliat the comptroller shall refer the specification to an examiner. Sect. 7 provides that (1), '' If the examiner reports that the nature of the invention is not fairly described, or that the apjdlcation, specification, or drawings have not been prepared in tlic prescribed luaniicr. or that the title does not sufliciently indicate the sultject-matter of the invention, the comi)troller may require that the applica- tion, specification, or drawinjrr.s be amended before he proceeds -with the application.-' Sub-sects. 2, 3, 1, juo- vidc for an ajipeal to the law ollicer : and sul)-sects. 5 and G irive directions as to what should be done when there are two ai)plications for substantially the same in- vention. Sect. 0, sub-sect. 1, requires that the examiner shall report to the comptroller as to *' whether the com- plete speeiiiealion has been jirepared in the ])res('ribetl manner, and whether th(.' invi'iitioii })articularly des- criix'd in the? cf)mj)lete specification is substantially tho 8an>e as that which is described in tlie provisional speci- fication.'' If the examiner reports that these conditions liave not been com|»lie(l with, the comj)troller vitt// refuse to accej»t the complete specification until it has been amended to his .satisfaction, subject to npj)eal In lln- law officer. iSub-HCCt. .'J : The law oflicer shall, if required, hear tho applicant and the conjptroller, and may nuike an f)r(ler deterniiiilii"- whether, and subject to what conditions, if AMENDMENT OF SPECIFICATION.S. 91 any, the complete specification shall be accepted. By sub-sect. 4 the application is rendered void, except in the case of an appeal, unless a complete sjoecification is '' accepted'''* within twelve months from the date of application. Sect. 94 provides: ''Where any discre- tionary power is by this Act given to the comptroller, he shall not exercise that power adversely to the applicant for a patent, or for amendment of a sj)ecification .... without (if so required within the prescribed time by the applicant) giving the applicant the opportunity of being- heard personally or by his agent." These j^ro visions of the law are entirely novel. It will be particularly observed that compulsory amendment is strictly limited to matters of form. The comptroller has no power to order an amendment on the ground that too much is claimed, or that there is want of novelty, or that the invention is not subject matter for a patent. It is very difficult to predicate what judicial decisions will be given to the words " that the nature of the inven- tion is not fairly described." Is the examiner to be in the position of an expert witness, and to decide whether or not the description is sufficient to enable a skilled artizan to carry the invention into effect within the meaning of Jessel, M. R., in Plimpton v. 3faIcoI}uson(a)? or is he merely to see that the language is correct, and that, without going technically into the matter, the specification appears to fairly describe the invention ? If the former is his province, it is difficult to see how it is to be carried into effect, since there is no machinery in the Act for the receiving of skilled evidence, such as would be necessary for the purpose of arriving at a satis- factory conclusion upon such a point. The applicant or his agent are alone to be heard. It is true that by sect. 38, when the applicant appeals he may call wit- nesses before the law officer, but surely the statute does («) L. R., 3 Cli. D. 568. 92 Tin: LAW or tatents. not contemplate that questions slioiildbe frone intoAvLifh, it is evident, can only be decided on a})i)eal, and even then not satisfactorily "without the procedure and care of a rejjular formal trial. Under such circumstances, it may fairly he presumed that the meaninir '>f the section is, that the examiner shall report whether the sjx'ciiicatlon, on the face of it, a])pears to fairly describe tlic invention. In (onstniinir sect. 0, it will probably be held that a minute and scientific inspection of the specitication is not within the contem})latinn of tlu^ statute. Sect. l.S provides for the amendment of the specification by the api)licant or patentee. There arc several reported ea.scs showing tliat at connnon law mere clerical errors in a specification nii^lit formerly be amended by tln^ Master of the Kolls and the Lord Chancellor \\\u>n j)eti- tion, l)ut these anuMidments were strictly limited to verbal or elerieal errors arising from mistake or Inad- vertence (/>). ^\ <• liavc seen that a patent for a very meritorious invention may be utterly vitiated by tlie patentee claiming .something which is not new; so, also, a patent might bo rendered void by reason of innocent mi.sde.scriptiou or misrepresentation. 'IMie common law power of amendnnmt being found insufficient I'or the purj)oses of justice in such cases, tlie Act ■') Si f) Will. 1, c. .S.'{, was i)as.sed, enabling ** an// person vho as (jranicc^ assignee^ or olherwisc^ hath ob/(tinc(I, or shall hereafter obtain^ letters patent, &c.,'' a\ 1th the leav(? of tin; law officer, might disclaim any ]»art (.f the *Mitle of the Invention or of the s]pe(ifieati<»n, Htating the reason for such disclaimer"; or inl^dit, with Huch leave aM afore.said, "enter a memorandum of any alteration In mi«1i title or specification (not being such disclaimer or such alteration as shall extend the exclusive right granted by the said letters patent), &c., ttc.'' The (i) In re Sttarp'a Painit, I Wel». P. C. CI.";. AMENDMENT OF SPECIFICATIONS. 93 case of Spilshury y. Clough [c) liaving very much limited the meaning of the words of the statute, printed above in italics, the Act 7 & 8 Vict. c. 69, was passed, giving power to the original patentee, or his assignees, or both jointly, in the event of any interest in the patent remaining in the original patentee, to file a disclaimer or memorandum of alteration. It will be observed that prior to the Act of 1883 any disclaimer or amendment made by the patentee was entirely at his own peril, and that in any subsequent action involving the validity of the patent objection might be taken to the disclaimer or amendment on the ground that it really extended the patent beyond its original limits. The provisions of sect. 18 of the Act of 1883 are as follows : — ''(1) An applicant or a patentee may from time to time, by request in writing left at the Patent Office, seek leave to amend his specification, including drawings form- ing part thereof, by way of disclaimer, correction, or explanation, stating the nature of such amendment and his reasons for the same. '' (2) The request, and the nature of such proposed amendment shall be advertised in the prescribed manner, and at any time within one month from its first adver- tisement any person may give notice at the Patent Office of opposition to the amendment. " (3) Where such notice is given the comptroller shall give notice of the opposition to the person making the request, and shall hear and decide the case subject to an appeal to the law officer. "(4) The law officer shall, if required, hear the person making the request and the person so giving notice, and being in the opinion of the law officer entitled to be heard in opposition to the request, and shall determine (r) 2 Q. B. 46G. 94 Tin: law of patents. wliL'tlier and siibjoct to ^vliat conditions, if any, the amendment oiiglit to be allowed. . ** (o) When no notice of opposition is given, or the person so giving notice docs not appear, the comptroller shall determine whether, and suhject to what conditions, if any, the amendment ought to be allowed. "(G) When leave to amend is refused by the comp- troller, the person making the request may ajipeal from his decision to the law olliccr. '' (7) The law oflicer shall, if required, hear the person making the recpiest and the comptroller, and may make an order determining whether and subject to what con- ditions, if any, tlic amendment ought to be allowed. ''(8) No amendment shall be allowed that would make the specification as amended, claim an invention substantially larger llian or substantially dilVerent from the invention claimed by the specification as it stood before amendment. *' (0) Leave to amend shall be conclusive as to the right of the l)arty io make the amendment allowed, except in case of fraud, and the amendment sliall in all Courts and l"»r all j)urposes be deemed to lonn part of the spcciHcation. "(lU) Tiie foregoing ])rovisions of this section do not apjdy when and so long as any action for infringement or (jther legal proceeding in relation U) a jjatent is pending." Sect. II), *• In an action for infringement of a patent, and in a ])ntrocess of manufacture, he proceeded to claim them all, and it should turn out that one of his imj)rovements was old, the whole patent was bad and the patentee had no exclusive right at all ; if he then disclaimed the objection- able portion, his patent became good as to all the rest. There Avas clearly, therefore, an extension of the exclu- sive right, notwithstanding that this was the very case the statute was passed to meet. I\rr. Justice Maule's view of the Act of Will. IV.^was : — " Wliereas there were previously many small and trifling objections by which, if they were sustained against any one of many im- portant inventions, the whole was avoided. In such cases amendments may now be made by means of a disclaimer " (d). (d) B. V. Mill, 20 L. J., C. r. at page 2 i. 90 iiir. LAW or patents. lioinilly, ^1. K., in the same c'asc((/), at tlic liulls, said, *' It is proper tliev (patentees) slioukl be allowed to cor- rect errors in their patents by removing from the specifi- cation parts wliich arc not material or substantial, or -which they have since discovered not to be new inven- tions ; but this jiower ought to be exercised with great care and discretion." There is a case re})orted in Macrory's Patent Cases at page 11., ( / II H T, < ' JJ.t. AMENDMENT OF SPECIFICATIONS. 97 The amendment becomes part and parcel of tlie original specification in all comis and for all purposes. Under the Statute of Will. IV. no disclaimer or amend- ment could be given in evidence in any action or suit (save and except in any proceedings by scire facias) pending at the time the disclaimer or amendment was eni'olled. The object of this was obvious. It would have been unjust that a defendant should be held guilty of infringing a patent when at the time the action was brought against him the patent was void. The saving clause relating to scire facias was always exercised sub- ject to just provision as to costs, and was inserted with a view to prevent a patent being repealed on account of some trifling error Avhich might have been cured by dis- claimer or alteration. The entry of a disclaimer under the old Act did not make a void patent valid ah initio, "so as to make any person a wrongdoer by relation," and in Perry v. Skinner [g) it was held, that the words " from thenceforth" must be read into the specification. Pro- ceedings by scire facias are abolished by sect. 26 of the new Act, and a petition to the Court is substituted, the grounds for the petition being the same as heretofore in scire facias. Although we have seen that sub-s. 10 of sect. 18 prohibits any amendment under that section pending legal proceedings (including proceedings by way of revocation), sect. 19 provides machinery for saving a patent in the event of the Court or judge being of opinion that a disclaimer should be allowed upon such terms as may appear just(//). It will be observed that the Court or judge have no power to permit amendment by " correction or explanation" under this section. In Dudgeon v. Thomjjson (i), an interdict granted prior (g) Hmdmarch, p. 207 ; 2 M. P. C. 232 ; and In re Medlock's & W. 471. Patent, Newton, Loudon Journal, {h) As to what are just terms, New Series, vol. 22, p. 69. see In re Smith's Patent, Macr. (0 L. E., 3 App. Cases, 34. T. H dX Tin: LAW OK I'ATEXTS. to tlio aniciulniont was refused to be enforced after tlic anu'iidinent, on the ground tluit tlie uniendiuent materially altered the patent, and that it -was quite possible that there was no infringement of the patent as altered. In Kt/noch V. National Anns Compaufj^ Limited (h)^ it was held that the law officer could not order an aj)})licant for leave to dis- claim to pay costs. Sect. 38 of the Act of 1SS;3 cures this defect, giving the law officer full discretion as to costs, with provision that his order may be made a rule of Court. Sect. 20 speaks for itself; may be it is intended to overrule Pen-// y. Skinner {l\ quoted above. Under the Act of A\'ill. I \'., ^v]l( 11 a patentee sought to disclaim It was necessary that he should give his reasons for the proposed disclaimer, but he was not compelled to state reasons for a proj)osed alterati(^n. Under the present statute he must give his reasons for any amendment, whatever the f«)rin of the amendment may be. The reasons will, of course, vary with each case. Either that the patentee has dis- covered that parts of the invention claimed are not new, or are useless, or are not sufficiently described, or tliat they will not work. It will be ol)serv(Ml that the reasons arc not required to lie advertised. Tlic subject of oj)po- sition to the amendiiwiit j)ropose(l w ill be dealt with in tlu; next chapter. It mav be oliscrved that there is nothing in tlie Act of l.S,s.'{ to withdraw from the Master of the l{olls the common law power <»f amending clerical errors in specifications. See In re Johnsons patent [m). (A) n: 1.. J., i{.p. N. s. ;ji. (m) L. K., o ch. D. ."ioa. (/) J .M. & \V. 171. ( 99 ) CHAPTER VI. OPPOSITION. Section 10 of the Act of 1883 provides that upon accep- tance of the complete specification, but before sealing the patent, the comptroller shall advertise the acceptance, and that then the application and specifications, with the drawings, if any, shall be open to public inspection. Section 11 is as follows : — (1) ''Any person may at any time within two months from the date of the advertise- ment of the acceptance of a complete specification, give notice to the Patent Office of opposition to the grant of the patent on the ground of the ajDj^licant having obtained the invention from him, or from a person of whom he is the legal representative, or on the ground that the inven- tion has been patented in this country on an application of prior date, or on the ground of an examiner having reported to the comptroller that the specification appears to him to comprise the same invention as is comprised in a sjiecification bearing the same or a similar title and accompanying a previous application, but on no other ground." Prior to the passing of this Act any ground was avail- able for the purpose of opposition which would have been available for the purpose of destroying the validity of the patent. Prior user was a frequent ground of opposition [In re Samuda[li:ill, (Hi the e\j)iration of those two months, after hearing the applicant and the person so giving notice, if desirous of being heard, decide on the case, but sid)ject to appeal to the law oflicer. (.'J) *'The law ollicer shall, if i-eijiiirrd, hear llic apj)li- cant and anv person so giving notice, and being, in the ojjlnlon of the law oflicer, entitle(l to be licard in oj)posi- tion to the grant, and shall (leterniine whether the grant ought or ought not to be mado. (4) " The law nllicci- iiia\-, if he thinks 111. olilain the nssistance of an expert, who shall be paid mkIi i-emune- (c) 1 I W. K. .'*.'» 1. («•) In rr Manccau/s r king's subjects arc bound to take notice of the kings great seal " (a). Sect. ^4 of 1h(» Act provides : '' There shall bo a seal for the Patent Office, and impressions thereof shall be judicially noticed and admitted in evidence;" and sect. 12: (1) ''If there is no opposition, (»r, in case of oppo.sition, if the detennination is in favour of the grant of a patent, the comptroller shall cause a patent to bo sealed with the seal of the Patent Ollice. ('J) A patont Bo sealed shall have the same effect as if it were sealed with the great seal of the I'liilcd Kingdom/' I'orm D. in the first schedule to the Act gives the form in which in future letters patent are to be issued. Letters jiatcnt consist of six nuiterial jKirts : — 1st. The address. 2nvo feel (»l)li;4*ed to hold that tlu' j)atcnt is void upon the g^round <»f fraud on the Crown, without entering into the fpies- tion whether the utility of each and every i)art of the invention is essential to a patent, where such utility is not suggested in the patent itself as the ground of the grant. That a false suggestion of the grantee avoids an ordinary grant of lands or tenements from the Crown is a maxim of the common law, and such a grant is void, not against the Crown merclv, hnt in a suit against a third j)erson (c). It is on the same princi))le that a ])at('nt for two or more inventions, when one is not new, is void altogether, as in Jli/l v. Thompson [f)', Brunton v. Jfaivkcs { f/) ; for, although the statute invalidates a j)atent for want of novelty, and, consequently, by force of the statute the j)atent would 1)C V(U(l, so far as related U) that which was old, yet the j)rinciple on which tla? ))atcnt has hccn lu^ld to he void altogether is, llint the coiisidci-at inn t'nr the grant Is the noV(lt\" of all. and llic coii^Klcral mn faihiiu\ or in other words the ( 'rown being deceived in its grant, the patent is void, and no aetion maintainahh* upon it. We cannot help seeing on the face of this patent, as set out in the record, that an imjn'ovemcitf in steam-engines is suggested l)V the patentee, and is part (hitc here- midcr written of these presents." This language is intended t<> preserve intact tlu^ royal prerogative to grant or withhold a i)atent — which riglit was bv tiie conmion law absolute and undoubted. Wo have seen tliat this prerogative Is carefully preserved by sect. 110 of the Act. It is the granting portion of llie letters patent which creates the property in the invention. Wc* have seen that this species of property is purely artificial in its nature; it is the most erpiitable and natural method which the state can devise for the reward mid encouragc- nieiit of inventors; it is iii< rely a right yielding nothing until the Invention Is nuule practically useful to himiaiilty. A trade mark Is also an exclusive! right, but It diflfers from a patent, insomuch that it has not nuM-lt and tho benefit of mankind as its consideration. A trade mark is only a light to guarantee the genuine origin of an article. Anyone else may nuike the article, but they arc only ])revented from stamping it with tho same THE GKANT. 107 mark. A patent prevents the public from making the article or using the invention. There is no property which partakes of the nature of an exclusive right save that of a patent, copyright, or trade mark. There is no exclusive right in a secret. A man may only use a secret to his own profit so long as no one is in a posi- tion, by reason of knowing the secret, to use it. But the original possessor of a secret cannot, by any process of law, prevent a person from acquiring the knowledge of his secret, or, having acquired it, from making such use of it by publication or otherwise, as he may think proper (/>). In Ncivlenj v. James (q), although an agree- ment had been made to preserve a secret, the Court refused to grant an injunction on the ground that there was no means of enforcing it. Lord Eldon, L. C, said in Williams v. Williams (r), " So far as the injunction goes to restrain the defendant from communicating the secret upon general principles, I do not think that the Court ought to struggle to protect this sort of secrets in medicine. The Court is bound indeed to ^^rotect them in cases of patents to the full extent of what was intended by the grant of the patent, because the patentee is a purchaser from the public, and bound to communicate his secret to the public." If the plaintiff's secret, however, be one Avhich he intends to patent, and the defendant has acquired the information during the progress of experiments, or from the confidence of the plaintiff, he will not be allowed to make such use of the knowledge so acquired as to sub- sequently invalidate the plaintiff's patent, or to take out a patent for the invention himself, and if he do he will be liable in damages to the plaintiff (s). It will be observed that the word "patentee" is used in the grant; the old (p) Canham v. Jones, 2 Ves. & {r) 3 Mer. lo7. B. 218. (s) Smith v. Dickenson, 3 B. & {q) 2 Mer. -ilQ. P. 630. 108 THi: LAW OK PATENTS. form was, '* to tho said John Smitli, liis executors, administrators or assi«:;ns;" a ''patentee" is, under the •lOtli section, construed as l)einf^ "tlic person for the time being entitled to tlu^ benefit of a patent;" "vvc shall sec presently that this includes assignees, executors and adniinistratt)rs, together with receivers and trustees in bankruptcy, but the sul)ject of the devolution of patent rights is too extensive and important to bo dealt with under tliis head. Tin: rKOiiiniTiox. The prohibition in tlic patent c(»nnnands ''all our subjects, lliat tlicv do not at any lime during tho con- tinuance (tf the said term of fourteen years either directly or indirectlv make use or ])ut in practice the said inven- tion, or any part of the same, nor in anywise imitate the same, nor make or cause to be made an}- addition thereto or sul)traction therefrom, whereby to ]»retend themselves the inventors thereof, without the consent, licence or agi'eement of the said patentee in writing under his hand and seal, on ))ain of incurring such j)enalties as may Ix^ justly inflicted on sudi offenders for their contem})t of this our royal conniianiiii nf letters patent which is appended to the Act of lss;{. It is prc- Huined that the Act was intendcil to amend, simplify and codify the law of ])atents. The foiin above (pioled is an imitation of f<»rms previou.^ly in use. It is not easy to understand what tlu; "penalties" referred to in the j)ro- Iwbition are, ami how are tliey to be jmt in force or re- covered? The Act certainly does n(»l m< nlion p( naltitjs as a form of punishment for infringers. THE GRANT. 109 THE CONDITIONS. AVc find in tlic '' conditions" that the grant is to be avoided '' if it should appear to us, &c., or six or more of our Privy Council, that this our grant is contrary to law or prejudicial or inconvenient to our subjects generally, or that the said invention is not a new invention as to the public use and exercise thereof within our United King- dom of Great Britain and Ireland and Isle of Man, or that the patentee is not the first and true inventor thereof within this realm as aforesaid." This proviso raises some questions of importance. The only proceedings men- tioned in the Act for the repeal of letters patent are pro- ceedings in the High Court of Justice. What is the proceeding before '' six of our Privy Council " ? It can scarcely be believed that reference is here made in a new codifying Act to the old prerogative claim of power to revoke, which has not been put in practice for two hundred and fifty years. If it be intended to have such a system of avoiding patents, surely it would be well to provide for it in a more certain manner than merely to mention it as one of the conditions in the patent itself. In the next place we find here, for the first time, an intimation that " novelty" means novelty within the kingdom ; in the recitals of the patent it is recited as being novelty universally, and throughout the Act itself we find that " novelty" is not limited to novelty within the kingdom. Again, we find here for the first time the inventor described as ''the first and true inventor within this realm." In the Act and in the recitals of the patent he is described as the ' ' first and true inventor." We have shown that the omission of the words "within this realm" makes an immense difference not only in the class of persons who may be grantees of letters patent, but also in the nature of the evidence of " prior user" which may be given in an action cither for infringement or revocation. The ambiguity of the form of letters patent which is given, and the by no means 1 1<» THK LAW OF PATKNTS. dear provisions of tlie Act upon tliese matters, will in all probability result in a j)lentiful crop of litiiration(/). The next proviso is one for the determination of the patent in tlic event of the prescribed fees not being paid, and the last provides for the sup})ly of the patented article for the use of the public service on reasonable terms. This ]u-oviso in no ■\vav binds the Crown if the patented article should be required for the public service to i)ur- chaso it from the j)atentee upon reasonable terms and conditions. {In re Daincs Patent) (ii). Prior to the Act of 1883 letters patent did not operate as ap:ainst the Crown. The Crown mlji^ht make use of the invention without in any way recofj^nlslni^ any rights of the invent* >r or patentee (2-). liut should the Crown have emi)loyed a contractor, as distlnp^nished from a servant, to manufacture the })atented article, the usual proceedlnji-s for infringement might be brought against the contractor, since he is the person using the ])atent, and not the Crown. There being two methods of in- fringing; first, nuiking and v(>ndlng ; and secondly, using, "^riie contractor infringes by doing the first, and it makes no difference that the Crown also infringes by using the invention (//). This case was subse(|U('ntlv aflirnu'd in the House of Lords. Lord Ilatherley said, '' Tlir Crown has no right to authorize others who are not their ((lliccrs, servants, or agents, to use a j)atented invention without a license from tlio patentee ;" and Lor«l S»jb(. rue added, " I agree with th(5 Court of (^hieen's Hendi that this de<-IsIon [Fi'dtlur V. Ji.) is not to l)e extended by any reason- ing from the c«)nvejiieiu'e of the Crown, oi- o|' the publico service, or from anv idea that it practically eniiHs to the (/; 8«M) Martilrn V. Thr Sarille x , Fnithrr V. Ji., H ]',. & S. Sirttt, ^r. Co. Limited, L. K., 3 I'.^T. Ex. D. 20.1, nn«l RotU v. liaaci, (y) Dimn v. T/ir London Small L. I?., 10 Hi. I). 2r,H. .irmn Co., b. It., 10 (2. 15. 1 .'50 ; (m) \ A. & E. 910. L. li., 1 App. Cu«. Gil. THE GRANT. 1 1 1 same thing, wlictlior the Crown manufactures itself or gives orders to other manufacturers." The right of the Crown to use a patented invention for tlie public service without being under any obligation to remunerate the inventor has been abolished by sect. 27 of the Act of 1883. (1) "A patent shall have to all intents the like effects as against her Majesty the Queen, her heirs and succes- sors, as it has against a subject. (2) '' But the officers or authorities administering any department of the service of the Crown may, by them- selves, their agents, contractors (s'), or others, at any time after the application, use the invention for the services of the Crown on terms to be before or after the use thereof agreed on, with the approval of the Treasury, betw^een those officers or authorities and the patentee, or, in default of such agreement, on such terms as may be settled by the Treasury" after hearing all parties interested." Sect. 44 deals with the acquisition by the Secretary of State for War of any inventions dealing with instruments or munitions of war, and with the non-publication of specifications describing such inventions, and generally with the preservation for the public benefit of the secret of them. THE CONSTRUCTION. " And lastly, we do by these presents for us, our heirs and successors, grant unto the said patentee that these our letters patent shall be construed in the most bene- ficial sense for the advantage of the said patentee." These words are inserted in the patent for the purpose of preventing the common rule of construction of grants of the Crown when founded upon a petition being read most strongly against the grantee. This favourable con- struction will not, however, in any way save the validity of the patent if it can be shown to have been granted upon a false suggestion. (z) Dixon y. London Small Arms Co., supra. 11 J Tin: LAW or patents. CIIAPTKIl VIII. Tlir DEVOLUTION OF A I'ATLNT. We have seen tluit a "patentee" is ''tlic person for the time beiu*:;- entitled to the Iji'Hcfit of a jjatent." Tliis includes the lirst inventor and any person or persons in ■Nvhoni the patent may liave beeonie vested by O2)eratiou of law or by assignment. Tlie i)roperty of a patent passes, by operation of law, Avlicn tlio ])atentee dies or becomes a bankrupt. I pon tlic death of a patentee his interest in the pr(»peity passes to his exeeutors or administrators as tlie case may be in the Hkc manner to tlie rest oi his jiersonal estate. Any stej) whicli in tlie Act is re(piired to be taken by the patentee, may lie taken by the executor or administrator, and sect. 'M of the Act jirovides that — " (1) If a person, possessed of an invention, dies without making a})j)li- cation for a patent for the invention, application may bo ma(h; by, and a patent for the invent i(»n granted to. Ids legal rej)resentative." This imdoubti'dly, seeing \\\c terms of the grant itself, will mean liis legal personal representative. Some letters patent n\ the ( 'rown (not for inventions) have a limitation to heirs or heirs male, such, for instance, as jiatents of nobility. The Act pro- ceeds — "('«.') Kvery such applieation must be nuuh^ within six months <»f the decease of such jieison, and must contain a declaration by lln- lc;/;d ii|ii(>(iitative that lie bjlor and o//icrs{/:), the plaintiff sued tho defendants for th(» non-])ayment of certain idvaltics due from the defendants to the jjlaintifl' under a license under seal for the u.se of the ])laintitV's j)atent. The defendants defended on the grounds (1) that the invention was not a (/) Chanter \. Johnson, \\ .M. (/i) Iltn/nrw Malllxi/A'V .\{. \:',9,. & W. Jll. (0 Soc Taylor v. Jlar,, 1 \Vcl>. (). h\ giving judgment, Lord Cottenham said, " That is exactly coming to. the point which 1 put, whether, at law, the party was estopjx'd from disputing the patentee's right, after having onc(; dealt with liim as the pro})rietor of that right. And it appears I'mm tlio authority of that case [Iluijne V. MalUnj (y) ), and U-'^^wx tlic «itli( r cases, that from the time of the last payment (/.r. expiration of license), if the numufacturer can succi'ssf'ullv resist the ])atent right of the party claiming the; rent, that he nuiy do so in answer t<» an action lor the rent for the use of the patent during that year.'' 'i'he language is not clearly reported, but this appears to mean — to an action for the use and occu- pation, so to speak, of the pat< ni :ifi validitv of the ])atent, and (/) Chantrr v. Lrenr, \ \\vh. («) ].. IJ., 2 App. Cn«. 123. P. C. 2y.j. (/I) yrhint V. rnthcrfjill, 1 Woh. (m) 6 W. R. 719. r. C. 287. (n) L. H., .'JCli. DIM. (y) .'IT. K. 138. THE DEVOLUTION OF A PATENT. 117 that there is no implied warranty on tlie part of the assignor or licensor. Cutler v. Boivcr (q), Smith v. Scott (r), Walton Y. Lavatcr {s), Norton v. Brooks (t), Crossley v. Dixon (u). Where the license is by parol and has been acted upon, and so long as the licensee has thought fit to claim the benefit of it, he is estopped from denying the validity of the patent, but no term being fixed for the duration of the verbal license he may determine it at any time (.t). As to estoppel by judgment, see Goucher v. Ctayton. AVlien the defendant has assigned his patent to the plaintiff, he cannot afterwards deny the validity of his o\\m 23atent — Walton v. Lavater^ supra. A licensee cannot take advantage of a judgment obtained by third parties against the patentee declaring the patent bad [y). But a licensee, in an action by the patentee, may claim to jDlace the most favourable construction on the specifica- tions, which will support the validity of the patent, if another construction would make it bad [z). An assignment of patent rights in a partnership disso- lution deed will estop the retiring partner from subse- quently setting up the invalidity of the patent by way of defence to an action brought by his late partners {a). But where the plaintiff and defendant had been partners, and had worked as such the defendant's patent, there being no deed between the plaintiff and defendant which inferred the validity of the patent, held that plaintiff was not estopped from denying the validity of the patent [b). And where partners are joined as defendants {q) 11 Q. B. 973. (y) The G rover and Baker Seit- \r) 6 C. B., N. S. 771, and 28 ing Machine Co. v. Millard, 8 Jiu-., L. J., C. P. 325. N. S. 714. (s) 3 L. T. E., N. S. 272. {z) Trotman v. Wood, 16 C. B., (0 7 H. & N. 499. N. S. 479. (k) 10 n. L. Cas. 293, and 11 {a) Chambers v. CricJdcy, 33 Jur., N. S. 107. Beav. 274. (a;) Crossley v. Dixon, 32 L. J. (5) Axniann v. Lund, 22 W. lu Ch. 617. 789. 118 THE L.\W or PATENTS. ill an action for infrinfromont, and one is assiprif^i' of flic patent, the other is nut debarred from setting up the picas of invalidity (r). Fraudulent agreements for tlic assignment of patents, such, for instance, as bubble patents, will beset aside (^/). But in the absence of fraud the agreement will be en- forced, and it is no defence to the action that theplaintilY lias not invented the alleged invention (c). Executors may assign a patent prior to registration of the ])r(.bate(y'). Specific performance of an agreement to assign letters patent nia\' be decreed (y). Kven though the agreement be to assign patents for future inventions (h). . Licenses differ from assignments, in tliat the patentee gi-anting a license does not part with his whole interest, but grants merely a right to us(> the ])atent for the whole term or any portion of tlie wliolc term. The license may be exclusive or otherwise. Sect. 22 of ilif Act of 1883 provides for the granting of compulsory licenses. " it on tlic ])t'titlun of any jx^rson interested it is proved to the lioard oH Trade that l)y reason of the default of a })atentee to grant licenses on reasonable terms — ''(a) The i)atent is not Ixlng worked in ihc I'nited Kingdom ; or "(ij) The reasonabjr r('f|iiii'cincii1s ni the public willi resj)ect to tlic invcntinu caniint lie .sii|i]ilic(| ; or "(c) Any jxrsoii is j)r('vcnlc(l fiom walking or using to the best advantage an invention of whicli he is pos- KCMied, the JJoard may (/; J'.lltcuod w ('Itristt/, \() ixXY.y W. K. 711'. N. S. 1071). (rfj l^cell V. Jlicks, 2 Y. & C. ig) I^itin v. Broun, 1 I A\'. U. •10. O-JO. («) Smith V. liuchingham, IH (/i) I'rinhn'j and Xinncrical W. Fi. .'JM. Jirgiatrrintf Co. V. Hampsotl, 'M T- .T , rh. 705. THE DEVOLUTION OF A PATENT. 119 licenses on sucli terms as to tlie amount of royalties, security for payment or otherwise, as the Board, having regard to the nature of the invention and the circum- stances of the case, may deem just, and any such order may be enforced by mandamus." These provisions are entirely novel; "(a) and (b) " are capable of being reasonably construed, as to "(c)" it is difficult to understand how the Board of Trade will come to a decision as to whether " a person is prevented from working or using, to the best advantage, an inven- tion of which he is possessed." The " invention" must be protected by letters patent (see the construction given in sect. 46). The proceedings under sect. 22 will be regulated by rules to be made by the Board of Trade in pursuance of the power given by sect. 101, sub-sect. 1 (g), and sub- sects. 3, 4 and 5. Money paid by a licensee for royalties cannot be recovered when it is ascertained that the patent was void ah initio (^i). And if the licensees have kept the license and used it, the licensor can recover from them the agreed royalties, although the patent may have been void and the license not under seal (/ ). But if the con- sideration for the money paid is that an application for a patent should be made and a license to use the patent granted, no application being made for the patent there is a total failure of consideration, and the price paid may be recovered (/:). But otherwise, if the licensor knew from the first that i\\Q patent was void (/), a license is not assignable (;«). A license to a man and his assigns means a license with power to licensee to sub-license (0 Taylor v. Hare, 1 13. & P. Eep., N. S. 70. (N. E.) 260. (0 Chanter v. Lccsc, 4 M. & W. {j) Chanter V. Deichiirsf,l2'M. 295. & W. 823. (?») Per Maiile, J., in J^oiccn v. (A) Knozvles v. Bovlll, 22 L. T. Hodf/es, 22 L. J., C. P. 198. 100 Tin: LAW OF PATENTS. (uh'ni). A licensee may covenant not to manufacture without aj)})lvin^''tlie patented Invention; such a covenant is not in restraint of trade (w). A license may be created by parol, hut if no time is fixed for its duration it may be determined at will, and after the determination there will be no estoppel to the ex-licensee to dispute the validity of the patent (o). A patentcu^ havinir i^ranted a license cannot prevent anyone vending the articles which have been made in i)ursuance of the license (/>). And an inventor sellinj^ the patented article abroad cannot re- strain its iniiKtrtation and sah^ in tliis country. Althousrh an assignee of the patent in this country might restrain the imj)ortation of an article made by the original in- ventor or his assignee abroad (7). A latent ambiguity in a license by deed may be cx})lained by ])arol evidence in the same manner as other deeds (;•). A licensor may in the license deed stipulate for a forfeiture in the event of royalties not being paid (s), but such forfeitm-e may be waived (/). The licensor may also agi'ce that he will take all necessary steps to support the validity of the patent (u). Sect. 2'i of the Act pnnides :— '' (1) There shall bo kept at the Patent Ollice a book called the liegister of Patents, wherein shall be entered the names and addresses of grantees of patents, notifications of a-ssignmcnts and of transmissions of ])atents, of licenses under j)atents and of anu-ndments, extensions and revocations of patents, and Huch other matters affecting the vali«lity or ])ro- prictorshij) of patents as may from time to time Itc jnc- (n) Jonrt V. Leet, 1 II. & N. (r) liotlcn v. The London Small 189. Arnt$ Co., 10 L. J., Q. H. 213. (o) CrOitlrtj V. Dijiill, li. J., .'I'J in) TirlcUH V. Ilnoprr, .0 Ex. Ch. 617, II. L. 8:j(). (/>) Tltoma$ V. Hunt, 17 ( '. ]'.., (/ Wartrirk v. JInoprr, .'J M. & N. 8. 1H3. (f. r,(). (7) HcHm V. WUlmott, L. 11., (li) Jlrmlcmnn v. Moslyn Copper Ch. 23y. Co., L. li., 3 C. r. 202. THE DEVOLUTION OF A PATEXT, 121 scribed ; (2) tlie register of patents shall be iwhnd facie evidence of any matters by this Act directed or autho- rized to be inserted therein ; (3) copies of deeds, licenses and any other documents affecting the proprietorship in any letters j^atent or in any license thereunderj must be supplied to the comptroller in the prescribed manner for filing in the Patent Office. By sect. 85, " There shall not be entered in any register kept under this Act, or be receivable by the comptroller, any notice of any trust, expressed, implied, or constructive." Sect. 87 provides for the entry in tlie register, at the request of the j^erson becoming entitled, of any assignment or transmission of interest. The per- son registered shall have power to deal with such interest as he has registered, absolutely : " Provided that any equities in respect of such patent, &c., may be enforced in like manner, as in respect of any other personal pro- 2:)erty." Sect. 88 deals with the inspection of registers, and the obtaining of certified copies. By sect. 89 sealed copies are to be received in evidence. Sect. 90 empowers the Court (High Court of Justice) to order the alteration of the registers, upon the application of persons aggrieved, and upon sufficient cause shown. The comptroller may himself correct errors in registers which are merely of a clerical nature, sect. 91. Sect. 35 of the Act of 1852, after providing for the registration of proprietors, assignments, &c., of patents, proceeded : ' ' Provided always, that, imtil such entries shall have been made, the grantee or grantees of letters patent shall be deemed and taken to be the sole and ex- clusive proprietor or proprietors of such letters patent, and of all licenses and privileges thereby given or granted." It will be observed that tlie Act of 1883, quoted above, materially differs from this enactment. Hence Chollett 122 THE L.\W OF PATENTS. V. II'>fnnan{x), and Ilassall v. Wr>nt matters of the Judicial Connnittee. '^ (7) The costs of all ])arties of and incident to such proceedings shall he In the discretion of the Judicial Committee; and the ordi'rs of the Connnittee respecting costs shall he enforceable as if they were orders of a division of the High Court of Justice.'' These provisions have made no substantial alteration in the law. Pil<.i- t.. the Act o & G AVill. IV. c. 83, there was no jjower in the Crown to (>xtend the duration of letters patent, and .should an inventor have desired to ap})ly for an extension of the term ()f his grant, he could onlv do so 1)\' aj)plvlng fnr and obtaining a special Act of Parliament in his favour. The Act of Will. 1\'., ami the amending Act of L* t\c •') \\r\. c. 07, Inti-oduced the method of ijetitioning and obtaining an extension to the Privy Comicil. It had been fouml that the procedure* to obtain an Act upon each occasion, when an extension was .sought, was too costlv and cumbrous, hence the modern course of j)rocedure was devised. This l)eing sliortK- llie hislorx" of jurisdietlou of the I'rivy Council, at lirst an hiipre>>ioii gained giouud that tlie Privy Council W(;re to ])ut themselves in the ])osition of Parlianu'iit, and not In that of a court of law, in considering the claims of np)>llcants who appeared lM»fore them; tluit tlie\' were to wei;_'li the claims of the public interest ver\- hea\il\- in the Iialance as against the inventor. \\\ Jic t^ioaiuc'a l*a/cnl (>/) \.<>\(\ Prougham (y) 1 Web. P. C. 733. EXTENSION OF TERM OF PATENT. 125 said: "If this case were to be disposed of upon the ground which in arguing such cases have sometimes been assumed to be the fit one, that there must not only be merit and benefit to the pubhe, and (which is essential) a want of sufficient remuneration in the course of using the patent ; but that, moreover, the case is to be tried here as on a bill in parliament introduced to prolong the patent ; then, I ap]:>rehend, there can really be no doubt whatever that in this case no bill would ever have passed through the two houses of parliament." The true construction is, however, not so severe as that, although still sufficiently severe. In re 3Iorgan^s Patent [z) Lord Brougham said: "It is by no means their (the Privy Coun-cil) course to put themselves j^i'O- cisely in the situation of the Legislature, and never to grant an extension where an Act of Parliament would not have been obtained. At the same time there are some limits to this. They are to look to a certain degree at the position in which they are placed, and to consider that they here represent the Legislature, and that they are invested with somewhat similar powers of discretion to those exercised formerly by the whole three branches of parliament." Such is the spirit in which the Privy Council will approach the subject of an extension, not benevolently to the applicant, but still with not so stern a regard to the interests of the public as parliament would entertain. In considering their decision the Privy Council will consider : — 1. The nature and merits of the invention in relation to the public. 2. The adequacy or inadequacy of tlie profits made by the inventor as such. 3. The circumstances of the case. Li re ErarcVs Patent (a) Lord Lyndhurst said, " In cases (z) 1 Web. P. C. 739. («) 1 Web. V. C. o59. lOG Tiir. LAW or patknt.^. of tliis kind we expect a very stron^^ case of hardship to 1)0 iiindo out as well as a stronof case ii})oii \hv utility of the invention;" and the same privy coiniL-illor miSnanic\s ^•^^^(i) said, ''We consider the invention as very meri- torious, tlie result of a f^reat deal of labour, care, and science, and that it is extremely useful in its effects. Wo arc satisiiod l)v n^nsonnhlo cvidi^nco that the party has sustained very considerable loss, and uiuler these circum- stances we think that the period ought to be extended." It will be observed that the three considerations for the Privy Council laid down by the Act of 1883 are almost identical to tlu^ «;rounds of extension as given by Lord Brougham in He Demsnrs F((frut{c): '' The j)arties must show in the first place some invention, in the iu»xt ])laco a benefit In llio public, and in tlic llilnl jilacc^ that they have not had adecjuate remuneration." It is immaterial whether or not the ai)})lication is opposed. TIk; Privy Council will n^fpiire every necessary ground for extension to be strictly proved before they advise an extensiim ('/), and tliis even though the Crown through the attonu^v-general consents (^•). '' The merit of an importer is less than of an inventor. We are sitting judicially, and it is an argument against tlie patent that it is Imported and not invented. 1 do not .say it takes away tlic merit, but it makes it much snndler (/)." l''.xtension of tlie icnn will be granted (•) assignees, as they have, so to speak, purchased the merit of the original inventor, but th(» argument again.st importers will ajtply with cfpud force again.st assignees (//). Merit here means the consideration wliidi has been (A) 1 Wob. P. C. /iOO. Moo. r. C. f. 490. (c) 2 Web. r. C. 1. '/) IVr I/ird Ilroiiplmm In rr (). So /// re Newton a Patent (. (s) In re Unlet* Patent, 1 Woh. P. f. .'iT.K P. r. 739, nnd In re h'at/s Patent, (jt ) In re Gnllotrai/\s Patent, 1 Wol.. r. C. .'i72. Hupra. (a) In re (iaUoicatjB Patent, I (*) In re Carres Patent, L. R., "Web. r. C. 720. 1 r. C. 539. (A) In re I/ilU* Patent, 1 Mw. (/) In re Poole's Patent, 1 Moo. r. C. C, N. H. 258. r. C. C, N. 8. -152. EXTENSION OF TERM OF PATENT. 131 2:»rofits the profits arising out of the manufacture of the patented article, even tliougli intenclecl for exportation (,^). So also lie must add tlio profits wliicli have been made by his licensees (//). And in Re Johnson'' s patent, Lord Justice James said : ^' Tlicir lordships are of opinion, that where the question to be considered is, whether an invention has been suificiently remunerated or not, in taking into consideration the remuneration received, they must have regard to the remuneration which the invention has brought in to the patentee or the person who claims the right of the patentee, whether it he in one coimtrjj or another y We have seen by sub-section 6 of the section of the Act of 1883 now under consideration, tlie rules of the privy council, which have been heretofore in force, are to continue until amended or altered. Rule 9 is as follows : — '^ A party applying for an exten- sion of a patent .... must lodge at the council office six jDrinted copies of the specification, and also four copies of the balance sheet of expenditure and receipts relating to the patent in question, which accounts arc to be proved on oath before the lords of the committee at the hearing." This must be done within one week of the hearing, rule 10. The judicial committee will not enter into the accounts in a case for extension unless they have been filed in accordance Vv^th this rule (/). But in exceptional cases, the filing of perfect accounts may be excused (/). Where the estate of a deceased patentee was of little value, and no accounts liad ever been kept, the petitioner, the administratrix and widow of {g) hire Harchfs Patent, Q)1^Q0. (/) In re Johnson's and At/a'n- P. C. C. 441. son's Patent, L. E., 5 P. C. 87. (A) Li re Trotnian's Patent, Ju (J) In re Lowe' s Patent, lOJur. P. 1 P. C. 118 ; 3 Moo. P. C. C, 363. N. S. 291. 132 Tin: LAW or patents. tlio patentee was examined to prove an allcfration In tlio petition, to tlie effect tliat not only IkuI tliere been no j)roiits, Imt a ronsideral.de lo.ss(/-). Tlie account of profit and loss ought to l)e clear and precise (/). The application will be refused if the peti- tioners accounts arc unsatisfactory (;w). The accounts furnished by the })etitioner not containing sufliciently full and accurate information in respect of the patent, or the remuneration received by him, the judicial committee declined to recommend a prolongation of tlu* term(//). In one case, the accounts being pn'niii facie unsatisfactory, the judicial committee directed the question of accomits to be taken before considering the merits of the inven- tion (o). And where the accounts were prima facie satisfactory, the petitioners were allowed to prove the merits of the invention before going into the accounts (/;), Tlie l)ooks of tlie petitioner in respect to profits arising from his patent having Ijeen lost during iiis bankriij)tcy, the account of profit and loss was taken uj)(»ii his own evidence (7). This was an exception to the general rule, which is, tliat evidence will not be received from tlie })etitioner. Where a j)atent(^e, whetlier I'hiLilish or loreliiii, has obtained foreign patents, they should be stated in a j)ctition for prol ])at('nt ; ))ut it must always be borne in mind that the assignee of a patent does not, unless under ])eculiar circumstanc(^s, a])})ly on the same favourable footin^i* that the ori pro- perly rewarded, in dealing with an invention which has proved useful and beneficial to the })ublic, does not exist in the case of an assignee, unless the assignee be a ])erson Avho has assisted the i)atentee with funds to enable lilm to jK'rfcct and })ring out his inventinii, and has thus enabled him to l>ring it into use." And in lie Pitman s Patent (h) '^'w .] . W. ('<.lvile said: '' Then; are no doubt ca.ses in which their lonlshijis have granted aj)j)lications by \\w assignees of the j)atenteo for e-xtcnsion of tlic tcnn, an!>1' ■ I' •'-> '^ \f ■ ., In rr Bmlmtra I'aUnt, 1 P.C. C. 217. Mm... p. (". C, N. 8. 239. (/) In re Xortunt I'ahnt. {h) 8 Moo. V. C. C, N. 8. 297. EXTENSION OF TERM OF PATENT. 137 rule which theu' lordships entertain in applications on the part of assignees is, as was stated by Lord Brougham in Re 3Iorgan^s Patent [i)^ that by so doing 'they are, though not directly, yet mediately and consequentially, as it were, giving a benefit to the inventor, because, if the assignee is not remunerated at all, it might be said that the chance of the patentee of making an advan- tageous conveyance to the assignee would be materially diminished, and consequently his interest damnified. For this reason consideration has been given to the claims of the assignee who has an interest In the patent.' " There is no case showing that an extension has ever been granted to licensees ; but it may be suggested that at any rate exclusive licensees are "persons for the time being entitled to the benefit of a patent," although, of course, very exceptional circumstances indeed would have to be shown to warrant an extension to them. It is difficult to estimate the effect of sect. 36 of the Act of 1883 upon this branch of the subject. Sect. 36 provides that : " A patentee may assign his 2)atent for any place in or part of the United Kingdom or Isle of Man, as effectually as if the patent were originally granted to extend to that place or part only." Will the privy council, on the application of an assignee for a portion of the kingdom, extend the patent for that portion, or must all parties to the patent join in the petition ? It is evident that whilst one district assignee of an electric light patent, for example, may have been amply remunerated, another may not have been remunerated at all, owing to the action of local authorities or other matters entirely beyond the assignee's control. How could the committee in justice refuse the latter an extension ? On the other hand, how could they grant it to the other ? (0 1 Web. P. C. 737. V^S TITE L.VW OF PATENTS. Tlicn again, if a patent may be extended for one district and not for anotlier we t>liall have the enormous practical dilHcuUies and public inconveniences of an article being patented in one county and free in another, a state of aiVair.s -svhicli, we venture to .say, would be intolerable to the public. Any person may enter a caveat against the extension, and may be heard at the bar in suj)port (.»f their (,>p])0- sition ; and where unreasonable opposition is offered, they will be ordered to pay tlie petitioner's costs (/•). But where the o})position is well founded and successful, costs will be alhjwed to the opjiosin^- ])arty(/). If the petition be abandoned, costs will be given to opposers, and tluy need not give the petitioner notice of their intended a})})lication for the same (;//). AVliere the peti- tioner had fairly and honestly stated his case, both the things against and the things for him in his j)etition, and the impilry had been jjrolonged by tlie oj)position, tlie costs of the opj)osition refused, althoiigli tlic petition liad been dismissed on tlio ground of sulHcient remuneration. Where two or more j)iirties have opposed the petition separately and successfully, the committee will some- times order a fixed sum to be paid l)y the petitioner to the oj)i)onents, to Ijc aj)portioned between them in lieu of saddling him with several sej)arate sets of taxed C08t8(//). We tlius see that, whilst on the one hand an unwar- ranted aj»j»lication for an extension may be very costly, unreasonahle oj)position may be eciually so. An extension of a patent having once l)('(>n granted, the j)rivv council have no jurisdiction to entertain a {k) In re Doicnton'i J'alcit, 1 V. C. 39. "Wob. r. C. .107. (m; Jn re Jonm' Palrut, U Moo. (/) In re }\'e»lrupp ami (nbhim' V. C. C. 11. AIho In re llilW Patent, 1 Web. 1'. C. 6ol. J'ulrnt, 1 Moo. 1'. C. C, N. f^. (m) In re liridiont J'titnit, 7 i!.*H, and In re WirliCn Patent^ 8 MfKj. r. C. C. 191). Slo, howovor, Mou. V. C. C, N. «. 300. In re Milnert PalenI, 9 Moo. 1*. EXTENSION OF TERM OF PATENT. 139 petition for a further prolongation, their power being exhausted ; and this objection may be taken by an opposing party, even though omitted from the objec- tions filed by them (o). The rules of practice to be observed upon application for extensions of letters patent will be fomid hereafter. (o) In re Goucher's Patent, 2 Moo. P. C. C, N. S. 532. 140 Tin: LAW or patents. CIIAITKK X. CONFIUMATION. Tin: Statute 5 Si G A\'ill. 1\'. c. 83, provided a remedy for ca.ses of liard.sliip, biieli as, -where an invention luid been invented or used and subsequently abandoned before the date of tlie patent in a nuuinir unknown to the patentee at the time of his a])i)lieation. There ■would be a suflicient i)rior user to invalidate tlu> ])atent, and yet there would be <^reat merit ])robably in the patentee, and a f^'eat benefit to the public. The jjatenteo might petition tlir piivy council to conllrm the patent, that is, to declare it valid, notwithstanding such j)rior user. The })roceedings on such a petiti(»n were similar to those uj)on a petition for extension. 'i'he Act of l.ss:; repeals the statute ") cV: Will. 1\'. c. 8'{, and with it all jiroceedings for confirmation; and thi.s method of clothing an invalid })atcnt witli validitv is aboli.shed. A j)erusal of sect. 4''>, sub-sect. 2 c^c 3, sIkjws that this apj)lies to j)ati'nts existing at the com- mencement of the Act, as well as to those to be hereafter ajiplied for and granted. It is not strictly the purj)ose of a law work to criticise tlic enactnu'nts of the legislature, saving in their con- struction and aj»j»lication from an administnitive ])oint of view, otlierwise a great (h:il iiii;jht be Miid :ts to tiie eviijencc of a))olisliing that whidi was intended for and operated merely as a relief uinhr v( ry hard and excej)- tional circumstane(«i. ( 141 ) CHAPTER XI. REMEDIES OF THE PATENTEE AND OF THE PUBLIC — ACTION FOR INFRINGEMENT. An action for infringement is the remedy wliich the patentee has, and the means which is given to him for enforcing his patent privileges. The courts are bound to take notice of the patent, and are bound to give legal effect to it, provided it cannot be shoT^ai to have been granted contrary to law. PARTIES TO THE ACTION. The Act of 1883 gives no directions as to what persons may be plaintiffs or defendants in an action for infringe- ment, and therefore leaves the question of the joarties to the action as it was before the passing of the Act. The original grantee, it is obvious, so long as he has not parted with the whole of his interest in the patent, may be a plaintiff. And so may the assignees of a patent («), even though he has acquired the right by assignment of two sej)arate moieties, and the party sued is the original grantee (b). The assignee of a portion of a patent may sue for an infringement of that part. Erie, C. J., in giving judg- ment in DunnidlffY. MaUeU[c), said: "The question is whether an assignment of part of a patent is valid. I incline to think that it is. It is every day's practice for the sake of economy to include in one patent several things which arc in their nature perfectly distinct and («) Electric Telegraph Co. v. {b) Walton v. Lavater, 8 C. B., Brett, 10 0. B. 838. N. S. 1G2. (c) 7 C. B., N. S. 209. 142 THE LAW OF PATENTS. severable Ikiny- therefore inclined to think that a patent severabjc in its natiu-e may be severed by the assi^ment of a part, I see no reason for holding that tlic assignee of a separate part -which is the subject of infringement may not maintain an action." The j)laintifl' in such an action would not be allowed to sever his part from the rest of the patent, and he would be liable to be defeated if it could be shown that the patent in any of its parts was void. But, on the other hand, he would have to show that his part alone would have been sufti- cicnt to su})port a patent, i.e., that it contains a new and useful invention. Sect. 33, however, of the Act of 1883, provides, '' Every patent shall be granted for one invention only, but may contain more than one claim ; but it shall ncjt l)e competent fur any jxu'son in an action or other proceeding to take any ol)jection to a patent on the ground tliat it comprises more than one invention." By sect. 3G, '^ A i)atentec may assign his patent for any place in or part of the United Kingdom, or Isle of Man, as efl'cctuallv as if the patent were oriL:inall\' i:rantod to extend to that jHace or part only." The assignee for a district will be in a positi). But this refers to the mere infringement alone within the mean- ing of Tindal, C. J., in JSIunh v. Foster [c), when he told the jury that ''for the purpose of inquiring whctlicr the defendants have infringed the patent or not, we are to assume that it is a good patent, that no objection arises either to the nature of the grant or the specifica- tion which has been enrolled by the plaintiff." If the patent is invalid there can be no infringement in the sense that a patent which has no legal existence (fl) Walton V. Baf email, 1 AVeb. P. C. 586; Be la Jiiicx. Dtchcnson, V. C. 616. 7 E. &B. 738. (h) Walton V. rotter, 1 Web. (c) 2 AVeb. V. C. 99. T. L 14G THE LAW OF PATENTS. cannot Ik* infringed, lint assuming- that it lias a legal existence, the (jucstion is for the jury. This explains the apparently contradictory decision in Curth v. Platted) \\\ the House of T^ords. The question of infringement •was there taken as involving the validity of the patent. It is equally an infringement Avhether tho defendant acted in ignorance of the plaintiffs patent or not. In Ilcath V. Uiin'in(c) Parko, B., delivering the judgment of the Com*t, said: "Theresas therefore no intention to imitate the patentee's invention, and we do not think the defendant can be considered to be guilty of any indirect infringement if he did not intend to imitate at all." Tliis judgment certainly gives an erroneous im- pression of the law, and ►Shadwell, V. C, when the same case came before him(y'), said: "The party com- plaining of the act is not the less prejudiced by it because it was committed miintentionally ; and my oj)inion is that, if a i)arty has done an act that is injurious to the rights of another (though without any intention of doing him an injury) he is answerable for tho consequences.'' In tSlcirn.s v. Kcu{i/if/((/) the Lord Chancellor disa])j)rovcd of tho case in tho Court of Exchequer; "and I nuist decline t have notice of a patent (r of fact, and that intention is not material to the conclusion. To prove infrinp:ement, it nuist bo shown that there is a substantial resemblance (o). The infringement must be of a i)art for which the patent was granted, and not merely of a i)art described in the specification (/>). A patented article sold by a patentee carries with it the right of being used and sold anywhere (7). It is impossible to surmise how the Courts will deal with sect. 36 of the Act of 1883, which enables a l)atentee to assign his patent for any jjlaco or part of the kingdom as effectually as if the patent were originally granted to extend to tli;it i)laco or i)art only. Supposing a patentee to assign a ])atent for making brushes for London to A, and for Liverpool to B. Will the purchaser of brushes from A in London be infringing the rights of B by using the brushes in Liverpool, and will he be liable to an action ? If h(> is not liable to bo sued, of what use is the right of assignment for a i)art only, since the assignee, for one j)lace, could make the brushes in that place, and sell them universally to the detriment of assignees for other jijace-^. Tluj amount of ])rior user whieli will \)o suflicient to invalidate a jjatent, dilVers considerably from the amount of user which will be held to infringe a ]).'it(Mit : " these are (liJlV-rent fjuestions. dejiendingon wholl}' dilVerent con- siderations, the ono u|i<>ii the extent of j)revious know- ledge, the oth< r ii])<)n the effect of the grant" (r). Wo liave seen that by sect. 3.'{ of the Act of IHS.'i, a patent may still contain more than one claim, and in such a case, (o) StrnJ V. Antlcrsot,, 2 Wcl). G Ch. App. Cnfl. 239. P. C. 165. (r) r.r Tunj.T, V. C, in CaU. (/>) C'rotl V. lulijf, yi. Dig. trrll V. J'(inili.f.srnffrn, 'J llnro, i^H; IW. Xriifnii V. O'rantl Junction Hail. {q) Drtlx V. Il'i/lmot/, L. I{., rv>., .0 Kx. 33 1. THE CAUSE OF ACTION — INFEINGEMENT. 149 provided every claim wliicli is made is valid, a patent may be infringed by infringing any one claim. In Gillett v. Wilhfj[s) Coltman, J., said : — " If they are all new (the j)arts claimed), and the defendant has infringed any one of them, it will be siifhcient to support the action, and it is not necessary that he should have infringed them all." In Newton v. The Grand Junction Rail. Co. (t), Pollock, C. B., said: — ''But in considering the question of infringement, all that is to be looked at is, whether the defendant has jDirated a jjart of that to wliicli the patent applies ; and if he has used that part for the purposes for which the patentee adapted his invention, and for which he has taken out his patent, and the jury are of opinion that the diiference is merely colourable, it is an infringement," and in Sellers v. Dickenson (u), the same judge said: — '' There may be an infringement by using so much of a combination as is material .... if a portion of a patent for a new arrangement of machinery is in itself new and useful, and another person, for the purpose of producing the same effect, uses that portion of the arrangement, and substitutes for the other matters com- bined with it another mechanical equivalent, that would be an infringement of the patent." ''Where a patent is for a combination of two, three, or more old inventions, a user of any of them would not be an infringement of the patent ; but where there is an invention consisting of several parts, the imitation or pirating of any part of the invention is an infringement of the patent " (v). Speaking of this case in Cla/'Ic v. Aclie{tv), James, L. J., said : " Upon the authorit}- of Smith v. L. cV K W. {s) 9 Carr. & P. 330. 2 E. & B. 70 ; The Patent Bottle {t) 5 Ex. 334. Envelope Co. v. Seymer, b C. 13., («) 5 Ex. 324. N. S. 172. (r) Per Campbell, C. J., in («•) L. E., 10 Cli. App. Cas. 074. Smith V. L. S,- X. W. liail. Co., 150 THE LAW OF rATEXTS. llailivay Co.^ it has been strongly contended before us that whenever there is a patent for a combination, tliat patent gives protection, not indeed to every distinct thing that enters into the combination, but to every combination, arrannfement and a":<2:re«2:ate of two or more of those dis- tinct tilings, even althou;^li such subordinate combination is not expressly or im})lii'dly claimed in the specilication. This, in our opinion, is so startling a violation of every princi})le of jiatent law, that we doubt whether we could follow any authority, short of the House of Lords, in ai)})lying such a doctrine. If a j)atent for a combination of several parts is in reality a i)atent, and gives really a monopoly for every combination of any two or more of those parts, then it follows, from the very first prin- ciple of patent law, that if any conceivable combinati(jn of any two or more parts was old, the patent would be bad. On the other hand, if the patentees say, ' No, wo do not cluiin to })r()tect every combination of those parts, but only those subordinate combinations, or parts of the combination, which are new and useful,' then such a claim would be entirely inconsistent with the leading case of Fozivcllv. IJostock [x\ which, we may be permitted to say, is as good sen.so as it is .sound aiul intoUigiblo law I will sta<(> what we conceive to be the real ])rincipl(' which uuflcrlics the case of Lister v. L(, and C is or is not using part of tliat invention, nor can yuu decide in the abstract the other question, whicli was somewhat discussed in the case of tlie sewing nuicliine [Foxwetl v. linstock) (<*), wlietlier or no tlie sj)ecilication shows that A or 15 is sufficiently claimed as a i)art of the invention ov not. I do not think that either of those (piestions can be decided In the abstract. I would wish, like the Exchecpier Chamber in Lister V. Leather, before deciding it, to have before nie the nature of the machine, in ordiT that I may see what A, B, and C arc, and what is their relatlcjii to each other." In Parkes V. Stevens (/), James, V.-C, said, ''The autho- rity of that case (Lister v. Leather) has been })ressed upon mc as if it really established this, which would be a most startling proposition, llial a ]»ateiit for a combination or arrangement would be a distinct patent for everything that was new and material ami that went to make up the combination .... the judgment if read well will be found to give no warrant whatever for such, I must call it, baseless notion. The law Is suinmed up thus, '^I'lic ca.ses establish that a valid })ateiit for an entire combination for a process gives ])rotection to each jiart thereof that is new and material /'//• that process^ which is really nothing more tiiaii Htating in other words that you not only have no right to steal the whole, but you liavi' no right to steal any part of a man's invention ; and the (piesti/,/ v l/iic/i- {h, C C'h. Ap. Cos. 30. THE CAUSE OF ACTION — INFRINGEMENT. 153 If a man in the course of producing an improved com- bination substantially uses a combination which already forms the subject of a patent he thereby infringes the patent, notwithstanding that the combination he is making has a different end in view tlian tliat which has been patented (i). But, on the other hand, where a patent is for a com- bination a person wdio takes a new and material part of the combination, but not for a similar or analogous purpose to that to which it Avas applied in the patent, does not infringe the patent (k). If the invention be for a combination or process whereby an already well-known object is produced, it will be no infringement to make another combination, even of the same materials (provided they be also old and well-known), for the pm^pose of attaining the same object, for the patent is for the means of attaining the object, and if other means are employed there is no infringement. The patent is also for the method of com- bining the old and well-known materials, and if another method is adopted there is no infringement (/). When the defendant has set himself to work to evade the plaintiff's patent by fraudulently making a colourable imitation, or substituting a mechanical or chemical equi- valent, the cases show that the Courts will look strictly at what he has done, and will take care that he does not over- step the line which he is endeavouring to keep within. The question of fraudulent evasion is, as we have shown, one of fact. '' A slight departure from the specification, for the purpose of evasion only, would, of course, be a fraud upon the patent ; and therefore the question will be, whether the mode of working by the [i) Per Lord Westbiiry in Can- (k) Lister v. Eastwood, 9 L. T. nington v. Nuttall, L. E., 5 11. L. E., N. S. 76G. at p. 230. (0 Curtis v. Piatt, in the House of Lords, 35 L. J., Cli. 852. 154 THE L.\W OF PATENTS. defendant has, or has not, been essentially or substan- tially dilYerent (;;/). In Dudycon v. Thompson (w) Lord Caii-ns makes strong objection to the use of the term colourable imitation, in connection ■with the infringement of j)atents, and pro- ceeds: — '^ If there is a jiatented invention, and if you, the defendant, are found to have taken that invention, it will n(jt save you from the punishment or from the restraint of the Court, that you have, at the same time that you have taken the invention, dressed it up colour- ably, added something to it; taken, it may be, something away from it, so that the whole of it may be said, as is said in tliis injunction. Here is a madilnc, wliicli is either the plaintift's machine, or difl'ers from it only colourably. liut underlying all that there nnist be a taking of the invention of the plaintilt. Tliere used to be a theory in tliis country, that persons might infringe u])on the ecpiity of a statute, if it could not be .•-Im.wii lh:it tliey had infringed the words of the statute; it was said tlmt they had infringed the equity of the statute, and I know there is by S(jme confusion of ideas, a notion sometimes enter- tained tliat there may be something like an infringement of tlie erpiity (jf a patent. I^fy lords, I cannot think tliat tluTo is any sound principle of that kind In niir law; that which is j)rotected is that which is specllud, and that whicli is held to be; an infringement must be an Infringe- ment of that which is specilied. JUit I agree I( will not be the less an Infringement because it luis been coloured or disguised by additions or subtractions, which additions or subtractions may exist, and yet the thing ])rotected by the specification be taken notwithstanding.' iSunnnlng up tlie cases, therefore, we come to this. Strictly speaking, theri5 is no smli iliing as a cnlduiiiblc imitation: either the defendant has InlVIngcd iIk- thing (wi) Pc-r DqIIjih, J., in Ililly. («) L. K., y App.Cus. at p. IJ. ThomjHon, I "\Vf,b. r. C. 2 12. THE CAUSE OF ACTION — INFRINGEMENT. 155 specified or lie has not. At the same tnne there is an essence or substance to every invention underlying the mere accident of form or words. If the defendant has imitated and adopted the essence of the invention he will not be allowed to escape because he has not adopted the form or words in which the essence of the invention is clothed (n). There is a description of imitation which is produced by the substitution of chemical or mechanical equiva- lents. To the unscientific eye there is a total dis- similarity between the infringing machine or process and the original ; but, none the less, it is a mere imita- tion — it is a robbery of the ideas and intentions of the first inventor, but a robbery conducted in a scientific manner. We have seen that a patent cannot be granted for the discovery of a mere principle (o), but that, if the prin- ciple when discovered is at the same time applied, a valid grant may be made for the application of the prin- ciple. The essence of the patent is the fact of applying the newly-discovered principle to a particular end. Now a mechanical or chemical equivalent is another method of producing tlie same result, a method which a skilled mechanic or chemist, having once seen the original in- vention, could at once suggest and apply without the necessity of any inventive power whatever. Equivalents («) T/ioni V. The Worthing Web. P. C. 586 ; Ncllson v. Ilav- Skating Rinlc Co., L. E., 6 Cli. D. ford, 1 Web. P. C. 310; Walton 417; FloiverY.Llot/d,'W.'N. 1S77, \. Batemari, per Cresswcll, J., 1 p. 132 ; Barrett v. Vernon, 45 L. Web. P. C. 616; Miintz v. Foster, T. E. (N. S.) 755; Bailey v. Roher- per Tindal, C. J., 2 Web. P. C. 101; ton, L. E., 3 Ajip. Cas. 1055. Aud Russell v. Lcdsam, 14 M. & W. 580 ; tlie older cases, Bovill v. Moore, Gamble v. Kurtz, 3 C B. 425 ; Dav. P. C. 405; Forsyth \. Riviere, Stead \. Anderson, 2 Web. P. C. 1 Web. P. 0. 97; R. v. Lister, 156; Unwin v. Heath, 25 L. J., Web. P. L. 80 ; Minter v. Wells, C. P. 9 ; Curtis v. Piatt, 35 L. J., 1 Web. P. 0. 130; Morgan v. Ch. 852; Murray v. Clayton, L. Seaivard, per Alderson, B., 1 Web. E., 7 Ch. App. Ca. 585. P. C. 171 ; Walton r. Potter, 1 (o) Ante, p. 22. LOG THE LAW OF PATENTS. may Ijo .sub.stltutctl for parts as well as fur tlio whole In- veiitiuii, so that it may happen that a patent is taken out which consists of three parts. An eipiivalent may be substituted for each Jiart, so that in ehect (lie whole in- vention nuiy be changed and }et there may be a most fla<^rant infrinf;"ement. Take, for instance, the case of aS/ci'cus y. Kcatiiij []>). Here the patent was for the manufacture of cement. The cement was nuidc from gypsum (sul])hate of lime) by admixing it with i)earlash (carbonate of potash) and sul])hurlc acid. Chemically, the effect was this: Sul- phate of potash was produced ; this, comljined with the sulphate of lime, })roduced a double salt, which, when submitted to a liiuli temperatm'C and subsequently ground to a fine powder, constituted the cement. Tlie princlj)le of this discovery was that sulphate of lime combined witli salts of potash or s(jda, and when so combined, i)roduced a substance mIiIcIi set very hard. The defendant substi- tuted for the pearlash and sulphuric acid a chemical ecpii- valent, borate of soda (borax), and heated that with gypsum, producing in tlu» same; manner a double salt, and with tlie siune resulting jiroperty of setting. Thi-s was properly held to Ix- an inl'ringemenl. In JiU-ssilt V. Cowli'f/ (f/) the invention claimed was that of Ijringing to a welding heat a long piece of iron of tho pr«jper (pudity ; after having turned u}) its edges and drawing it through a hole of the jjropcr size of the in- tended tube, so as to compress togctlicr the edges and givo it a complete circular lunn. 'i'lic defendants turned up the skclp, and, after healing it in tlie I'urnace, passed it through two r«dlers with gro(jves: — Held, that tlu; two rollers with grooves were a mere mechanical erpiivalent for tlie liolc through which the iron was passed under tho patent (r). (p) 2 Wob. r. C. 181. Wob. r. ('. 1 IC; Jha//, v. fnuin, (7) 1 ^\\^}. v. r. icn. i-or rark.-, u., -j w Invention to the purpose for which it was intended he has used it in this country. In the case of Siehon v. l>c/(s{f/), in the House of Lords, the facts were as follows: Betts, the i)lalntlff in the suit, was tho patentee of an invention for the manufacture of capsules for the purpose of covering bottles of liquid (wine, beer, or otherwise), and ])rotecting them from the action of tho atmosphere. Jietts' patent did not extend to Scotland. Nielson and his co-ai)pellants, defendants in tho suit, were persons who bottled l)eer In Glasgow for tho Indian market. They l)ottled the beer and covered it A^th ca})sules, which were made In Germany in pursuanco of J5etts' specllicatlon. Hie beer was shipped by tho a})pellants In vessels which called at Liverpool to com- plete their cargoes ; on some occasions the beer was trans- sliipped in England, but no cases of beer were ojiened, nor was any of the beer sold In this country. Held, by the House of Lords, that, Inasmiu-h as tlu^ object of Betts' invention was to make a capsule ih:it wuM |treservc tho beer, whilst the beer was in lOngland It was being pre- served by tlu; use «»f Hetts' invention, and cons(>(pu'n(ly that there was an infringement of ihe ])atent. Lord C'ln'hnsford, in giving judgnu'iit in llie ( 'ourt below, Haid : ^* It is the enj])loyment of tlu^ m.icliine or arliclo for the purpose for whi< li it was designed whi
  • . i:j. N. S. n.vj. (a) Xeicall v. Elliott, 10 Jur.. (A) 17 Ch. D. 7'Jl. THE CAUSE OF ACTION — INFRINGEMENT. 163 mentioned above, the Court of Appeal reversed the deci- sion of Vice-Chancellor Bacon, on the grounds that the defendants had not infringed the plaintiff's patent, they having merely acted as Custom House agents for the transhipment of the dynamite, and their functions being confined to obtaining papers necessary for such tranship- ment, and that they never had any ownership in or exercised any control over the dynamite. This decision shows that the Courts will not recognize that a person infringes a patent by aiding and abetting, so to S23eak, another to do so. There must be some actual infringement on the part of the defendant (c). SELLING. A person infringes letters patent who sells the patented article within this realm. It is a putting in practice of the invention within the terms of the grant. The purchase of the patented article is not of itself an infringement of the patent, nor is the mere possession, since these do not come within the prohibition in the grant, which is against making use of, or putting in prac- tice, the said Invention [d). This is always w^ith exceptions such as in the case of dynamite, Avhere the mere possession involves ex neces- sitate the use ; and the importation of the patented article will not of itself amount to an infringement. The possession of the patented article, combined with exposure for sale, if no sale is in fact effected, is no infringement (e). But the making of the patented article, as we have seen, is an infringement, whether a sale was effected, or attempted or not (/). (c) See also Townscnd v. Ha- (e) IJnd. worth, L. E., 12 Ch. D. 831 ; Sykcs (/) Mnnh y. Foster, 2 Web. V. Hoivarth, 12 Ch. D. 820. V. C. 101 ; Oxley v. Ilohlcv, 8 C. {(l) See Minter v. WilUmns, 1 B. (N. S.) 660. Web. P. C. 135. m2 iGi THK LAW 01' rATENT.S. Wlicrc the ])atcnt is for a process the nianufaeture of an artifle 1)V the j)rocess abroad and sah^ in this country is an infringement. In Ehnslic v. Jhrnrsirr {(/) Sir W. ^T. James, V.-C, said : ** It is said that tinfoil can l)e made li\' the ])laintilY's process at less cost tlian liy tlie old method; and it is conceded that nobody in Kngland can use the j)laintift"'s ])rocess of makinji" cast tinfoil as dis- tin;raished from rolled tinfoil Avithout a license from the plaintitV. If tliat cann**! l)e done in I-ln^land it would ho a very strange thin;:- ii" a j)erson in Mngland could send an order to some one in France, get the same thing manu- factured there in exactly tlie same way, and bring it here so as to compete with the j)erson to whom the Crown has granted ' the whole profit, benelit, commodity, and advantage' arising from llic patent. It would bo a short mode of destroying 'every ])rolit, itenelit, com- modity, and advantage' which a jtatentee could have from such a thing, if all that the niaii had to do was to get the thing nuide abroad, inijiort it into this country, and then sell it lure in competition with tlic English patentee." In Wultrni V. Laraln- [h) Va\v, ('. .)., >aid : " lUit it appears to me that the nuiin purpose* of the ))atent is to give the j)rorit to ilic ]»;itentee, and tliat tlic main nu)do of defeating that purpose would be by selling the patented article ; and it seems to me that without ])ro()f of the nuiking of the article l)y the infringer, evidence tliat lie sold th(» patented artich? for ])ro(it would be good (;videncc; upon whii-li a jiir\- might liiid that he liad infringed the patent. W'itli respect to tlie ilefendant not being lial)le, because tlu; articles wen; im])orted from abroacutory injunction. Where tln' j)atentee has worked and enjoyed tho patent for numy years without ili.spute, an interlocutory (o) 6 Vc«. 08». (/>) 2 Jur., N. iS. lull. THE REMEDY — INJUNCTION. 169 injunction will be granted. In Dudgeon v. Thompson [q) Jessel, M. E., said: " Tlie Court can grant an injunction before the hearing where the patent is an old one and the patentee has been in long and undisturbed enjoyment of it, or where its validity has been established else- where, and the Court sees no reason to doubt the pro- priety of the result, or where the conduct of the defen- dant is such as to enable the Court to say that, as against the defendant himself, there is no reason to doubt the validity of the patent." So in Betts v. Menzies (r), Wood, V.-C, said, '' The law of this Court is, that where the patentee has had long enjoyment, then he shall have an injunction to protect his rights until trial, even although his rights under his patent be doubtful." On the other hand, we find Lord Westbury laying it down in Hills v. Evans [s)j " It is the habit and the rule of the Court not to grant that injunc- tion (to restrain infringement), at all events at the hear- ing, and not to make it perpetual unless the legal validity of the patent has been conclusively established." Sometimes an application for an interim injunction is advisable where there has not been long user of the patent, or a decision in favour of the patentee. In such cases the plaintiff must be prepared to give prima facie satisfactory evidence of the validity of his patent (if). These decisions certainly appear contradictory, but perhaps this principle may be gleaned from them — that the Court will consider the balance of convenience in each particular case. If it should appear that irremedi- able injury wdll be sustained by the defendant if an {jq) Russell V. Cowley, 2 Coop. P. C. 95. C. C. 59 (n.) ; Lut see Crosskill v. (s) 4 De G., F. & J. at p. 289. Evonj, 10 L. T. E. 459. [t) Gardner Y.BroacUiurst,2 Jnv., (?•) 3 Jur., N. S. at p. 358. See N. S. 1041 ; Davoiport v. Jepson, also Davenport v. Goldbercj, 2 H. IN. E. 73 ; lienard v. Levinstein, & M. 282 ; Penn v. Bibhj, 3 L. J., 10 L. T., N. S. 177. Eq. 308 ; Muntz v. Foster, 2 Web. 170 THE LAW OF PATENTS. injunction goes wliicli may altcrwards appear unfounded, tho Court will require u very .stron«^ case to be made out by the plaintiff before granting: such an injunction (w), and the convei*se would e(pially a])pcar. In BicJcfonl \. S/ccnrs (r), JShadwell, V.-C, said, '^ I have nothing to do with any other case than the case before me." The Court will not infrequently grant or refuse tho injunction until the liearing upon terms ; the terms on till' plainlllt l)(.'ln^^ tliat he sliall l)e answerable in damages, or on the defendant tliat he shall kee]) an account of the material manufactured, or of the articles sold. In pur- suance of the patent process. And in considering which course should be adopted the Court will be iniiuenced chiefly by the balance of convenience and the probability of injury to either side (//;), In Plimpton v. Sjtilkr, James, L. J., said, '' The Court, not forming an o})inI. 28U. THE REMEDY INJUNCTION. 171 the whole, that the Master of the Rolls has made the right order, viz., by granting the injunction and putting the j^laintiff upon an undertaking to abide by such order (if any) as to damages as the Court may think fit to make if he should ultimately turn out to be in the wrong, and that it would not be right in this case merely to put the defendant upon the terms of keeping an account which, I conceive, might be a very clumsy and inefficient mode of recompensing the plaintiff if he should turn out ulti- mately to be in the riglit." In the same case the present Master of the Rolls, Sir W. B. Brett, said, "There Avill be a hardship on the one side or on the other, and the question is on which side does the balance appear to lie ? Now, if the trade of a defendant be an old and an established trade, I should say that the hardship u^^on him would be too great if any injunction were granted. But where, as here, the trade of the defendant is a new trade, and he is the seller of goods to a vast number of people, it seems to me to be less inconvenient and less likely to produce irreparable damage to stop him from selling, than it would be to allow him to sell and merely keep an account, thus forcing the plaintiff to commence a multi- tude of actions against the purchasers." Injunctions are now granted j)ursuant to the Judica- ture Act, 1873, sect. 25, sub-sect. 8 : — ''A mandamus or an injunction may be granted, or a receiver appointed, by an interlocutory order of the Court in all cases in which it shall appear to the Court to be just or convenient that such order should be made ; and any such order may be made, either unconditionally or upon such terms and con- ditions as the Court shall think just; and if an injunction is asked either before, or at, or after the hearing of any cause or matter, to prevent any threatened or apprehended waste or trespass, such injunction may be granted, if the Com-t shall think fit, whether the person against whom such injunction is sought is or is not in possession under 172 THE LAW or patents. any claim of title or otherwise, or (if out of possession) does or does n<>t claim a right to do the act sought to be restrained under any colour of title ; and whether the estates claimed 1i\' Ixttli, or cither of the parties, are legal or equitable.'' It will be ol)scrved that this section confers upon the Court very wide limits within which, in its discretion, it may grant injunctions. It sweeps away a great deal of the technical rules which had been from time to time laid d(jwn by the Court of Chancery for the granting of in- junctions, and it practically substitutes for them the opinion of the judge trying each particular action as to the balance of convenience upon a consideration of the facts of the case. The ba.sis of an injunction is the threat actual or im})lied on the part of the defendant, that he is about to do an act which is in violation of the jilaintilV's rights ; so that not onlv must it Ix^ clear that the plaintitV lias rights, but ;tl>o that the defendant has done something which induces tla; Court to Ix-lieve tliat he is about to infringe th(»se rights. The fact that he has been guilty of an infringement of the j)atent rights will, under cinunistances, be evi(h»nce that he intends to continue his inlViiigenient. liut wliether lie has actually infringed the patent or imt. it will be suHicient if he has threatened to infringe it. Actual infringement is merely evidenct; upon which the Court implies an intention to continue in the same course. in IWarson v. Loc(£), Jhhsv], M. \l., said:—'' I am not aware of anv suit «»r action in the ( 'oint (»f Chancery which has Ijeeii successful on the part of a patentee, without infringement liaving bi-en j)r(»ved ; but, in my opinion, on jainciple there is no rea.son wliy a jtatentee should not Hucceed in obtaining an injunction without pnjving actual infringement. I think for this reason : {xj L. II., 9 Ch. I>. at 1.. (■,.-,. THE REMEDY INJUNCTION. 173 where the defendant alleges an intention to infringe, and claims the right to infringe, the mischief done by the threatened infringement of the patentee is very great, and I see no reason why a patentee should not he entitled to the same protection as every other person is entitled to cl-aim from the Court from threatened injury, where that threatened injmy will he very serious. No part of the jurisdiction of the old Court of Chancery was considered more valuable than that exercise of jurisdiction which prevented material injury being inflicted, and no sub- ject was more frequently the cause of bills for injunction than the class of cases which were brought to restrain threatened injury, as distinguished from injury Avliich was already accomplished. It seems to me, when you consider the nature of a patent right, that where there is a deliberate intention expressed, and about to be carried into execution, to infringe certain letters patent under the claim of a right to use the invention patented, the plaintiff is entitled to come to this Court to restrain that threatened injury. Of course it must be plain that what is threatened to be done is an infringement." The actual infringement of the patent is taken by the Court to imply an intention to continue the infringement, notwithstanding any promises not to do so, and an in- junction will be granted. Vice-Chancellor Shadwcll, in Losh V. Hague [fj), said: — "If a threat had been used, and the defendant revokes the threat, that I can under- stand as making the plaintift* satisfied ; but if once the thing complained of has been done, I apprehend this Court interferes, notwithstanding any promise the de- fendant may make not to do the same thing again." If the fact of actual infringement is relied upon, and not a mere threat, it will be necessary to show very clearly that what has been done amounts to an infringe- ment. In Hancock v. 3Ioulton (^•), it was held that the {y) 1 AYeb. V. C. 200. {z) M. Dig. 506. 174 THi: LAW OF PATKNTS. evidence must bo so perfect, that if it were a motion to commit for the breach reven(ed. Now, a nuister who comes on board ought not to be answerable on the ground that, when la; takes the command. ther(» is on board a pump which infringes the j)atenl. ib docs (a) The Electric Teleijmph Co. (c) lirltn v. M'iUmolt, \,. ]{., V. Nott, 2 Carv, ijc directed as to the articles manufactured which are in the defendant's possession, and that they be de- stroyed. Belts V. Dc Vilrc, V.-C. W., 18G5, A. 119. The defendant will also be ordered to make discovery iijxin oath of the articles or nuichinery which he may have in his possession, and which infringe the ])laint ill's patent, so that they may be delivered up and destroyed; this was df)nc in 7'). In aid of tlie inrpilry as to danuiges, directed by the (n) 31 L. J., fh. at p. 290. ( p) Iload nolo to Pcnn v. JJMy, (o) Penn V. Jacf:, L. Jl., 5 i^i. L. K., 3 Kq. 308. at p. Hft. THE REMEDY ACCOUNT OF SALES AND PROFITS. 179 judg-moiit for a jx^rpctual iiijuuction, the defendant must give full discovery, and will bo required to set out the names and addresses of the persons to whom machines, made in infringement of the patent, have been sold; but not the names of the agents concerned in tlie trans- action (y). ACCOUNT OF SALES AND PROFITS. In cases where it is deemed to the advantage of the plaintiff, he may elect, in lieu of damages, to take an account of sales and profits ; tliat is, to condone the in- fringement upon the footing that tlie defendant has been acting as the plaintiff's agent in selling or using the invention. The plaintiff will not, however, be allowed to claim an account if he has tacitly permitted the defendant to infringe his patent, relying upon an ultimate account of profits. In Crossleu v. The Derhfj Gas Light Co. (r). Lord Brougham said : " It is a principle of equity, that a party who claims a right should not lie by, and by his silence or acquiescence induce another to go on sj^ending his money and incurring risk, and afterwards, if profit has been made, come and claim a share in that profit without having ever been exj^osed to share in the losses which might have been sustained. Upon this the defendants rely; but it was to be considered, on the other hand, whether the plaintiff did not explain the delay which has taken place, and whether tlie conduct of the defendants has not been such as to lull the plaintiff's suspicions to slee^)." Prior to the Judicature Acts it was licld a rule in Courts of Equity, that in consequence of the terms of {q) Murray v. Clayton, 1.5 Eq. (;•) 1 Web. P. C. 120. 115. n2 180 Tin: LAW of patents. *Jl & 22 Vict. c. 27, 110 relief could he awarded for dam- ages or an account, unless an injunction could be granted at the same time. All other relief Ix-iiiLi' merely inci- dental to the injunctit)n(/-). Thus, wlieic a patent had expired after hill tiled, l)ut l)efore an injunction could he granted, the Court declined to consider tlie question of damages («). But now, in })ursuance of sect. 24, sub- sect. G, of the Judicature Act, 1873, a Court of Equity may give full relief ; and so, wherever a court of law would, ])rior to the j)assing nf tlie Act, hav(» granted damages or an account, similar orders will be made by either l)raiich of the High Court of Justice, irres})ective of the question of injunction. Where it appears at the trial that the defendant has made no profit, although the plaintitf may be entitled to daiiia;;('S, lie will not ))e entitled to an account (/). Where the defendant has acted in ignorance of the patent, and before action has offered to submit to an account and to pay to plaintiff the amount of profits, tlie Court sliould exercise its discretion in disallowing costs (w), although it may grant the injunction. In such a ca.se the plaintilV \s ill j)rocee(l to an account at his peril, running the risk of nothing bciii;^- I'ouiid due. 'i'he ])ractice ) Particulars delivered may be from ti^e to time anicndcil li\- Icunc ol" the ( 'oiirt or a judn'c '' (7) The defendant shall be entitled to brinp^ in and f^ive evidence in suj)port of th(^ ])at('nt, and if the plain- tift' gives (evidence impeachin*; the validity of the patent tlie defendant shall be entitled to re})ly. " (8) Wiicrc a patent lias liceu n^voked on the ^^roimd of fraud the (•<»iiij)trnllcr nmy. on the a])plication of the true inventor, matlc in accordance with the provisions of this Act, «^rant to him a j)atent in lieu of and bearing the sanio date as the date of revocation ot the i)atent so re- voked, but tlie patent Ko granted .sIimII cease on the expi- ration of the term fnr which the re\ttke(l jiatenl was granted." Practically speaking, scire facias had tallen into desue- tude before tlie pa.ssing ot this Act; other methods of disputing the validity of jiatents were t'ouiid, nv thnught to be, more to the advantage of j)ersons opj)osing them. It is presunuMJ, however, that the new j)roce(Iure will lind mf»ro favour, being simpler, m«)re speedy, and mon? similar to the onlinarx' a<-tion for infringement tliaii the old action of scire facias. The grounds upon which a patent may be revoked ai c himilar to ti»o.-.e upon wlmli it might ha\c heeii caiicellc'd 1)V Kcire facin.n (r). ThoHo arc in the I'ointh Institute ' I Inst. 88. EEVOCATION. 183 said to be : " Firsthj^ when the king by his letters patent doth grant by several letters f)atent one and the self- same thing to several persons, the former patentee shall have a scire facias to rej^eal the second patent ; secondly^ when the king granteth anything that is grantable upon a false suggestion, the king by his prerogative jure regio may have a scire facias to repeal his own grant. When the king doth grant anything which by law he cannot grant, he jure regie (for the advancement of justice and right) may have a scire facias to rejieal his ot^ii letters patents." And it was held in /SVr Oliver Butler'' s case (^), that " where a.patent is granted to the prejudice of the sub- ject, the king, of right, is to permit him on his petition to use his name for the repeal of it in a scire facias at the king's suit, and to hinder multiplicity of actions upon the case." Thus it will be seen that formerly any person might, on behalf of the public, proceed by scire facias to repeal a patent, although security for costs was required. Sub- sect. 4 of sect. 26 has very considerably narrowed and limited this general right. Practically speaking, any ground which may be set up as a defence to an action for infringement may be em- ployed as a ground for revocation — such as that the per- son to whom the letters patent were granted was not the first and true inventor, or that the invention was not new or useful, or that it was not true that the invention had not been practised before, or that the said invention did not come within the meaning of the words " a new manu- facture," or that the specification was insufficient and did not disclose the nature of the invention. The petition is to be presented to the High Com*t of Justice in England or in Ireland. By sect. 109 it is pro- vided: (1) " Proceedings in Scotland for revocation of a patent shall be in the form of an action of reduction at the instance of the Lord Advocate, or at the instance of a (y) Vent. 344. 184 Tin: LAW or patknts. party ImN^nfr interest Avith his eoiicuinnce, wliich con- ciuTcnce may be <^iveii on just cause shown only/' And in respect to Ireland we find that, by sect. 110, ''All parties shall, nf)twithstandinf!: anything in tliis Act, have in Ireland their remedies under or in respect of a patent as if the samc^ had been «rranted to extend to In^land only." The general result of these sections seems to ])v that the proceeding for revocation may lie taken in :iny part of the United Kingdom, and that tlie (juestion may bo dealt'with by the Courts of either portion independently ; so that it will be possible for letters j)atent to have been cancelled so far as England is conccnicd, and yet to con- tinue in force for Scotland and Ireland, and vice versa. It will be observed that in sect. 'JH, sub-sect. 4 (d), *' Anv j)erson a/lc[/int/ that he, Sir may petition," and by sub-sect, ('i), any ground which might be available for scire facias may form the ground for n^vocation. It is not cjuite clear whether this section recpiires tlie peti- tioner A> jtrorr that he was the real inventor, or that the patent was obtained in fraud of his rights, })n)vided ho shows some ground upon which the ))atent should be re- peahd. It will be observed tliat there is no provision that the petition should be suj)ported by an allidavit verifving tin? .same. It may be that a petitioner might bring himself within tliis section by alleging in the peti- tion that h(! was tlie inventor or had used the patent prior to thcMlate of the patent, and iiiiLiht then aliandon this brancli oi his case and proce<'d to j)rove any one of the other ^-rounds which su)»-sect. .'{ enaliles him to rely upon, \\ •• have dealt with tlie several grounds ot' revocation in pn!vious chapters, under the title <.!' infringement, and it will be unnecessary to do more here than to reler the reader to tiu'm. In a subsecpient chapter will bo fjiund the practice to !><• observed in the course of [>ro- cccdings for revocation. ( 185 ) CHAPTER XV. INTERNATIONAL AND COLONIAL ARRANGEMENTS. Sects. 103 and 104 of the Patents Act, 1883, gives power to the Crown to enter into arrangements with foreign and colonial governments with respect to the mutual protection of patent rights. And, in respect to any foreign State which has entered into such arrangements, any person who has applied for protection for any in- vention in any such State shall be entitled to a patent for his invention in priorit}" to other applicants, and such patent shall have the same date as the date of the pro- tection obtained in such foreign State, provided that the application for letters patent in this country is made within seven months from the date of the application for protection in such foreign State. Then follows a provision that a 23atent granted under such circumstances shall not entitle the patentee to bring actions in respect of infringements which may have happened prior to the date of the acceptance of his final specification. It will be dangerous for persons to adopt foreign dis- coveries or inventions before the expiration of the seven months from the date of the foreign apj^lication : for, in the event of a patent being applied for under this section, the whole of the capital invested in the adoption of such invention ma}' be found to have been lost. Regard particularly being had to the fact that by sub-sect. 2 any use of the invention in this country within the seven months by any number of persons will in no way in- validate the patent rights subsequently obtained ; and 186 THE LAW OF I'ATKNTS. that the persons wlio have used the invent ion will not have obtained anv vested riiilits to continue the use of tlie invention. The apj)lication for a patent under tliis section must \)0 made in tlie same manner as ordinary a}»plieations. The section only a})plies with respect to sueli forei<^n States with respect to which her Majesty shall from time to time, by Order in Council, declare them to be appli- cable, and so lonignei* nuiy maintain an actit)n, although the a.ssignment has not ])een registered (r). One of several joint owners may recover (/'), and one of several co-owners of a jiatent has a light to sue aloni; for the recovery ol profits due for the use of a patcnit ; and an objection by a defendant that othei- persons should have been joined as plaintifVs slmuM he made jiromptly un II. \ C. k M. Oi'H. 109. (A) WalOm V. Laratrr, 8 C. K, (e) Jlasnall \. Wriyht, L. If.. 10 N. S. ir,2; IJrctric Trlryraph Co. Va\. MO. V. Jlrelt, 10 C. IJ. 838. (/) Dmruport v. Iiirhardit,'.Mj. (c) Dunniclifv. A/allell,lC.ll., T. U., N. S. .lOn. N. a. 209. . (y) Hhrhan v. Grral Kastcrn Rail. Co., L. K., 10 Ch. D. 59. PAKTIES. 189 A mere agent to introduce, sell, and grant licences for the use of a foreign patent in this country is not entitled to take proceedings to restrain infringement (h). As defendants, all persons physically infringing, or threatening to infringe, the patent may be joined. An architect, specifying the use of a patent, should not be joined, but the contractor doing the work may (/). The directors of a company may be sued in their personal capacity for an infringement by the servants of the company (k). Where the principals are out of the juris- diction, the com-t will restrain the manager or work- men (I). {h) Ada7nsY. North British Rail. {k) Betts v. De Vitre, L. E., Co., 29 L. T. E., N. S. 367. 3 Ch. 441. {i) Denley v. Blore, 38 Lond. {I) See Betts v. Neilson, 6 N. E. Jour. 224. 221. 1 00 PRACTICK CIlAPTKli III. inti:k'L()cijtoky inminttion. An interlocutoi'y injunction may Ix' liiaiitod ex parte, after the issue of tlic writ, and before service An ox parte injunction Avill onlx- he granted wlicn it can be showni that •iToat injury Avill accrue to tlie ])huntiff by dehiy, and wlien he can clearly estal)lish his title and the fact of infrin'!:enient(Ii(im1iI he made; and an\' such order ma\' be made eitliei' uncondit iouall v or upon such terms and conditions as the < 'ourt shall think just ; and if an injunction is asked either before, or at, or aft<'r the hearing of anv cause or matter to pre- vent any thie;itene(l (»r aj)prehended waste t>v ti-csj)a.ss, Kucli injunction mav be granted it the Court shall tliiidv fit, whether the person against whom such injunction is Kought is or is not in jxissession un new when the patent was granted (/). An injunction granted prior to statement of claim will be dissolved if the statement oi claim when delivered d(jes not agree with the affidavits upon which the injunction was granted (;;/). Formsof injunction upon undertaking as todamages(w), and of order refusing injunction u})on terms (o), will be found in the Appendix. {i) Jim V. Thompson, '.i MtT. (/) ///// v. Thompson, 3 Mor. 62 1 ; Slurtz v. De La /i'f'J, which has nuide no alteration in the practice to be observed in thes(» ca.ses, is that the defendants hhall not ])0 taken by surj)rise, and it is the duly of the judge to tak<^ care that by the particulars «)f breaches they shall have full and fair notice of the ease that they will have to meet." {ft) Nredham v. Ojlnj, 1 11. & '//> L. IJ., 1'.) Kq. nt p. 231. M. 218. TARTICULAES OF BREACHES. 195 It liad imcloiibtodly prior to the j)asslng of the Patent Law Amendment Act, 1852, been the practice of the Comis to compel plaintiffs to give particulars of breaches, and the cases which were then decided as to the sufficiency of ^particulars are applicable now ; for then, as now, the object was that the defendant should be warned with reasonaljle certainty of the case that was to be made against him. Particulars stated that '■'■ A j^articular imj^rovement had been used by A. B. (giving names and addresses) and divers other ]ieoplc loitliin this Jcingdom and elseivhereP The judges struck out the words '' and divers other jpeopW'' [c). The words "carriage builders generally throughout Great Britain " does not sufficiently comply -\\\\\\ the statute, nor do the words " used and applied by carriage builders generally; " and the words "in or near London, in or near Liverpool, &c., and in or near various other of the principal to^iis of Great Britain," are too general {d). Vice-Chancellor Sir W. Page-Wood said in Morgan v. Fuller (d): "An allegation of general user does not of course admit of being met precisely The real object is to secm-e to both parties a fair trial" (e). ' ' And the j^laintiffs state these particular instances by way of examj^le onh', and not so as to preclude them from proving any of the infringements mentioned in the former particulars of breaches." This clause was ordered to be struck out of the amended particulars (/). If the particulars delivered are too general the defen- dant should a])i)ly for further and better particulars. (c) Fisher V. Bewkh, 1 AVeb. T. Fox, 1 C. L. E. 440 ; Falmcr v. C. 551 (n.) Cooper, 9 Ex. 231. {d) Morgan v. Fuller, L. E., {f) The Patent Type Founding 2 Eq. 297. Co. v. Richards, 2 L. T. E., N. S. (e) See also Jones v. Bcrger, 359. 1 Web. P. 0. 544; Holland v. 02 1!)('> PHACTICi:. If at tlio trial cvitU'iici' i> tnulrii'd wliltli coiucs witliin tlic literal nu'anin'if of the j)artitulars it will be admitted, notwitlistandin^ that the ])arti('ulars are too jroneral, as the defendant should have objected to the particulars, and not wait until the trial to take his objection (y). The plaintiff having delivered particulars of breaches specifyinj^ certain sales by the defendant of rollers, and ill particidar to Shaw and Siiiitli, the defendant, in answer to interro«:;'atories, admitted sales to Hirst. Fry, J., in •iivin;,'- jud^-ment, said : " In this ease I think I must admit the evidence tendered in respect of Hirst's case. It is said that in respect of those eases which arc not mentioned 1»\' name in the jiarticulars of breaches, the ]»laintilf cannot j^ive eNidcncc It may be that tho jKirticulars were not suilicient, or tended to end)arrass. JJut the defendant did not a])ply for amended })articulars, accf)rdin;r to the case of 1 1 nil v. r>nUan(J. It aj)pears to me I have to ini|iiire what is the meanini;" nf the parti- culars. I lind llie case (»f Hirst is within the literal meanin;,'' of the j)articulars. If 1 had found that the case of Hirst was likely to create? surprise, or likely to intro- duce any jioint not raised by Sniilli\s or SIkiu'^s case, I should probabK' have ;:iven an ojipoit iniit \' \n \\\o defendant to biin;^- fresh evidence. I have asked whether there is any witness not here whom the defen- 1. 820. O. V,o2 ; I'dfnin- v. U'oi/stnf, 8 Kx. bW. I'AKTICULAKS OF IJKEACIIES. 197 defciidaiit.s knew that their processes have been used by other persons in London and Birmiiighani, besides those specified, they nuist know the persons b}' whom they have been used, and must give more specific information. I do not say that they need give the name and address of every such person, but they must give fair informa- tion. If they can give no further information, the words in question are useless, and too indefinite, and must be struck out." When the patent consists of two or more processes, or distinct and separable inventions, particulars of breaches should distinguish which of the processes it is alleged has been infringed, and should particularly indicate what parts of the defendant's machine or manufactured article is claimed to constitute an infringement ; but when the jjrocess was one entire invention, the Court declined to comjjel the plaintiff to point out the particular parts of the specification Avhich were alleged to be infringed. Jervis, C. J., said: "If the two processes described in the specification arc wholly distinct from each other, and the defendant's process may be an infringement of the one and not of the other, he ought to have better parti- culars ; but if the whole is substantially one j)rocess, he is not entitled to them . . . We must not make the par- ticulars more complicated than the specification (/)." Particulars of breaches, as we have seen, may also be ordered in actions Avliich are not strictly actions for the infringement of patents ; this is done under the ordinary jurisdiction of the Court (7)1). In an action charging that the defendant falsely and maliciously wrote and told persons who had bought certain machines of the plaintiffs that the machines were infringements of his, the defen- dant's patents, the defendant having pleaded not guilty, (/) Talbof V. La liochr, 1,3 C\ B. {in) Perry v. MilchcU, 1 AVeL. 310. See also The Electric Tele- V. C. 2G9. graph Co. v. Nott, 4 C. B. 4G2. 198 I'lUcncK. the Court ordered the defendant to deliver particulars, showing in -what parts the plaintiff's machines were an infrinpfcment of the defendant's patents, and pointing out by reference to the page and line of th(> defendant's s})ecilications, which part of the inventions therein described he alleged to have been infringed (>/). (w) ll'mi and others v. JJV/W, L. T., 1 Q. 13. 2 1. 5. ( l^J^'^ ) CHAPTER YI. STATEMENT OF DEFENCE. The statement of defence in patent actions is now, nnder the Rules of the Supreme Coui^t, 1883, a very brief and concise document, giving no particulars or details what- ever, and remitting the plaintiff to the particulars of objections, and the answers to the interrogatories for in- formation as to the case which is to be made against him. Under Ord. XIX. rule 5, the form given in Aj^pen- dix (D.) sect. YI. is rendered obligatory. That form merely gives headings of defence which is all that is to be allowed; for instance: — "(1) That the defendant did not infringe the jDatent ; (2) The invention was not new ; (3) The plaintiff was not the first and true inventor; (•i) The invention was not useful ; (5) The patent was not assigned to the plaintiff." And to these might be added : — That the title did. not disclose the nature of the invention («) ; that the title, the provisional specification, and the complete s2)ecification, or any two of them, did not substantially refer to the same invention (b) ; that the specification was not sufficient (c) ; that the claim in the specification was not sufficient to distinguish what was new from what was old (c/) ; that the patent was obtained in fraud of the defendant, as, for instance, when a person employed to carry out or assist in experi- ments, applies for letters patent himself, or where the patentee has obtained the invention from the confidence of the defendant. It will be observed that any one of these defences will («) Ante, pp. oo — 59. (c) Ante, p. 61. (b) Ante, pp. 00, 58. {d) Ante, pj). 83 — So. 200 ruACTici:. be sulliciuiit to (;oiistituto a complete defence to tlio action ; and tliat the "[reater portion of tliem arc of a nature to recjuire elaborate and costly evidence to prove or disprove them. Too niiu li care cannot, therefore, bo taken in preparinf:^' a statement of defence to avoid settinf^" up defences -which it is not expected will be satisfactorily proved at the trial, rej^ard beinji^ had to the jn'ovisicms of the Rules of 188.'i as to costs; otherwise, even if the defendant succeeds in the action, he may be nmlcted in heavv costs to the other side. ( 201 ) CHAPTER VII. PARTICULARS OF OBJECTIOXS. Sect. 21, sub-sect. (2) of the Act of 1883, provides:— ^' The defendant must deliver with his statement of defence, or by order of the Court, or a judge at any sub- sequent time, particuhirs of any objections on which he relies in su2:>port thereof; (o) If the defendant disputes the validity of the j^atent, the particulars, delivered by him, must state on what grounds he disputes it; and if one of those grounds is want of novelty, must state the time and place of the previous publication or user alleged by him ; (I) At the hearing, no evidence shall, except by leave of the Court, or a judge, be admitted in proof of any alleged infringement or objection, of Avhich par- ticulars are not so delivered; (5) Particulars delivered, may be from time to time amended, by leave of the Court, or a judge ; (6) On taxation of costs, regard shall be had to the particulars delivered by the plaintiff and by the defendant ; and they respectively shall not be allowed any costs in respect of any particulars delivered by them, unless the same is certified by the Court or a judge to have been proven, or to have been reasonable and proper, without regard to the general costs of the case." This last sub-section will make it imperative ujion the j)laintiff or defendant, who has succeeded in an action, to obtain a certificate from the judge who has tried the case that each one of the particulars delivered by him lias been proved or was reasonable and proj^er. It will 202 ruACTK i:. be obscTvi'd that the words of the .si'ctioii are '* .shall not be allowed any costs ;'' this leaves no discretion in the Court except as to certifying. Ord. XIX. rule G, of the Rules of the Supreme Court, 188'5, i)rovidcs : *' In all cases in which the party pleading relies on any misrepresentation, fraud, breach of trust, wilful default, or undue influence, and in all other cases in which particulars may be necessary beyond such as are exemplified in the forms aforesaid, particulars (with dates and items if necessary) shall be stated in the i)leading: })rovided that if the particulars bo of debt, expenses, or damarres, and exceed three folios, the fact nmst be so stated, ami a reference to full particulars already delivered or to ))e delivi'red with tlie ])leading." It is not easy to reconcile the practice under this rule with the language of the 29tli sect, of the Patent Act, or, indeed, with tin- inrmof defence given in the form to the rules rpioted above. Ord. XIX. rule G, provides that ))articnlars shall be incorporated with tlu^ ])leading ; on the other hand, the fcn-m and the Patent Act seem to indicate a separate document. Hitherto the ])ractico has been to deliver a separate docunuMil, and It is appreheiuled that when the 1)alanc(^ of convenience is cftnsidered the (Jourts will hold that in i-e>j)ect of u j)atent action the practice has remained unchanged. The ])articulurM of ol)jectinii miiy allege that the In- vcnti(m was not new at tlu^ date of the ]»alent. W(; luivo on a j)rcvious (occasion intimated that it is j)o.ssible that sections of the Act of I88;i may be construed as admitting objections on tin; ground ol" want of novelty, oil the ground of jninr u>ei-, oj- jiulijicat mn in any portion of the world. Smh a cliaiige would re\ olutioniso the law of patents. Prior user. — H'he objection on the ground of pi'ior uiicr muBt Btatc the time and place when buch ubor PARTICULARS OF OBJECTIONS. 203 GCCiuTecl ; but it will be observed that the persons by whom used is not meutioncci in sub-sect. (3). The Act, however, does not direct that such particulars shall not be required. The Patent Law Amendment Act, 1852, sect. 41, required that the place of j)rior user should be given, and was silent as to times or persons. Notwith- standing this, in Palmer v. Cooper (a), Baron Aldcrson went even further than to require the names of the persons who had used the invention, and the present addresses of such persons Averc ordered to be given, " As otherwise the plaintiff would not know where to go for his evidence." The object of particulars is, in the words of Tindal, C. J. (^), "Not, indeed, to limit the defence, but to limit the expense of the parties, and more particu- larly to prevent the patentee from being upset by some unexpected turn of the evidence. Under the fifth section (5 & 6 Will. 4, c. 83), therefore, it was intended that the defendant should give an honest statement of the objections on which he means to rely." In Palmer v. Cooper [a), Parke, B., said: " The defendant's particulars ought to give the plaintiff such information as will enable him to make the necessary inquiries at the place named." It will be evident, therefore, that there arc cases where to omit giving the names and addresses of the persons who are alleged to have anticipated the invention would be to supply the plaintiff with objections which Avould be practically useless. There are cases where the names and addi'csses have been refused. In Carpenter v. Smith{c), the objections stated that the invention had been used by " the defendant and divers persons." It Avas refused to order the defendant (a) 9 Ex. 231. See also Bid no is (/;) Fisher x. Dcwich, 1 AVeb. 1'. V. Mackenzie, 4 Bing. N. C. 432 ; C. 2G7. Galloway v. Blcadcn, 1 Web. V. (c) 1 WcL. R C. 2G8 (n.) C. 268 (n.) *204 I'KACTICK. eitlier to givu the luiiues ami adilivsses of the " ill vers l)crsons," or to have tliosc words striiek out. It may be argued that tlie reason of such refusal was that a diselosurc was recjuired of the witnesses and case of the defendant. It is ol)vious tliat, altliouj^h it is a recognized principle that one litigant sliall not be i)er- niitted to inquire as to what witnesses the other is about to call at the trial, still that by far the more important ]»rliicil)lc is that neither party should be taken by sur- j)rise, and that the ])hiintitf should havt^ a fair oj^portunity of critically examining every alleged anticij)ati()n which may be attempted to be established against him. It docs not of necessity follow that persons who have anticipated the invention should be the only and neces- sary witnesses of such anticipation. ( hi tlu^ whole, therefore, it is submitted that nam(\>^ and aildresses of such j)crsons should be given in ])articulars of objections. General words are inadmissible in ])articulars; for in- stance, expressions such as '' and divers other pco})le" (^/), and ''Inter alia at Sheniel(l,Iiirming]iam,and London" (c). But in ]iiiith\i/ V. Ki'ljlih'ii (/'), Mr. Justice Maule, under Hpecial circumstances, allowed the words "and others" to lie suHicieiit. AVhen the allegation <»f the defendant is that the patent is void ])V reason of a portion of the described invention being ohl, the particulars .shoidd clcarlv distinL'"uish which ])art is alleged to be old, as well a> the times and places of prior user (y). Evidence will be admitted at the trial, provided the language of the particulars of objections is large enough to admit it; lor in>tance, if the plaintilV has alloW(>d Mich (r/) I'inhrrw Dnrick, 1 W.l). I'. '/■ 7 M. & (i. r,.V2. Sro oIho (?. .'»51 (n.); OaUotcatj v. /'/-"/"». Joum v. Itrryer, I Wob. V. C. '>\\). 1 Wob. P. C. 208 (n.) (//) J I rath v. r,wm, lOM. & W. (•) IloUand V. For, I < . ]„ U. CHI; liuurl V. Lnhuw, I I M. \ 440. W. GI7. PARTICULARS OF OBJECTIONS. 205 words as "and oLsoAvlicrc " to stand until the trial, the defendant will be allowed to give evidence of prior user anywhere (//). The proper course for t\\Q plaintiff to take should the defendant deliver vague particulars is to issue a sunmions before a judge in chambers for further and better particulars, or, in the alternative, to have the objectionable Avords struck out (/). In Siifff/ V. Silljer(k), Mellish, L. J., said : " The autho- rities cited by Mr. Cave were cases where objections had been taken to tlio notices of objection at the time when they were delivered, and further and better particulars were asked for. In my opinion there is a very large difference between a case where a judge has been applied to and has ordered further particulars in order to state an objection more specifically, and a case where at the trial the plaintiff asserts that the defendant ought to be prevented from availing himself of an objection. It is perfectly obvious that, if Mr. Cave was right in saying that the two questions are the same, and that Avherever the Court would order further particulars because the objec- tion had not been particularly specified, it would also hold that the party was precluded from raising it at the trial. Nobody would be foolish enough to ^pply to a judge for further particulars." Although the objections did not specifically point out that the invention consisted of several claims, yet the ob- jection that the invention is not the subject-matter of a patent, is sufficient to open the objection that the whole, or some particular part of it, is not the subject-matter of a patent, and that consequently the patent is bad (7). The defendant may, by leave of a Court or judge, (A) Hull V. Bolland, 2,5 L. J., Fox, 1 C. L. R. HO. Ex. 304 ; Sykcs\. Iluicarth, L. \{., {k) L. E., 2 Q. 13. D. 495. 12 Eq. 826. (/) See also Hull v. Bolland, (0 Fisher v. Dewick, 1 Web. P. 1 H. & N. 1 34 ; and Xcilson v. C. 551 (n.) ; Carpenter v. Walker, Harford, 1 Web. P. C. 331. 1 Web. P. 0, 268 (n.) ; Holland v. 206 I'KACTici:. from time to time, and upon such terms as iiiuki' tlic circumstances of the case may be deemed equitable, nmend the particulars wliicli lie has delivered ; this is done by summons. Paj^e-AVood, V.-C, in Pvnn v. Bib/>f/ (m), permitted a defendant in his amended particulars, to preface his statement of the specific instances of alleged prior user, with tlie words "amongst other instances" in order to give him an oj)portunity to apply for leave to re-amend bv inserting any furtlier instances uf prior user which ho might discover. The terms upon which amendment is permitted are, first, that the jdaintilY sliouM he at liheitw it' h(> pleases, to discontinue the action, and to Itc in tlie same position as to costs, as if the proposed amended particulars had been delivered in the lirst instance (//), and, secondly, that the defendant should be ])ut under such terms as to costs, as to the judge or Court seem just, 'i'ln' par- ticulars of objections give notice to tlie ])laintilV of tho case which is to be made against him ; tliereujxm he may di.scontinue or not, as he j)leases, paying defendant's costs. The defendant should not be permitted to keep back his most sidient objections, and so to entice tho ])laintilY to j)roceed and incur costs, and then to amend his ])articulars at the last moment. Forms of order for fiirtlier j)articulars wiU he found In tlio Appendix (o). The defendant will not he allnwc d at tlie hearing of tlio action to introduce evidence of prior user, not dis- closed in the particulars of objection, although such eviilence mav have roj)er (m) L. IJ., 1 Jv]. ''IH. pnmopn^o; aim) /w//*o« Trhphone (n) liaird v. Moulea Vntmt Co. \. Imlia liubber Co., L. It., 17 JUtrth Clmrt Co., L. \l., 17 Ch. D. Cll. I). 1.'57. 139(n.); alBO-4rf/i«y V. aVac/arf/i, (o) rugcu 259, JHl. PARTICULARS OF OBJECTIONS. 207 course is to obtain leave by summons or by serving sliort notice of motion for leave to amend, when an order will be made upon the terms mentioned above ; and it is submitted with an added term to delay the trial should it appear just that the plaintiff should have time to investigate the new evidence (^v*). Objections on the ground of prior publication stand very much upon the same footing as those on the ground of j^rior user. If the prior publication is alleged to be in books or newspapers, the plaintiff is entitled to be told the name of the book or newspaper, and to give such details of the books or newspapers as will enable them to be found and identified by the jjlaintiff (^). In FlimptonY. Spillcr (r), the particulars were — ''before the date of the alleged letters patent the alleged in- vention had been published in England in the ' Com- missioners of Patents Journal,' of the 6th February, 1863, and in the ' Scientific American,' of the 24th January, 1863, and in drawings and sketches deposited in the Patent Office library, in July, 1865." Mr. Justice Field directed that the defendant should amend his particulars by stating the date of the American patent, and in whose name it had been granted. And also by giving the pages of the publications mentioned, but not the lines. And also by giving such written details as would enable the drawings mentioned to be identified, and to state whether the drawings were or were not contained in books, and what books. Notice of objections, on the ground that the grantee of the letters patent was not the first and true inventor, does not stand ui^on the {p) Daw V. Elnj, L. E., 1 Eq. (r) 20 Solicitors' Journal, 1876, 38. p. 860. See also Flower v. Llot/d, (q) Jones r. Bcryer, 5 11. & G. same reference. 208; Palmer Y. Cooper, 9 Ex. 231. 208 I'lJACTici:. samo footing as objections on the ground f»f prior user or publication. Sect. :2i>, sub-sect. 3, does not require tlic d(>fendant to state more tlian generally on Avhat irrounds he oblccts. and a statonient tliat his ()l)iection is that the plaintiff was not the true inventor, that is, that the consideration did not move from him, will bo sufficient, care being taken to distinguish this objection from that of prior user or ])ublication. Wlicn the objection is, that the grantee was not tho true inventor, the Court will not rec[uirL' the delcndant to say who was the true inventor (.]i be- tween what wa.s oM and uhat was lu-w,'' .iiid tli:il tin; ($) liuMtell V. Lrdinm, 11 M. it (t, Ilcnth v. I'nuin, KiM. .S: W. AV. 017. Wwi M'l^ J um I \. lie rijer, C87. 1 \\\h V ('. .VI I. (m) 6 M. & 0. 1208. PARTICULARS OF OBJECTIONS. 200 inventor '' did not disclose the most beneficial method Avith which he Avas then acquainted of j^ractising his said invention," were sufficient. We have seen that Ord. XIX. rule G, requires parti- culars in case of fraud to be delivered with the state- ment of defence. Fraud is a valid objection to a patent. The practice of the Court is to require accurate and detailed j^arti- culars of any fraudulent acts alleged. The species of "fraudj covin, or misrepresentation" should be given (x). {x) Russell y. Ledsam, 11 M. & W. 647. T. 210 PILVCTICE. CIIAPTEK VIII. INTERROGATOKIE.S. OiM). XXXI. rule 1, of tlio Rules of the Supreme Court, 1883, provides that either party to an action, Avitli leave of the Ccnu't or a jud^-e, may interrogate the other party. Interrogatories must be relevant to the issue, and will not he allowed to he used for the purpose of eross- examination. Since it is not possible to sa}- precisely •what the issues between the partiqs are before the state- ment of defence is delivered, neither })arty, exce})t muler sj)e('ial circumstances, will be allowed to interrogate until that stage of the action has been reached (^/). Rule 2G pro^^des that o/. should he brought into Court by the party desiring to interrogate before he shall be at liberty to do so. The general rules as to interrogatories in ordinary actions ap])ly equally to actions for infringenuMit. The jdaintiff iiiav interrogate the (lctcii(I;iiit, aiul the defendant must answer as to what infringement he has licen guilty of; and he must disclose, it' askeil, the names and addresses oi all })ersons, whether in England or abroad, from whom lie may have received money for the u»e of articles alleged to be nuide in infringement of the ])at('nt (fj). Where a defendant alleged that his process was secret, he was bound to answer whether he used the nuiterials mentioned in the specilication, and whether he used any additional materials, but not to disclose th«' proportions (a) Mrrcirr v. Cotton, L. II., (b) CroHtlnj v. IStninrl, 1 N. R. 1 a li. D. 111'. \'lf> ; Jloive V. Mch'cnum, ;J0 Boav. INTEKROGATOEIES . 211 in which lio used the specified materials, or what the additional materials were (c). When there is nothing to show that the defendant has infringed the patent, and he has denied on oath having infringed the patent, the plaintiff Avill not be jDcrmitted to interrogate as to the articles made and sold by the defendant, there being nothing to show that the articles sold infringe the patent. If Lea v. Saxhy (d) be read, this pro2:)osition will be seen to follow. Crosshj V. Tomey [e) was an action to restrain infringe- ment. The defendant in interrogatories was required to state whetlier he was not making articles in all respects identical with those of the plaintiff, and to set forth in what respects they differed, and by what process they were made. It was held that the defendant, who alleged prior user by himself and others, had sufficiently answered by stating that, save so far as the articles manufactured by him before the date of the patent were similar to those of the plaintiff', the articles he now made diff'ered from those made by the plaintiff, but he could not show in what they differed without ocular demon- stration. It was also held in this case, that when the defendant alleged prior user by other persons, he was bound to set forth the names of some of those persons. In the argument of this case, it ajitpears that some con- fusion existed as to the necessary requirements of parti- culars of objections and answers to interrogatories. It must be remembered that the answers to interrogatories arc on oath, and it can never have been intended by the legislature, when the stringent requirements of particulars of objections were created, that the defendant should be bound to swear to these particulars ; the penalty upon a defendant giving particulars, which at the trial he is not prepared to prove, is that he is mulcted in costs. But (c) Rcnard v. Levinstein, 3 N. {d) 32 L. T. E., N. S. 731. E. GG5. \e) L. E., 2 Cli. D. 533. p2 012 riJACTICE. it was never intended tliat lie sliould Ije prohibited from frivinfr particulars, which, altlioii;j:h based upon mere suspicion, he niay ho})e to prove at the trial, })erhaps out of the plaintiffs own mouth (/). In Bovill V. Smifh{f/), the following interrogator}" was disallowed, " Does not the defendant allege that the ])lalntifi''s invention was publicly used within this realm before the date of the plalntilY's patent? Set forth par- ticularly when, and in what place or places, and in what manner, docs the defendant allege that tlie ])laintif\"'s invention, or any or what part thereof, was ])ublicly •used within this realm before the date of the ])laintli"rs patent.'' Sir W. Page-Wood, V.-(\, said that the plain- tiff was not entitled to enquire generally into the way ill wliich the defendant shaj)ed his case in order to find out whether some of the jiersons jilleged by him to have used the jirocess before the date of the j)atent, were the ])ersons against whom the jilaintiff had succeeded in i)\]wY suits, though he nn'ght have asked if the process was the same as that used l»y A. 15., or any one person specifically named, who had l)eeii a defendant in some former suit. A defendant who submits to answer must answer fully: he cannot, by denying the jdaintiff's title, escape answering. l)iscovery of title deeds and of ])rofessional <'f)mniunicatioiis ff)rm an exception, 'i'ln' ])laintilY and defendant had both j)atents for making gelatine; the plaint ift interrogated as to the article manufactured by tlic defenclant, and as to ihi- names and addn>sses of the rustomei-s, and us to prices and profits. TIic defendant denied all infringement. lb? said he liad made his article according to his own, and not according to the j)laintift''s, patent, and he declined to give an account of such article. Held, that not withstanding his denial, ho (/) See, howpvor, Finne^an v. '/ j I>. IJ., 2 Eq. 459. Soo also Jame$, as to an»tcer$ to t'ntrrrorfa- Daw v. I'^tet/, 2 II. & M. 72.5. torie; L. R., 10 Eq. 72. INTERROGATORIES. 213 was bound to do so(h). It is doubtful wlicther tlils case would be followed now, for it is difficult to understand how the question could be relevant to the issue. It might be relevant after judgment, but before judgment the issue is, infringement or no infringement. The names of the customers could not bear upon this question. After trial, and in pursuance of the terms of the judg- ment, if the plaintiff has been successful he is entitled to interrogate the defendant, or to require that the defen- dant ' ' should make and file an affidavit stating what machines of the same construction as that supplied by him to A. or B., including such machines as are in his possession or power," see Seton, 4:th cd., 2?. 352. The answer or affidavit of the defendant must be comjolete. In Murray v. Clajjton (^), a patentee of imi^rovements in brick-cutting machines, who was a manufacturer of the machines by an agent at the agents' works and not a licensor, having obtained a perpetual injunction against the defendants, (who were also manufacturers of brick cutting machines), from infringement, the defendants were ordered to file an affidavit stating tlie number of machines made by them since the date of the patent, and the names and addresses of the persons to whom the same had been sold, and of the agents concerned in the transactions. UjDon motion to vary the order, it was held, that the plaintiff was entitled to have discovery of the names and addresses of the purchasers, but not of the agents concerned, there being nothing to show that any agents had been employed. In answering interrogatories filed by a defendant for the examination of the plaintiff, the general rule applies that he who is bound to answer must answer fully (/^). Interrogatories for the examination of a plaintiff arc (A) Sii-inhorne v. Xvhon, IG {k) Hoffman v. PosthiU, L. Iv., Beav. 416. 4 Ch. App. Cas. 073. (0 L. E., 15 Eq. 115. :214 I'HArrici:. uii II dilieiviit fouting- fruin those lor the oxiimination of a defendant in this respect, that a philntiff is not entitled to discovery of tlie defendant's case, but a defendant may ask any questions tcndin<^ to destroy tlie i)hiintifl''8 chiim (/). in determining;- wliether a question is one of fact, and, therefore, to be answered, it makes no diflterencc that it is asked Avitli reference to a written document (/). A defendant in a suit for infringement of a patent in order to prove that there was no novelty in the plaintiffs l)atent, interrogated the plaintitt as to the inventions described in the specifications of various patents, and asked him to show in wliat respects they differed from his. The plaintiff declined to answer these interr()sti(»ns wtM-e not ques- tions of fact, and that they related to the plaintiff's case; tlie defendant excepted t. IJ.. (m) 2 II. & U. 7:20. I Cli. App. Cua. 67;J. INTERROGATOEIES. 215 was there held that the plaintiff could not c:ill on tlie defendant to set forth the particulars of his defence. But when you come to the case of a defendant asking questions of a plaintiff, it is a very different thing. It is the defendant's business to destroy the plaintiff's case, and there the defendant has a right to ask all questions Avhich are fairly calculated to show that the patent is not a good patent, or that what he alleges to be an infringe- ment is not an infringement." Lord Justice Selwynhad said, " Our decision in this case will leave it entirely within the power of the learned Vice-Chancellor to order that all the costs occasioned by the interrogatories, the answer, the exceptions, the hearing the excej)tions before him, and the hearing of this appeal, shall be dealt with as he, in his discretion, shall think fit; and if it shall appear that the power which the Court, for the purpose of justice and discovery, gives to the parties to ad- minister interrogatories to each other has been abused, I have no doubt the learned Vice-Chancellor will take care that justice shall be done, and will make the party who is to blame pay all the costs of the imj^ropcr exercise of this power." •JIG I'KACTICK. CHAPTER IX. INSPECTION. Sect. 30 of the Patents, &c. Act of 1883, provides : '' In an action for infring-ement of a j)atent, the Court or a judge may, on tlie application of eitlier party, make such order for an injunction, inspection, or account, and impose such terms and give such directions respecting the same and tlie i)roceedings thereon, as the Court or a judge may see iit/' The power to order an inspection was always assumed by the Courts; in Bovill v. Moore {a)^ Lord Eldon said: *' There is no use in this Court directing an action to he brought, if it does not i)ossess the power to have tlio action j)roj)erly tried. Tlie plaintiiY has a ])atent for a machine used in making bobbin lace. The defendant is a manufacturer of that article ; and, as the plaintiff alleges, he is nuiking it with a machine constructed upon the principle of the nuichine protected by the ijlalntlff's patent. Now the nuuiufactory of the di'fendant is carried on in secret. The machine which the defendant uses to nuiko bobbin lace, and whicli the |)laintIlV alleges to be u })iracy of his invention, is in the defendant's own ])ossessIon, and no on(> can have access to It without his permi.'ision. Tlie evidence of the piracy, at present, is the bobbin lace made by the defendant. The witnesses Huy that this lace must have been manufactured by the j)laintift^H nuichine, or by a nuichine Himilar 1o i< In j)rlnclple. This is obviously in a great nwasur*! con- jecture. No Court can be content witii evidence of this description. There must bo an order that jdainliff's (o) 2 Coop. C. P. 66 (n.) INSPECTION. 217 witnesses shall be permitted before the trial of the action to inspect the defendant's machine, and to sec it Avork." The object which the Court has in view in all cases where an inspection is permitted, is to ensm^e that the true facts of the case shall be carefully sifted ; but at the same time the Court will take care that the process of the law is not abused, and that an action for infringe- ment shall not be made a means and lever for the dis- covery of other person's secrets. The Court requires before granting- an order for in- spection that a strong prima facie case shall be made out of infringement (b). And when the interests of justice requires, the inspection will be granted to scien- tific witnesses, who will be required to keep any secrets which they may have discovered, and which do not affect the question of infringement (c). And in Flotver V. Lloyd (d) the Court of A^Dpeal strictly limited the inspection to scientific men, and excluded the plaintiff from being present. In Piggott v. TJie Anglo-American Telegraph Co. (c), it was alleged that an insjDection would disclose important secrets. Giffard, V.-C, in refusing an order to inspect, said : '^ Of late years greater readiness has been shown by the Equity Courts to allow inspection in patent cases than by the Courts of Common Law. But it has never been considered as a matter of right, nor have the Equity Courts considered themselves as jjrecluded from exer- cising a proper discretion in applications of this de- scription. The Court ought to be satisfied of two things : that there really is a case to be tried at the hearing of the cause, and that the inspection asked for is of {h) Morgan v. Seaward, 1 Web. v. Keynaston, 3 Bl. Aj). Cas. 153. P. C. 1G9; Russell v. Cowley, 1 (e) See Russell \. Crichton, 15 AVel). r. C. 458 ; Bovill v. Moore, Dec. Ct. of Sess. 1270. supra; Keynaston v. East India (d) W. N. 1876, 169, 230. Co., 3 Swan. 248 ; East India Co. (e) 19 L. T. Eep., N. S. 46. '21S I'KAcriCE. niatcTial importaiRc to the i)luiutLtr.s case an made out by his evidence.''^ Ill Unlh'ji V. Ktjnoch (/), Sir James Bacon, V.-C, said : '' Upon the single point Avhich is raised l)efore me, there can l)e no doubt tliat tlie i)laintift' in such a suit as this is entitled to an inspection of tlie means ^vhicll the defendants emjdoy in the manufacture of the articles alleged to !)(' violations of the i)laintiirs patent, when such inspection is essential for the purpose of enabling the plaintiff to prove his case; uj)ou tlie materials Ijcforo me that is not made out. There is no allegation by the plaintiff that he cannot make out his case without in- spection. But there is on the part of the defendants a plain allegation that inspection is not necessary for the l)urj)oses of the suit ; u})on that only I nuist decide this fpu'stion. I would rather not go into the other nuitters whicli have been referred t<>. The description in the specification and the allegation in tlie bill — but as I read both the deseri})tion in the specification and the allega- tion in the bill — 1 find that the charge nuule by the ])laintilf is that the cartridges, the right of manufacturing Mhlcli is vested in him exclusively, have been imitated and coj)ied by the defendant, and if that fact can bo made out the jjlaintiff's case can be clearly established. The mode of making that out is by examination of the cartridges, the means by wliich they have been nuidc, whether ])y a machine or hauuner (»r a screw cannot HJgnifv in the least il' the r Founding Co. V. Wa/(rr(f/), assunu'd the juristliclinn tn (udcr tlie defendant to deliver to the jilaintilV a sample of the typo made by him so that the plaintiff might have the same (/) L. li., I'J i>i. 'J I. (^) b W. II. 353. INSPECTIOX. 219 analysed, for the purpose of ascertaining- whether the composition was similar to the plaintiff's patented com- position. In some cases where it is necessary, the Court will order the defendant and the plaintiff to give mutual inspection, and to show both the patented machine and the alleged infringement at work, and to permit either party to take away any of the work or samples of the work which has been done in their presence (Ji). The application may be made on motion to the Court or by summons ; it is usually made upon the application for an interim injunction, but it is immaterial at what stage of the proceedings the application is made. The evidence in support must be on affidavit, and a prima facie case of infringement must be made out, and that the inspection is material to the plaintiff's case. Order L. of the Rules of the Supreme Court, 1883, contains some provisions as to inspection Avhich must be noticed. Eule 3 provides for the inspection of property and the taking of samples, or for "any observations to be made or experiment to be tried which may be necessary or expedient for the purpose of obtaining full information or evidence." Eule 4: ''It shall be lawful for any judge, by whom any cause or matter may be heard or tried with or without a jury, or before whom any cause or matter may be brought by way of a2:)peal, to inspect any property or thing concerning w^hicli any question may arise therein. This last mentioned rule was introduced by the Rules of 1883. Before, the parties must have consented to a view being had. In Jackson v. The DuJcc of Newcastle (^), (/<) Davoqjort v. Jrpson, IN. o N. R. 505. E. 307. See also The Singer (/) 33 L. J., Cli. G98. Setoing Machine Co. v. Wilson, 220 PKACTICK. Lurd Wcslbuiy saiil : "A jiulj^t' is Ijouiid lu iiioiioiuiL-c his decision accordin;^- to tlie evidonco before liim, but his inspection of the pieniises may l)ilnii- Idni to a con- chision directly opposite to that ^vlllch is established by the evidence." ( 221 ) CHAPTER X. THE TRIAL. The constitution of the Court which is to hear and determine patent actions is provided for by sect. 28, sub-sect. 1, of the Act of 1883. ''In an action or pro- ceeding for infringement or revocation of a patent, the Com^t may, if it thinks fit, and shall, on the request of either of the parties to the j)roceeding, call in the aid of an assessor, specially qualified, and hear and try the case wholly or partially, with his assistance ; the action shall be tried without a jury, unless the Court shall otherwise direct." This section is not very clear in its terms. Does it mean that in the event of an assessor being employed, that then the action shall be tried without a jury, or does it mean that all patent actions shall be tried without a jury, unless the Court otherwise dii-ects ? Under the old statute, either party had an absolute right to have the questions of fact decided by a jur}^, and the Com-t had no power to deprive them of this right (a). Under the 57tli sect, of the Judicature Act, 1878, the Court had power, without the consent of the j^arties, " in any such cause or matter requiring any prolonged examination of documents or accounts, or an?/ scientific or local investigation which cannot, in the opinion of the Court, or a judge, conveniently be made before a jury, or conducted by the Court through its other ordi- nary officers, the Court or a judge may at any time, on (a) Siujg V. Silhcr, L. E., 1 Q. B. D. 362. 222 ]'i:acti('i:. such terms a.s may bo thoii^lit proper, order any question or issue of fact, or any (picstion of account arising therein, to be tried eitlier before an oflicial referee, to be appointed as hereinafter jirovlded, or before a special referee to be agreed on between tlie })arties ; and any sucli special referee so agreed on, shall have the same powers and duties, and })roceed in the same manner as an olHcial referee. All such trials before referees shall bo conducted in such manner as may be prescribed by rules of court, and subject thereto in such manner as the Court or judge ordering the same shall direct." In the case of Saxhi/ v. The Gloucester IVar/on Co. (b), Mr. Justice Hawkins was of opinion tliat a i)atent case was a case which rerpiired a ''])r()longed scientific examina- tion," and consequently he remlttt>d the action to the most j)roper tribunal for dillicult scientlfK^ (juestions, *' t/ie njjiclal re/erce.''' We are inclined to think that sect. 28 of the l*utent, &c.. Act, does away with this option. The words appear to read, '' The Court ma}' emi)loy an assessor, and shall do so on the application of either pally, and slaiil try the case; and tlie action shall bo tried without a jury, &c." Old. XXX\ I. lule o of ijic Rules of the Supremo Court, provides, "The Court or a judge may direct the trial, without a jury, of any cause, matter, or issue, requiring any prolonged examination of documents or accounts, r)r any scientific or local examination which (cannot. In their or his oj)inIoii, conveniently be madc^ with a jury;'' mid nde 0: '* In :in}- other cmiso or matter, uj)on the aj)j)lieation of any party tliereto, for a trial with a jury of tlie cause or matter, or any issue of fa(;t, an «)rdcr sliall be made for a trial with a jury." Tiiese rules, together with the provisions of sect. 28 of th(' I'atent Act, would show that the better opinion probably is that, unless a judge or the Court otherwise 7/> W. N. 1880, p. 'JH. THE TKIAL. 223 orders, tlie constitution of tlie Court shall bo a judge sitting without a jury, and with or Avithout an assessor. The grounds of aj^plication for a trial by jury w^ould be that the evidence shows a conflict of testimony in material parts, or that grave questions of credibility are likely to arise, or that a charge of fraud is made against either joarty. Mr. Hindmarch, at p. 291 of his celebrated work, says : '' Few causes require so much care and industry in pre- paring for trial as patent actions, in which very nice points of law and difficult questions of fact must often be decided between the parties ; and it will frequently happen that a party will succeed or fail in obtaining a verdict according to the industry with which he has got up his case for trial. Properly to understand the ques- tions raised in such actions and prepare the necessary proofs, a competent knowledge "not only of law, but also of science in general and the useful arts, are essentially requisite." It is no ground for postponing the trial of an action for infringement that a petition has been presented by the defendant or any other person under sect. 2G to re- voke the patent. We have seen that proceedings for revocation are similar to, and for the same purpose as, scire facias prioK to the Act of 1883. In Mimt^ v. Foster (c), it had been held that the fact of a writ of scire facias being pending was no ground for staying the action for in- fringement. Tindal, C. J., said: " As a general rule, a plaintiff has a right to have his cause go on for trial according to the ordinary com-se of business. Special circumstances may exist upon which the Court may see fit to interfere ; but the present does not a^Dpear to us to be a case in which we ought to interfere by staying the proceedings in the action.'' (c) 2 Web. P. C. 93 (u.), 1 Dowl. & Lotv. 942. 224 PRAcriCF.. Tlie ^Touiul of this decision was that the plaiiitilY in tlic action for infringement, bein^ defendant in the pro- ccedinjifs bv scire facias, luid not tlie conduct of thoso proceedings, and tliat tlie defendant in the action for infrin«rcnient niiglit delay them ; but where in Patlcson v. JloHaml (//), an action for infrin«iement had been tried, and a rule nisi for a new trial had been obtained and ar«rued, and it appeared that another action was pending in that Court for another infringement of tlie same patent, and that a scire facian had been sued out to repeal the i)atent, the Court suspended their judgment upon the rule ii)V a new trial, and onU^-ed the trial of the other action to be posti)one(l until after the trial of tlif scire facias. And where a verdict had already gone for the Crown on scire facias^ but a new trial was jx'nding, the j)laintill was not i)ennitted to proceed to trial with his action for infringement until the rule fnr ihc new trial in scire facias had been disposed of ( plaintiff to connnem;e liis action, but connncnced pro- ceedings liimself bv !-sect. 7, of the Act of 1883, it is pmvidcd tluit in cftHOS where it is souglit to revoke u ])atent, '' The defendant sliidl 1m' entitled to begin and give evidenc(» in Hupport of tlie patent, and if the plaintifY gives evidence {ri) llindmarch, 293. n S,„itl, v. //y/f.M, n ^\. Si 0. 251. THE TEIAL. 225 impeaching the validity of the patent, the defendant shall be entitled to reply." The plaintiff must give evidence of the issues, which he is bound to prove. It is for him to support his patent and to establish its validity. He must prove his patent if the grant be denied. This is done by producing the patent itself, with the great seal — or, under the Act of 1883, the seal of the Patent Office — attached to it; sect. 12, sub-sect. 2, j)rovides that, '' A patent so sealed shall have the same effect as if it were sealed with the great seal of the United Kingdom " ; or, under sect. 89, if it be not convenient or possible to produce the original, a Printed or written copies or extracts, purporting to be certified by the comj^troUer and sealed with the seal of the Patent Office, of or from patents, specifications, dis- claimers, and other documents in the Patent Office, and of or from registers and other books kept there, shall be admitted in evidence in all Comi-s in her Majesty's dominions, and in all ^proceedings, without further proof or production of the originals." If the plaintiff sues as assignee, or under any deriva- tive title, and his title is denied, the entry from the register of patents may be proved in the manner sug- gested by the 89th section. Under the 96th section, '' a certificate purporting to be under the hand of the comptroller as to any entry, matter or thing which he is authorized by this Act, or any general rules made thereunder, to make or do, shall be prima facie evidence of the entry having been made, and of the contents thereof, and of the matter or thing having been done or left undone." For instance, if an entry in the register is denied by the defendant, he may prove its omission by a certificate under the 96th section. If the fact of infringement is denied, the plaintiff must be ready with evidence that the defendant has made, T. Q 226 PRACTICE. used or solil the article or process, and any one of tliose acts will satisfy the allepratioii of infrin;j:ement, whetlicr the infrin^^ement was intentional or not {/). Mere pos- session, nnaccompaiiit'd by user, does not aiuount to infrin^^ement(//). Kvidcncc that the defendant has sold articles made by a patented process, or by a patented machine, will be sufficient (//). If tlie defendant has imitated the plaintiff's process, or substituted chemical or mechanical e(piivalents, he will have infrinjj^ed tho j^atont (/), and the plaintiff must be ready with expert and other evidence to satisfy the Court that the defen- dant has substantially imitated his process or ai*ticle. It is an infringement to import and use or sell a patented article; althouj^di it is no infring^cment to merely import and no more(/:). If an article, ])y its ap})('aran('e or properties, can be distinr^niislied as haviufi; beiMi made by a patented process, and the defendant will not pennit the plaintiff to see how it is made, Lord I^llenborough held, that a prima facie case had been made out, which it was for the defendant to rel)nt(/). Ihit the nu»ro fact that there is a similarity of appearance b(^tween an article made by the })atentcd process and the alleged infringement, is not Kuflicicnt : there must be reasonably Katisfactory evidence that a similar article could not 1k» produced in any other manntn-; that, in fact, it carries the fcjot j)rint of the invention with it (;//). It will bo observed, that when expert witnesses are called forth(» purpose of proving infring(;mont in this manner, tluy nnist bo asked whether there? is a similarity between the ])atentcd article and the alleged infringement, and also whether tlicro iH any other proccHH, except tlie patented process, (/) SteatI V. Andrraon, J (.'. II. (/) J/utlilart y.G'rimii/iau',I)ay\B, HOG, and anti-, p. 110. P. 0. 288. Son hIho Jhttn v. Neil- (j) Anlo, p. lG3. ton, L. U., /i II. li. 1 1 nw\ 12. (A) If'rhht V. Ilitrhcock, L. II., (»n) Hoo Pahmr v. Il'or/.s/af, 6 Ex. 37 Ex. \0i ; 23 L. .T., Ex. 217 ; 2 C. (i) Am-, 2'. ■•'• T^- Ji- I0''i2 ; ond Davenport v. (*) Ante, p. ir,3, liichanh, 3 L. T. K., N. 8. 504. THE TRIAL. 227 which will produce that similarity ; but they cannot be askccl their opinion as to whether or not there has been infringement. That is a question for the jmy, or the Court in tlie absence of a jmy (n). The Court will consider the circumstances of the case, the behaviour of the mtnesses and their credibility, when considering the question of infringement or no infringement. In Clark Y. Adte(o), Lord Blackbm-n said: — ''When- ever a man knowing for the first time of an invention, either by seeing a machine at work or by reading a specification, proceeds to do what he never did before, and takes a part of the invention, it is always a very strong argiimentiim ad Jiominem to say: You are, by the very fact of taking this, making evidence against yourself that it was a new invention; otherwise, why did you take it? You are making evidence against yourself that at all events the part you took was new, or why did you take it ? and whenever there is a case of theft or stealing knowingly, that observation ought to have some weight, although I think in practice it has more weight given to it than it ought to have. But where there is a case of an innocent infringement of proj)erty, by an unwitting use of this sort, that observa- tion can have no weight against the party in the slightest degree, and I think it ought not to have any." The burden of proving infringement is strictly on the 2:)laintiff, and if he does not satisfactorily prove it there is no necessity of entering upon the defendant's case on other matters. The plaintiff must always give evidence, when the alleged infringement is the sale or use of an article, that it was not made by himself or his agents (/?). {n) Per Lord "Wcnsleydale in (o) L. E., 2 App. Cas. 337. Seed V. Higgins, 8 H. L. Cas. [p) Belts v. Wihnoif, L. E., G 550. Ch. 239. q2 228 PRACTICE. AVlicn tlio dofondant ;ilK\ii-es tliat \hvvv is a defect or insufficiency in the specification, the Ijurdun of proving' that tluTc is no such di'fcct is on tlio plaintifY. We liavc sccn((/) tliat it is for tlio jmy to say whether a specification is sufficient or intelligible (u-not; it is for the Court to })laco a construction upon the lanpiap^c used in the spcciiication. The plaintilt' must tliercfore be prcj)arcd witli evidence of an expert character as to the sufliciency of the specification; and in selecting!: this evidence the plaintiff cannot be better guided than 1)V tlie jud«,^ment of Sir George Jessel in Plimpton v. Jlalc'i/nison^r) : he nuist not select eminent engineers or celebrated chemists as the persons to wliom iho sj)ecifi- cation must be intelligible, but he nnist clioose '' ordinary workmen" in tlie particular braneh of trade to -which the invention refers — " not a careless nuin, but a careful man, tliougli not possessed of tliat great scientific know- ledge or junver of invention which would cnabli' him h)' himself unaided to su})pl('in(ii1 a defective description or correct an err(jneous description." ]!(» may, of course, call eminent engineers, but their evidence can only be, '' placing myself in the ])osition of an ordinary workman I think it would or would not be intelligible or suflicient to inc." Il the spe{;ificatioii be not Milliciently clear to 1)0 understood by an ordinary workman (a witness for the plaintiff), witnesses will not be allowi'd to be called to exj)lain the intention of the j)atentees, and the plain- tiffs will be non-suited (.v). Experiments (■(»ndiicte(l for the express jmrpose of manufacturing evidence, with a view to litigation, are to be l«)oked at with distrust (/). The ])lainlifY nuist, if the nuitt. .117. THE TRIAL. 231 more reasonable rule, by holding that the defendant was bound to prove liis plea, and that the plaintiff might answer it by additional evidence.' Other instances are also mentioned, all showing the wide discretion given to the judge in allowing evidence to be given by the plain- tiff in reply. The plaintiff has put in his letters patent as formal evidence of his title. The defendants then plead want of novelty, and give, in proof of the issues thus raised by them, special evidence, which the plaintiff is entitled to rebut, by evidence, in reply. Regarding this case as one of an affirmative plea, the burden of proving which rests on the defendants, I feel bound to admit the evidence proposed to be given by the plain- tiff in rej^ly." Although the plaintiff may, as of right, rebut the case made by the defendant, upon any issue which rests with the defendant, where the plaintiff' has given such rebut- ting evidence, the defendant will not be allowed to strengthen the case which he had made by adducing further evidence ; and this will apply with greater force when the defendant's counsel has summed up the evidence which has been oft'ered (d). At the hearing of the action, no objection will be allowed, either to the particulars of objections, or to the particulars of breaches, and any evidence will be received which they are wide enough to admit of. If there is any vagueness or insufficiency in the particulars, the party requiring further information must apply for it to a judge in chambers, within reasonable time Ijefore the trial of the action ; but they will not be allowed to permit the o2:>posite side to go to trial, and then to sub- mit that, for want of sufficient particularity in the objec- tion, the evidence is not admissible (e). {(l) Penn v. Jack, L. E., 2 Eq. {e) Neilson v. Harford, 8 M. & at p. 318. AV. 806 ; Ilidl v. DoUand, 1 H. & N. 134. 232 rrvACTiCE. In Sy/ccs y. IIowarf/i{f), tho i)laliitiflt delivered parti- culars of breaches in May, 1878, "wliicli stated that tho defendant had at divers times between the 29th of May, 1879, and the commencement of the action, infrin'^ed the plaintiffs patent by the nianufactm-e, or sale, or use of fancy rollers, and in particular by fancy rollers manu- factured and sold by or covered Avith cards, l)y tho defendant, for Messrs. Shaw and Mr. Sniith. In July, 1878, the statement of defence was delivered. It stated, '' The defendant has made and sold to Messrs. Sanuiel Shaw and Co. and Mr. Charles Smith, in the particulars of breaches in this action respectivly mentioned, and to other persons, certain cards (in all six sets), which were all 2^ inches in width ; " and tlie defendant, in answer to interrogatories, disclosed the name of Hirst as one of tho jjersons supplied with such sets of cards. Mr. Justice Fry admitted evidence in Hirst's case. He said: ''The defendant did not a})ply for amended particulars, accord- ing to tho case of Hull v. Bolland {supra). It appears to me I have to inrpiirc what is the meaniniz: of the parti- culars. I find that the case of Hirst is within the literal meaning of the particulars. If I had found that tho case of Hirst was likely to create surprise, or likely to introduce any ])oint not raised in Smith's or Shaw's case, I should probably have •^'■iven an opportunity to tho defendant to bring any fresji evidence," The learned judge would not luive ruled that tho plaintiff was pre- vented from giving the evidence in Hirst's case, but hi* would hav(! allowed the defendant to ri'but it. These decisions must not be confused with a ca.sc where, for example, the ])arti(ulars aUegcd infringement or prior user at London .iiid Li\(r]ii)ol. In sucli u case no act of infringrment oi- prim- user would lie admitted in evidence which did not occur at London or ivivcrjxtol, but if the words were London, Liverpool, or elsewhere, (/) L. K., 12 Ch. D. 82G. THE TRIAL. 233 then the evidence might extend to any part of the country, because any evidence would come within tlie strict meaning of the objections. Upon the trial no evidence will be received in support of any issue Avhich is not raised in the pleadings. In Bovill V. Goodier(g) it was held that an objection to the validity of a patent on the ground of the expiration of a foreign patent for the same invention, cannot be taken at the hearing of a suit to restrain the infringement of a patent unless it has been raised by the answer. {(j) L. E., 2Eq. 195. 234 I'lLVCTlCE. CIIAPTEK XI. QUESTIONS FOK COURT AND JURY. Wk have scon that as a rule actions for tlic infrinp-cment of letters patent are directed to be tried before the Coui't without a jury. Still, under special circumstances, the parties, or either of them, nuiy obtain an order to try before a jury. Under these circumstances it •will still be material to consider what are the (jucstions which the Court should leave to tlie jury, and which are left to tlio decision of the Court. As to the specification. The construction is for the Court (a) ; and the rules of construction are sinular to tliose which «i^overn the construction of other docu- ments (/»). \n JlilU v. Evans (v)\ Lord Westljury said: " It is undoubtedly true, as a proposition of law, that the construction of a specification, as the construction of all other written instnunents, belon'i's to the Court; but a specification of an invention contains most generally, if not always, some technical terms, some ])hrases of art, Bomu processes, and rcfpiires generally tlic aid of tho light derived from what arc called surrounding circum- stances. It is, thercfcjn^, an admitted rule; of law tluit the explanation of the words or ti'chnical terms of art, the phrases used in coimn(M-ce, and the proofs and results of the j)rocesses wliich an; described (and in a chemical patent tho ascertainment of chemical ecpiivalents), that all these are nuitters of fact upon which evidence may bo (a) HUIm v. J'A-ani, 31 L. J., Ch. (6) Simpson v. llolUday, 20 Now- •15G ; Seeds. Jliyrjinn, S II. L. CaH. ton'H Ijon. Jour. N. S. 105. 001 ; liQtill V. I'imin, 11 Ex. 710. (r; 31 L. J., Ch. 150. QUESTIONS FOli COUET AND JUEY. 235 given, contradictory testimony may be adduced, and upon which undoubtedly it is the province and the right of a jury to decide. But when these portions of a speci- fication are abstracted and made the subject of evidence, and therefore brought within the province of the jury, the direction to be given to the jury with regard to the construction of the rest of the patent, which is conceived in ordinary language, must be a direction given only conditionally, that is to say, a direction as to the meaning of the patent upon the hypothesis or the basis of the jury arriving at a certain conclusion with regard to the meaning of those terms, the signification of those phrases, the truth of those processes, and the result of the technical procedure described in the specification. And so the rule is given by Parke, B., in delivering the judgment of the Court of Exchequer in the case, I think, of Neilson v. Harford [d). The language of the learned judge, which I adoj^t, is in these words : ' The construc- tion of all written instruments belongs to the Court alone, whose duty it is to construe all such instruments as soon as the true meaning of the words in which they are couched and the surrounding circumstances, if any, have been ascertained as facts by the jury ; and it is the duty of the jury to take the construction from the Court, either absolutely, if there be no words to be construed as words of art or phrases used in commerce, and no sur- rounding circumstances to be ascertained, or condition- ally, when those words or circumstances are necessarily referred to them.' Now, adopting that as the rule in the comparison of two specifications, each of which is filled with terms of art and with the description of tech- nical processes, the duty of the Coiu't would be confined to this — to give the legal construction of such documents taken independently. But, after that duty is discharged, there would remain a most important function to be still {d) 8 M. & W. 806. 23G piucTicE. pcrfomicd, wliieli is tlic comparison of the two instrii- iiients wlien tliey Iiave received tlieir legal exposition and interpretation ; and as it is always a matter of evidcneo what external thing is indicated and denoted by any descrii)tion, when the jury have been informed of tho meaning of the description contained in each specifica- tion, the work of comparing the two, and ascertaining whether the words, as interpreted by the Court, contained in specification A, do or do not denote the same external matter as the words, as iiiter])retcd and explained by tho Coui-t, contained in speciiication 13, is a matter of fact, and is, I conceive, a matter within the jn'ovince of tho jury? and not within the function of tlie Court." E]>itomising this elaborate judgment. When the lan- guage used is that which has an ordinary and legal meaning tho (question is, wliat has the man said? not what did ho intend to say ? and, therefore, the Court will })la((' tlie legal meaning on liis words. Wlien tho language used is that wliicli has no ordinary legal meaning, or which under dilVerent circumstances may have two or more ordinary legal meanings, tlie question is, as a fact, with what meaning did the writer use tho words or expressions which he lias used y ami that is a question which the Court should retjuiro the jury to solve. The matter eould not Ik; placed more lucidly than it is ])y Lord Westbury in the hist do/.cii lines of the judgment which we have quoted. It is for the jury to say wlicthcr tho speciiication is intelligible (///) or not, and it is for the Court to direct tin- jury as to the class of |)ers()ns to whom it must bo intelligibh' (//). It is for the jury to say whether the specification is Buflicient or not, tluit is, whether it contains a sufiicicnt descrijition of the invention; but it is for the Court to (m) Seilton v. Ilar/unl, 1 Wch. (n) Soo aiHCH cited at pp. 7'J to r. C. 29.J. 7G ot WMj. QUESTIONS FOR COURT AND JURY. 237 inform the jury the degree of sufficiency which the law requires in specifications (o). The novelty of the invention is a question for the jury. Questions of prior user or prior publication are always questions of fact, and it is for the jury to compare what has been done before and what is set up as being new, and to say whether or not they are identical. And so any document which is said to amount to prior publica- tion must be construed by the Court, but it is for the jury to compare it with the specification and to say whether the described matter is the same or not ( jj). The utility of the invention is also for the jury, sub- ject to the directions of the Court as to the degree of utility which the law requires for the purpose of sup- porting the validity of a patent [q). The question of infringement is for the jury. In De la Rue v. I)icMnson(r), Campbell, C. J., said: " There may well be a case where the judge may and ought to take upon himself to say that the plaintiff has offered no evidence to be left to the jury to prove infringement, as if there were a patent for a chemical composition, and the evidence was that the defendant had constructed and used a machine for combing wool. But, if the evidence has a tendency to show that the defendant has used substantially the same means to obtain the same result as specified by the plaintiff, and scientific witnesses (o) Hill Y. Thomjjson, 1 Web. V. G. 222 ; Muntz y. Fosier, 2^y oh. P. C. 235 ; BickfordY.Skewes, 1 Q. P. C. 107 ; Spencer v. Jack, 11 L. B. 938 ; Neilson v. Harford, 1 Web. T. E., N. S. 242. P. C. 295 ; Walton v. Bateman, (q) Hill v. Thompson, 1 Web. 1 Web. P. C. C21 ; Beard v. Eger- P. C. 237 ; Bloxam v. Elsce, 1 C. ton, 19 L. J., C. P. 38 ; Wallimj- &P. 565; Cornish Y.Keene, iWeb. ton V. Dale, 7 Ex. 888 ; Parkcs v. P. C. 506 ; Jlort/an v. Seaward, 1 Stevens, L. E., 8 Eq. 358, and L. AVeb. P. C. 186; Macnamara v. E., 5 Ch. Ap. Cas. 36. Hulse, C. & M. 471. {})) Cornish v. Keene, 1 Web. (;•) 7 E. & B. at p. 755. P. C. 519; Elliott V. Aston, 1 Web. 238 PRACTICE. have sworn that tlio dofondant actually has used such means, tlio (luostlon becomes one of fact, mixed with law, which the judge is bound to submit to the jury." In Seed Y. IIi{/f/ms(s), Lord Chelmsford in the IIouso of Lords said: ''AVliat the defendant had done in any case was of course a question of fact, but whether, on proof of certain acts having been done by a defendant, the plaintiff had any case to go to a jury, was a question for the judge " (/). (*) 30 L. J., Q. B. at p. 317. 331 ; Sfrrnts v. Keating, 2 Web. (/) Seo nlso Walton v. Potter, V. C. 191 ; Sellers v. Dickinson, 1 Web. r. C. 58G; Macnamara v. o Ex. 323 ; Curtis v. Piatt, 35 L. IluUe, Car. & M. 471 ; Newton v. J., Ch. 852. Grand Junction Hail. Co., o Ex. ( 239 CHAPTER XII. CERTIFICATES. Sect. 31 of the Patents, &c., Act, 1883, is as follows: — '' In an action for infringement of a patent, the Court or a judge may certify that the validity of the patent came in question, and if the Court or a judge so certifies, then in any subsequent action for infringement, tlie plaintiff in that action, on obtaining a final order or judgment in his favour, shall have his full costs, charges and ex^^enses as between solicitor and client, unless the Court or judge trying the action certifies that he ought not to have the same." Similar provisions were contained in 5 & 6 Will. IV. c. 83, and also in the 43rd section of the Patent Law Amendment Act, 1883. The object of these sections is to prevent patentees of important inventions being ruined by successive actions, ^Avhich they are bound to bring to restrain in- fringements. Manufacturers banding themselves toge- ther to defeat a patentee's rights in this manner. The Act of William IV. cited above gave the patentee a right to treble costs, but this was taken away by 5 & G Vict. c. 97, which gave him full costs ; and now, as we have seen, costs as between solicitor and client are sub- stituted for full costs. To acquire the protection of the 31st section a certifi- cate is requisite, and this should be applied for at the trial of the action, and the application must be made to the Com't or judge who have tried the cause (a). (a) Gillei v. Green, 7 M. & W. 347. 240 riLVCTICE. The Court have no power to order full costs upon the first trial in wliich the validity of the patent came in question, the words of the statute l3cing *' in any subse- quent action for infringement " (b). Where several simidtaneous actions have been brouirlit, and one oi. them has been made a test action and proceeded with to trial, upon a certificate being given in that action it will not operate upon the othei'8(6"). An action was compromised at the trial by a verdict being entered for the })laintilf in the action for 40-5. damaires and costs, witli all usual certificates. Subse- quently, upon an ex parte api)lication, the judge endorsed on the record a certificate that the record in a certain action, wherein Bovill was plaintiff and Keyworth was defendant, and the c(u-tiiieate thereon endorsed was given in evidence at the trial of this action (Bovill v. Iliidlct/)^ it was held that this certificate was improperly granted, the record and certificate in the former action not having been given in evidence, and it not being under the cir- cumstances a ''usual certificate" within the contem- plation of the parties (^/). Upon the trial of tlie second action the record of the first action Avitli the endorsement must be j)roduce(l, but not Ixtnre the verdict, in such a manner as to prejudice tlie second trial (r). The certificate of the judge, which is granted for the ])urposo of afl'ecting the costs in future cases, is one whicli (cannot be given by cons(Mit. In o1)taining this certificate the plaintifif and the country arc the parties, not the defendant, and the judge is bound to protect tlio interests ol" the cotnitry and to s(u; that i\\v certificate is not given wlien tluj validity of the j)atent has not, in fact, been proved to the satisfaction of the Court; otlier- \^i,^ Jrnn V. JitU't/, L. 11., :\ Kq. (il) liovUl V. Iliullry, 17 (J. B., 308. N. 8. 'l.'J5. (c) Penn v. I'rrnir, L. K., 3 Kq. (r) Ncicall V. M'ilkins, 17 !>. T. 308. B. 20. CERTIFICATE.S. 241 wise, there is nothing to prevent collusive actions being merely brought for the purpose of obtaining tliis valuable privilege — a privilege which can be used as an enormous lever, preventing persons from incurring the risk of a conflict with the patentee (/). We have seen that the object of this section is to pre- vent the patentee from being repeatedly harassed by the validity of his patent being called in question in succession of actions. It does not appear ever to have been decided whether, when in a second action the validity of the patent is not called in question, but there is a mere denial of infringement, the section applies. It is submitted that such a case was not within the contem- plation of the legislature, and that the judge should direct only party and party costs whenever the validity of the patent is not called in question. Sect. 29 of the Act of 1883, after providing for the delivery of particulars of breaches and objections, enacts : "(6) On taxation of costs regard shall be had to the particulars delivered by the plaintiff and by the defen- dant, and they respectively shall not be allowed any costs in respect of any particular delivered by them unless the same is certified by the Court or a judge to have been proven, or to have been reasonable and proper without regard to the general costs of the case." The certificates granted under this section must not be confused with the certificate under sect. 31. The object of sect. 29 is to provide what costs shall be payable in the action itself, and the object of sect. 31 is to provide for the costs of future actions. Care must be taken at the trial to ask the judge to certify as to each particular l^reach mentioned in the particulars of breaches, and as to each particular objec- tion, and no costs of witnesses, or of, and incidental to. (/) Stockei- V. Rodgers, 1 C. & Iv. 99. R x*4'J riv.vcTicK. sucli breach or objection, as is not specially certified for, •will l)e allowed (//). It" an action is not tried out, it is obvious that a diflicultv may arise as to costs, since the parties liave had no opportunity to ])idV(' or disprove their particulars. In Greaves \. The Eastern Cauuties Jiailicat/ O*. (//) it was held that where the defendant had delivered jiarticulars of objections, and just before trial the ])laintiiV had abandoned his action, thus ^^ivinii- the tlefendaiit no opportunity of provinply, except where the cause came on for tilal. it will l)e ol)served, how- ever, that there is a (inference between tlie lan^i'ua^-e of the 4.*ird 8e<'t. of tlie Patent Law Anieiidnient Act, 1852, and the lan<;ua;^'-e of the 'JDth sect, sidj-sect. (()) of the Patents, (Siv. Act, 18.s:{. In the former case the words were: *' Shall not ])e allowed any costs in rcs})ect of any l)articular uidess certiiic d by \]\(\iiitf(/e before w/wm (he trial was had to have been proved." I'nder the latter statute : "Shall not b(Mdlowed any costs in respect of any ])ar- ticular delivered by them, unless the same is certllied by the Court or a jud^e to hav(» been ])roven, <>r to have been reasonable and jimpery It is siibiiiltted that the practice under the new a(;t when the action has not been tried is to take r)ut a sunnnons before a judp:e at chandK-rs for a certifi<'ate, on the ;xround thai the jtarticulars were rea- sonable and ])roper; such suinnions shoiihi be Mipimrted by an aflidavit, alle^'-inj^ that ilir |.hiintilV or defeiulant liad leasonahle f4:rounds for believiii;^'" tiiat he would at the trial have ln-en able to j)rove the partiliall not be broiipn-;((1 (.|", ami. il' tlii'S' infrinj^o the patent, they infrin^^e it with a liability for costs." The reasonin'T of this decisiim is not (piite clear, and it is submitted that, should the (piestion arise a;:ain, tlio oj)inion of tht; Court of Appeal mi^.dit be taken on the subject, re^nird bein^^ had to the ease of p, iil> i/ v. Itlnrc^n). .Jud;,'-nu'nt bavin;;; been recoven'd, minutes of jud/^nnent should be prepareij. The minutes will be in aeeordam'O with one or other of ijic jireeedenls ;^iven hereafter. Wo Iiavc (bawn attcntinu in jMcvious pa^^es to those (O Turner v. Il>nir„ck, C A.. 20 (/) L. !{., 22 fli. D. 17.1. Cb. D. 30.3. (w) 1 1 Jur., N. S. II. (*> Ku1p» of S. ("'. pPT. lH7r,. (n) 38 I>on(l. Jour. 2 J I. CERTIFICATES. 245 points which should be attended to in preparing these minutes. Care should be exercised when an account is directed to be taken that provision be made for the pay- ment of costs to the plaintiff up to and including the hearing, otherwise the payment of all costs will be de- layed until the final account has been taken, which in some cases has been known to amount to a delay of years. '34.) '' The jjlaintiff nnist (h'llver with liis j)etiti(jn ])articulars of tlie ol^jcctions on whieh he means to rely, and no evi(h'nce sliall, except l)y leave of tlie Court or a judn'c, ]»(' aihiiiltcd iii pioot' of aii\ o1)jection of which parti<;ulars are lujt so (hlivcrcd." The ju'actice as to ])articulars is picrisclv similar to that in an action for infringement. Jt will, however, be observed that the jud«,'"e has n<» p<»\ver of c(»rtifyin/^ under sect. .''.1 that the \iili(lit\- of the patent eaiiie ill (juestion, n). He may apply for further and better particulars in the same manner as in an action for infrinfr-ement ; and under sect. 26, sub-sect. (6), " Particulars delivered may be, from time to time, amended by leave of the Court or a judge." Sect. 28, sub-sect. (1), provides that the mode of trial of a petition for revocation shall be similar to that of an action for infringement. Sect. 26, sub-sect. 7. '' The defendant shall be entitled to begin and give evidence in support of the patent, and if the plaintiff gives evidence impeaching the validity of the patent, the defendant shall be entitled to reply." The evidence which will be required of the respondent (defendant), in the first instance, will be very slight, and will be similar to that which he would give as to the validity of the patent were he plaintiff in an action for infringement {c). The petitioner will then have to prove {h) Ante, p. 204. (c) Ante, p. 225. 248 rKACTicK. the case lio alle^^^os in his jjotition and particulars, and tlie respondent lia.s the ri^lit of roj)ly. It is merely to preserve tliis right to reply, that the respondent is made practically plaintilV at the trial. It is very doubtful whether sect. 29, sub-sect. (G), will be held to aj)ply to jH'titions f(U- revocation. Sub-sect. (1) of the same section, limitinrity of tho Attor- ni'V-Oonenil inunt )h> ntuted. filoz- hrw>k r. (h/lal(, » Jtcav. W2. FORMS. 253 Your petitioner humbly prays that the said letters patent may be revoked, or that such other order may be made in the premises as to this Honorable Court sliall seem meet. And your petitioner will ever pray. It is intended to serve this petition on {b) , . 4. XoTicE OF Motion for Interlocutory Injunction. In the High Court of Justice, Chancery [or Queen's Bench] Division. Between A. B. Plaintiff, and CD. Defendant. Take notice that this Honorable Court will be moved [if short notice of motion, by leave granted] on the day of , or so soon thereafter as counsel can be heard by Mr. , of counsel for the above-named plaintiff, that an injunction may be awarded against the defendant to restrain the said defendant, his servants or agents until the trial of this action or further order from cither directly or indirectly making, using, or putting in practice the invention described in the specifica- tion and drawings filed under the letters patent granted to the plaintiff \_or assignor, or other predecessor in title of plaintiff], and numbered , or that such further order may be made in the premises as to the Court may seem meet. 5. Affidavit in SurpoRT of Notice of Motion. \_Title as above.'] I, of , the above-named plaintiff, make oath and say, 1. Letters patent dated [ ] w'ere granted to me under Grant. the seal of the Patent Office for an invention entitled " improve- ments, &c., &c.," for a period of fourteen years from the day of . 2. At the time when the said letters patent were granted to Novelty. me the said invention was new as to the public use and exercise thereof within this realm. (b) Here insert tlie names and served personally, unless an order addresses of all persons ■who, cither has been obtained for substituted as original grantees or by assign- service. The original must be ment, are registered under sect. 23 shown if demanded. An order may of the Patent, &c. Act, 1883, as be obtained for service out of tlio interested on the patent. jurisdiction; see Daniell's Chancery A copy of the petition must be I'ractice. ~.>-* lolCMS. Fir,t .'{. 1 nm the true and first inventor of tlio saiil invention [or luvtutor. John Smith or other prejpcessor in title of the plaintiff, was the true and first inventor of the said invention]. I'tility. 4. The said invention is of great puLlie utility'. 5. [^State any particular fiicta^ such as a previous action or hug user, tr/n'c/i hare a temtviicy to cause a presumption of the validity of the patent. '\ Infringo- G. On tho day of the defendant infringed the "*^""'' plaintiff's said patent by manufacturing [selling or using], etc. ((•). 7. [The articles sold by the defendant were not manufactured by me or by my licensees or agents.] 8. I believe that the defendant intends to continue the in- fringrment of tho said letters patent, whereby my trade is grc.'itly iiijureil; persons refusing to purchase the patented articles from me [or I am unable to grant licences, or state any othrr (J rounds of sprcial danunjc arisiny hy reason of the continued infringement^. 0. InTERLOCUTOKY OkDKH lo lil.sTltAlN I.\FKIN(.KMENT OF r.\TENT. Form 1. Upon motion, &.c. l)y counsel fur tli(> ]il!iiiitiir. and u])on hear- ing counsel for the dejmdant [or reading an alli of opini«)n that the deftndjint slmll have sustained any, by reason of this firder, whidi tlm jihiintiiV ought to pay [if so, and also undertaking to accej)! short notice of motion to dissolv(» the in- liiKrUxiitory junction liereby awarded], let an injunetion be awarded to QjuDc tuu. ristrain the defendant T., tmtil further order, from manufac- turing any tube e.\j»anders simihir to the tube ex]»ander which Ims been pureha.s<(l hy tlie defendant li., as in the phiintilf's writ mentioned, or otherwise constructed so as to imitate or resemble the roller expanding tool described in the specification in the plainlifl's letters ])atent in the said writ mentioned, and to restrain tlic defi no ndilurtHl by Mii|>)Mirtiiip iiniiluvitH in nifu> it iM (|e<*iiii'<| lliut tlie ilefi'liiliuit }iaH iiifriii(fiM'aninco, nhowed they luid lM'«>n niaue l»y tho }>iit4'nted niacliine, from tli<' (h'fon such inspection, and thiit the jtlaintilf, his Samples. servants or agents, may be at liberty to take samples of the made or to be made by the said machines or jirocess, upon paying to the defendants their reaijouablu charges for the same. 10. Inspection, and Orhkr for ])i.i,i\ iry i«y Defendant of Swil-I.l.s KiR An.M.\sIS. [ Tiffr (iH aljorc] [Jornifi/ parfs as ahorr'j may be at liberty, upon giving three dayu' previous notice in writing to the defendants' solicitors, to enter upon the defendants* ])renjises, and to inspect the typo thern uwd by the said defendants in tlieir ])rinting jiroce.sses, iw Hamplm fur mentioned iu the statement of claim in this action ; and that the mxi^lyuut. defendant nuiv lie ordered to jiermil tlie jihiiiitiir, his solicitors nnd agents, and one person to be nanjed as aforesaid, to ent<'r ujton iiJH premiwM for the ]>urj)ON» aforesaid, and that said defendant njay Ik? further onlen-d to deliver to tlu» plaintiff a comiM,'tent part of the said typo so used, on payment of a fair (y) Flotver T. IJoyl, 1H70. A. l2o\. FORMS. 257 price for the same, and that the costs of this application may be costs in the action (//). 11. Order for Inspection of Defendants' Process by Experts. Let I. and C, of, &c. be at liberty at all seasonable times, Order for and as often as requisite, on giving three days' notice to the experts, defendants, to enter into the business premises of the defen- dants where the process of decorating or printing tin and metal plates is carried on by the defendants, as stated in the plaintiff's statement of claim, and mentioned in the said affidavits, or some of them, and to inspect and examine tliere the whole of the pro- cess by which such printed and decorated tin {i) and metal plates are manufactured by the defendants, and to take, on pay- ing the reasonable charges of the defendants for the same, samples of such plates, and upon and during such inspection to make such observations as may be necessary and expedient for the purpose of obtaining full information and evidence of Full informa- the mode by which such plates are manufactured by the de- ^^°^- f endants {k) . (/t) This was the notice of motion in 'The Patent Type Foundhig Co. v. Walter, reported at 5 H. & IST. 192 ; 29 L. J., Ex. 207; 6 Jnr., N. S. 103 ; 1 L. T. Eep., N. S. 382. The samples of type in this case were required for the purpose of analysis. Notice of motion for inspection must be supported by affidavit ; a fair prima facie case of validity and infringement must be made out. The order for inspection is frequently made upon the applica- tion for interlocutory injunction, and is sometimes made to include a cross order that the plaintiff shall I^ermit the defendant to see and inspect the patented machine at woi'k, and also to take samples. Ames V. Kehe^/, 22 L. J., Q. B. 84. The affidavit should show that there is such property or machinery as is required to be inspected, that the inspection is necessary for the pur- pose of the action. Shaw v. Bank of EmjJaml, 22 L. J., Ex. 26. It should also show what the patent is for, so that the Court or judge may see that there is necessity for the inspection. The order will not be granted on the plaintiff's appli- cation, unless the Court is satisfied that it is essential to enable him to prove his case. Batlei/ v. Kynock, L. E., 19 Eq. 90 ; Meadoius v. ^Kirk- mann, 29 L. J., Ex. 205. In The Singer Maniifadnrinr/ Company v. Wilson, 13 W. E. 560, the Court refused to give the plaintiff inspec- tion of the defendant's stock before judgment, but ordered the defen- dant to verify by affidavit all the different kinds of sewing machines which he had sold since the last disclaimer entered by the plaintiff, and to produce one of each sort for inspection. [i) No order will be made on this application for the inspection of books, for which a separate order must be obtained. Vidi\. Smith, 3 E. & B. 969. (/.•) Flower v. IJo>jd, C. A., 5th July, 1876, A. 1254. 258 F( M{MS. Infringement. First inventor. Injunction, daiimtrt-s, account. \'2. SlATEMKNT OF Cl.VIM. In the High Court of Justice. Chancery [^or Queen's Bench] Division. Between A. B. riaiutiff. and CD. Defendant. Statement of Claim. 1. The defendant has infringed the plaintiff's patent, num- bered — , granted for the term of fourteen years from the day of . f(ir an invention entitled improvements in the manufacture of iron and steel. 2. The plaintiff was the fir-st and true inventor of the .said invention. .'{. The plaintiff claims an injunction to restrain the defendant from further infringement, and that accounts may he taken of the sales and profits mad(^ hy the defendant hy infringing the said letters patent [or in the alternativ<>, £100 damages]. I'articidars of Lrcaches are delivered herewith. [Place of trifd.] Signed. Delivered the . riaintifP, ami C. ]). Defendant. The following are the ]tarf iculars of thr hreaohes of tho letters ])atent complained of in the statement of claim herein : — '"'"(f 1. Tho defendant on or about tho day of at his factory at , in tho cotinty of manufactured acetate f»f soda by tlio process ami with the use of the maciiinc'ry and appliances which form the subject matter of tho plaintilT's patr'nt. 8«IUng. 2. On tho day of the d.ftndant sold to John Smith of , one parcel eontaining tons of acetate of jwnla manufactured by the defindant by the jtroeess and with the use of the niaehiiiery and aj)i>liance8 which form tho subject matter of the plaintiff's pati-nt. y. On tho ■ day of the defendant sold, &c. Yours, «S:o. I'laintiff's solicitor. Tn Mr. i:. I'. Defendant's solicitor. FORMS. 259 \_FormaI paris an ahovo.'] 1. The defendant, on or about the day of , Making. manufactured at his factory at , in the county of , sewing machines, which sewing machines were infringements of the plaintiff's patent. 2. The defendant, on or about the day of at Selling-. his shop at , in the county of , sold a sewing machine to , which sewing machine was an infringement of the plaintiff's patent. 3. The defendant, on or about the day of , in Using. his workshop at , in the county of , by himself, his servants or agents, used a sewing machine, which sewing machine was an infringement of the plaintiff's patent {m). {Further and better particulars of breaches or object ions obtained bij summons, common form.) 14. Order for Delivery of further Particulars of Breaches. It is ordered that the plaintiffs within days from the date of this order deliver to Messrs. , solicitors for the de- fendants, further and better particulars in writing of the breaches alleged to have been committed by the defendant, upon which the defendants intend to rely on the trial of the questions directed to be tried by the said order dated, &c., specifying by reference to the pages and lines the part of the plaintiffs' specification in Pages and respect of which such alleged breaches have been committed ; g^Jg^igcation and let the time within which the defendants are to deliver to the plaintiffs' solicitors particulars in writing of the objections to the letters patent in the plaintiffs writ mentioned, be enlarged until the twenty-first day after the delivery of such further and better particulars, costs of application to be costs in the cause {)i). 15. Statement of Defence. In the High Court of Justice. Chancery \_QHeen^s Bench"] Division. Between A. B. Plaintiff, and CD. Defendant. Statement of Defence. 1. The defendant did not infringe the patent. 2. The invention was not new. (?h) In the case of a patent for a infringed, or as to which of the combination, or where there are claims infringement is alleged, several distinct claims, the particu- (;/) Luinh v. The NottingJiam larsof breaches should specify Avhat JManvf act livers' Company {Limited), portion of the combination has been M. E., 14th March, 1874, B. 776. s2 2G0 FORMS. 3. The plaintiff was not tho first and true inventor. 4. Tho invention was not useful. 5. [^Tlie denial of any other matter of fact affcctuuj the validity of the patent.^ G. Tho patent was not assigned to the plaintiff. Particulars of objections are delivered herewith. Signed. Delivered tho day of , 18 — . First inven- tor. Subject- matter. UtUity. Iniraffirjoncy of hpc-'-ilica- tion. Norelty. Prior publioji- tion in nixxri- HcatiuQ. Prior puhlirn- t4uo iu buok. lrior to tho date of tho said letters patent, publi.sheil in a book, which on tho day of , was in tiio British Musetmi Library and open Prior ujwr. ff»r jfublic inHpecfion ; the title of the said book was -, anil tho pag«-.s of the bairl book parlituhirly referred to are numbered and . H. That tho alleged invention wim iisr-d jtrior to \\u> date of tho said letters patent in tho following manner, that is to say, Ity , at , on tho day of . FORMS. 261 9. That a material part of the alleged invention, namely, that Part old. part which refers to , was not new at the date of the said letters patent, having been used by , at , on the day of . 10. That the plaintiff does not sufRciently distinguish and Combination point out in his specification which of the matters and things ^°!^ ^^a"^' therein mentioned he claims to have invented, and which he ° does not claim to have invented, or admits to be old. 11. The defendant will also rely, as examples of prior publication, upon the following specifications, filed with the Commissioners of Patents, and will object that the specification of the plaintiff's patent claims some of the matters thereby patented or specified, that is to say \_euumerate specifications^. Yoiu"s, &c., L. Defendant's Solicitor or Agent. To Mr. A. B., Plaintifi's Solicitor. 17. Order for Delivery of further Particulars of Objections. Let the order dated 6th July, 1876, whereby it was ordered that the defendants should on or before the 20th July, 1876, deliver to the plaintiffs further and better particulars of objections, stating therein the names and addresses of the persons by whom, and the places where, and the dates at, and the manner in which the process of, &c., was known and publicly practised in England before the 8th March, 1864 [_dafe of letters patent^, and that in default thereof the words from, and after the words " in a dry state," in the 6th paragraph of the statement of defence, which had been delivered in this action, to the end of the said 6th para- graph, should be struck out ; and in that case no evidence should be given by the defendants on the trial of this action of such prior publication, and that defendants should pay to the plaintiffs their costs of the application, to be taxed, &c., be varied, and as varied be as follows : — Let the defendants on or before the dehver to the plaintiffs further and better particulars of objec- tions under the paragraph of the statement of defence on which they mean to rely at the trial, stating therein the place or places at or in which, and in what manner, the process of printing upon tin or metal surfaces by direct imjiression by means of damp stones is alleged to have been used or published prior to the day of , 1864 [n). (n) Flower \. Lloyd {Q. A.), 2n(l Yuryiui? order of Y.-C. B., 6tli July. August, 1876, A. 1523; 25 W. E. 17. 187(3, A. 1252. 262 FORMS. is. Interrogatories. Interrogatories may be delivered in the common form, subjeot to th<» Ivulcs of 1883, by cither i>arty, notwithstandinp^ tlio deli- very of particulars. Kiiquiry may be made by the plaiutilf as to the names and addresses of the persons by whom prior user is alleged to have been made as well as the places where the prior user has taken place (o). First inventor. Suffiricnry of flpccififuitioii. 10. Ordkr for Reference under Sect. 57 of the Judicature Act, 1873. l^Formalparfs.'] Upon hearing counsel for the plaintiff, and for the defendant [or This cause coming on for trial]. It is ordered that the fol- lowing questions N'oveltv. 1- As to whether the invention, the subject of his letters patent of the day of , was or was not, at the date of the said letters ])atent, new as to the public use and exercise thereof within this realm ; ?, "Whether the plaintiff was the true and first inventor of the said invention ; }. AVliether the specification of tlie said letters patent in the pleadings mentioned docs or does not particularly de- Bcribo the nature of the said invention, and in what manner the same is to bo j)erformed ])ursuant to tho proviso in that behalf contained in tho said letters patent ; Infringement. .J "Whether the defendant ha.'^, or has not, infringed the said letters patent, in or by any <»r either, ami whidi of tho apparatus mainifactund by him, as in his statement of defence delivered in this aeticm mentioned, or in any other manner ; •"». Whether the unortion.s of tlie saiil alleged invention were u.sed in the ruiti-d ICingdnin at the date of tho said letters patent ; ]>o referred, to bo tried before on(> <»f the ollicial referees [or a Ki)ecial referee], who sliall have all tlu' pf>wei*s as (o c<-rtifying and amending of a judge at nisi prius, and PJmll make his rejiort of and concerning tho matters ordered to bo tried as aforesai*!, piirsuant to the statute; and it is further ordered that the Haid referee shall be at li])erty, if ho shall think fit, to examine the .said parti«'H to this action, and their re.sjieetivn witnesses upon oath or Jifhrmation, and that i\u> said ])articsdo and shall produce before the saiil n-fen-e all bodks, deeds, jiapers, and writings in tlieir or eitluT of their custody or jK.wer re- lating to tho matters ordered to bo tried as aforesaid. And it is (o) Birch V. Afathrr. '22 ('h. D. 020. Diaclaimcr. FORMS. 263 further ordered, that neither the plaintiff nor the defendant shall bring or prosecute any action against the said referee, or against each other of and concerning the matters ordered to be tried as aforesaid. And that if either party shall by affected delay, or otherwise, wilfully prevent the said referee from making his report, he or they shall pay such costs to the other as the said Court, or any judge thereof, shall think reasonable and just. And it is further ordered, that in the event of the said referee declining to act, or dying before he shall have made his report, the said parties may, or if they cannot agree, one of the judges of the said High Court may, upon application of either side, appoint a new referee. 20. Order for Trial of a Eepresentative Case, for the PURPOSE OF determining THE QUESTION OF YaLIDITY. And the plaintiff, F., by his counsel, undertaking to be bound Undertaking by the result of the trial hereinafter directed, and the said above- *° ^*^ bound, mentioned defendants, by their respective counsel, admitting that the letters patent in the pleadings mentioned are duly vested in the plaintiff, and consenting to be bound by the result of the trial hereinafter directed, and that the said trial shall be con- ducted by B., Gr., B. and W., fom- of the above-named defend- ants, on behalf of and as rejoresenting all the defendants in the said suit ; let, by consent of all the said several defendants in the above-mentioned suits, the said defendants, B., C, B. and W., be the defendants in the said trial, and let the said defendants, B., Gr., B. and W., on or before the day of , pur- suant to the statute, deliver to the plaintiff their objections to Delivery of the validity of the said patents ; and let, by the consent of the objections. plaintiff and the said defendants, the following question be tried before his lordship without a jury, that is to say, whether the patent in the pleadings mentioned, dated, &c,, is a valid patent; and the plaintiff is to proceed to such trial on such day, &c. Adjourn the consideration of the costs on the several applications to the judge and to his lordship until after the said trial ; and let all further proceedings in the above-mentioned causes be stayed until after the said trial, and any of the defendants in any suits commenced by the plaintiff with respect to infringement of the said patent are to be at liberty to apply to be made parties to Liberty to this order (;)). apply- (p) Foxwell V. Bradhury, etc., 80 other titles, L. C, Ttli December, 18G3, A. 2391; 4 D. J. S. 77. 264 FORMS. 21. Final Judgmknt — Hf.citai, of EvinENCE — Injinction — I.NQl IKY AS TO 1)aMA(;KS — OkDKK FOR Df.STKICTIOX — CoSTS AS BETWEEN SOLICITOR AND CuiNT — LlliKKTY TO AlMM.Y. Tlie follotring Order mis settled by tlic late Masfcr o/f/ie iio/A", Sir George Jesse/, persona////, in the msr of riiin}>ion v. Sj)i//rr, reported L. R., 6 Ch. 1). 412. In tbo High Court of Jufitice. 1876. V. 09. Chancery Division. Thursday the I'Jth day of April, 1877. Master of the Rolls. Mr. Clowes, Reg. Between J. L. 1'. I'laintilF, and A. F. S., and T. C. - - - Defendants. This action, coming on for trial iIk- 11th and 12th da3's of April, 1H77, and tliis day before thi.s Court, in the presence of ooun.sel for the plaintiff and the dofendants, upon hearing an ordor, dated \\w Ith August, 1S7(), an nlliilavit of A. F. S., Eridcncc. fil,.,l the l."»th March, 1S7(;; an allidavit of .1. I., filed tho Kith I'V-hniary, 1>'77, tho hill, answers, orders, record for trial, and Certificate. tho certificate of tho blaster of tho Rolls, tho judge before whom the questions of fact were tried, that tho validity of tho letters ])atent of the 'Joth day of August, ISfiO, granted to A. V. N., and ininihcred 21fM), hereinafter nicntionctl, came in question in the cause of 1*. r. M., iS7'>, V. 'JH, and upon hear- ing tho said letters patent, and a cerlifi(;d ])rinted cojty of tho specifications and drawings, filed under tho said lett(>rs patent, and tho indenture of a.s.signment, dated tlio 10th day of January, 1MG(;, and made between tlio said A. Y. N., therein described, of the one part, and tlie plaintilV, .1. L. P., of th(> other j)art, and registered in the (ireat Seal Patent Office on th(» day of th«! date thereof, the ]»rinted shorthand n(tte of tho evidenco taken orally fjefore this (.'ourt, on tho trial of the sai"J.'J, of .Jewitt'.s I'ook of IlluHtratinns to tln' Peport of tho Amerieaii Cominis^ionerH of Patent, and the " tScientifio American " for tho years U^O.i and 1800 ; tho records from tho FORMS. 265 Com-t of Bankruptcy of an assignment, dated the 11th August, 1865, by W. S. M., for the benefit of his creditors, and of a composition deed by the said AV. S. M., in the year 1809, and what was alleged by counsel on both sides, and this Court being of opinion that the plaintiff has proved the breaches complained Proof of of, in the particulars of breaches delivered by him in this action, breaches. doth order that an injunction be awarded to restrain the Injunction. defendants, their servants, agents, and workmen during the continuance of the letters patent, granted to A. V. N., dated the 25th day of August, 1865, and numbered 2190, and any extension of the term thereof, from using, or exercising, or causing or permitting to be used or exercised, the invention described in the hereinbefore mentioned specification and draw- ings, filed under the said letters patent, and from selling, letting for hire, or making any profitable use, or permitting the sale, letting for hire, or profitable use of any roller or runner skates not made by the plaintiff, or his licensees, and having applied thereto rollers or runners in manner described, and for the purposes mentioned in the said specification, or fitted with any apparatus for causing the skate to run in curved line, in the manner described in the said specification and drawings, or differing therefrom only coloui'ably, and by the substitution of mere mechanical equivalents, and it is ordered that it be referred Mechanical to the official referee in rotation, to inquire what sum of money equivalents, is fit to be awarded to the plaintiff, to be paid by the defendants Enquiry as to in respect of any damage sustained by the plaintiff up to the damages, day of the date of this order, from the manufacture, sale, or letting for hire, of skates, being the same as the " Spiller " Skates, and " Wilson " Skates, in the pleadings in this action, and in the said order dated the 4th August, 1876, mentioned, or of any other skates made in infringement of the said letters patent, or otherwise from the sale, or use by the defendants of the said invention, or any apparatus in imitation of, or being only a colourable deviation from the said invention. And it is ordered, that the defendants, A. F. S. and T. C, do pay to the Payment of plaintiff, J. L. P., such sum of money as upon such inquiry amount, shall be found fit, to be awarded to the plaintiff for such com- pensation as aforesaid, within twenty-one days after service of the official referee's report of the result of the said inquir3\ And it is ordered, that the defendants, A. F. S. and T. C, do deliver up on oath to the plaintiff, or break up, or otherwise Destruction, render unfit for use, all roller skates, or parts of roller skates so manufactured, or let for hire by, or by the order, or for the use of the defendants in infringements of the said letters patent as aforesaid, which are in the possession, custody, or power of the defendants, or either of them, or their, or either of their, servants or agents. And it is ordered, that the said defendants, A. F. S. and T. C, do pay to the plaintiff, J. L. P., his full Full costs, costs, to be taxed by the taxing master as between solicitor and f66 FOKMS. client, including all costs, charges, and expenses. And any of Liberty to the parties are to be at liberty to apply, a^ they may bo »PPb- advised. W. C. Entered. G. L. Registrar's Office, Entering Lib. B. Seal. Injunction. Account of {irolltji. I)o«itmction. Ordinary ooaU. 22. Judgment for Perpetual Injunction, under the Patent Law Amkndment Act, 1S52, restraining Infringement OF Patented Skates aiter Trial without Jury, with AC(;ouNT OF Sales and Profits, Discovery, Delivery up, OR Destruciton. Let an injunction be awarded to restrain the defendant, his serv'ants, &c., during the continuance of the said letters patent granted to N., dated &c., from using or exercising, or causing, or permitting to be used and exorcised the invontion described in the hereinbcforo-mciitioned specification and drawings of the said N., and from s<'lling, letting for hire, or making any prolitable use, or permitting the sale, lotting for hire, or jtrofitablo use, of any roller or runnor skates not made by the plaintiff or his liceiLsees, and liaving applied thereto rollers or runnore in manner described and for tlio jturiioscs mentioned in the said specifica- tion, or fitted with any aj»paratus for causing the skato to run in a curved lino in tho manner describod in the said spociflcatiou and drawings, or difforing therefrom only colourably and by the substitution of mere mechanical equivalents; and let an account be taken of all roller .skates being tho same as the skates sold by the defendant to (r., as in tho jileadings mentioned, or otherwise made in infringement of tho said letters jtatont, whioh have ])een manufactured, or soUl, or let for hire, l»y or by tlio onler, or for tlio use or profit of tho dof(»ndant, and also of tho gains and ])rofit8 made by tho defendant l)y reason of such manufaeture, sale, or lotting for hire ; and let tho dofondant within [seven] days after tho s<'rvic(»ujion him of tho chief clerk's certificato of tin- result of such account jtay to tho plaintiff tho amount of sueh gains and jirofifs, and lot tho (h-fi-nilant forthwith uimju oatli deliver to tho jilaintilf, or break up, or otherwise render unfit for use, all roller skat<'8 or parts of the rollr-r skates m manufactured or lot for biro, b}' or by the order or for tho ujm? of tho dofendanfH in infringement (tf tho said letters Jtatont as aforesaid, whioh an* in the pttssession, custody, or power of the defrndant or his servants or agents. Defendant toimy to plaintiff costs of suit (y). (7) Plimpton V. MaUolmaon, M. H., 2Nth Junuar}', 1N70. li. 381. FORMS. 267 23. Judgment for Perpetual Injunction under the Patent Law Amendment Act, 1852, restraining Infringement AS TO Patented Articles (Pulleys) after refusal of Motion for New Trial and for Delivery up of the Articles made by Defendant to be Specified by Affidavit. Let an injimction be awarded to restrain the defendant, S., Injunction. during the continuance of the letters patent, and any extension of the term thereof, from using or exercising, &c., and from in any manner infringing the rights and privileges granted by the said letters patent ; defendant within seven days to specify by affidavit what apparatus constructed or arranged according to the said invention and improvements, or only colourably dilt'er- ing from those described in the said specification and di-awing, have been manufactured by or by the order or for the use of the said defendant as in the writ mentioned, and are in the posses- sion, custody or power of the said defendant or his servants or agents ; defendant within [seven] days after filing such afiidavit Deliveiy up to deliver up to the plaintiffs all such pulleys or apparatus (r) . °^ articles. 24. Judgment for Perpetual Injunction under the Patent Law Amendment Act, 1852, restraining Infringement OF Patent for Machinery after Trial of Issues by a Jury — Discovery — Account of Profits — Certificate for full Costs. And the parties having, on the days of , pro- ceeded to a trial of the questions of fact directed to be tried by the order dated, &c., before this court by a jury, when the jury found that \_Jin(Ungsfo)' the pJaintiff upon all the i^aucs]. And upon Finclin"-s of reading the letters patent, dated, &c., and the complete specitica- jury, tion, dated, &c., in the writ respectively mentioned, an afiidavit of the plaintiff's, &c. [enter eridence~\, this court doth order [ancf] Evidence, decree [and adjudge^ that an injunction be awarded to restrain the defendant, O.^his agents, servants, &c., during the subsist- Injunction. ence \j'onti)mancer\ of the plaintiff's letters patent in the writ mentioned, or any extension thereof, from manufacturing, or selling, or disposing of, or using any machine of the same con- struction as that supplied to him by the W. B. Co., in the said writ mentioned, or only colourably differing therefrom, or being an infringement of the plaintiff's said patent, and from in any way infringing the plaintiff's said patent ; and it is ordered that the defendant, 0., do, within [nevoi'] days after service of this decree, make and file an affidavit stating what machines of the same construction as that supplied by him to the said W. B. Co., including such machines, are in his possession or power ; and the ^^^^^ *o "i- plaintiffs are to be at Liberty to inspect and mark the same for mark. (;•) Tangye v. Scott, V.-C. W., 12tli February, 186G, 13. IGl. 268 FOKMS. Aoooont. tjje purpose of identification. And it is ordered that an account be taken of the profits made by the defendant by making, iisinp, polling, or disposing of the machines supplied by him to the said. "\V. 13. Co., or any other machine of the same construction there- with, or otherwise by an infringement <>f the ]ilaintiil"s patent. Coeta. And it is «)rdered that th<' dfftMidant, ()., do, 'witliin one month after the date of tlie chief clerk's certificate, pay mito the plain- tin's, N. and C, what shall bo certified to be the amount of such profits. l)irection for certificate that the validity of the plain- tiff's ]iatt'nt eann' in (j»i«>stion. And it is ordc^red that tho defendant, ()., pay to thf plaintifYs their costs of this cau.se up to and including this hearing, an, and that tho particulars numbered (J and 7, wcn», under the ciretimstances of tho case, ren^onablo and proper. [Fortn ofjtidfjtnrtitfor defmdant as al)ore.^ It 18 ofrtifie«l tliat tho defendant has proved to tlio satisfaction of the Coiirt the olijeefjons mentione(l in tlie ]>articular8 of objections delivered by him, and numbered respectively 1, 'J, .'J, 4 and *», and that tlin objections numbered (» and 7 were, under the circunistanecH, roa^onablo and proper. (•) Sftdham y. Orlnj, V.-f. W..2lth June. 1S(53. 15. \'Mo. APPENDIX. PATENTS, DESIGNS and TRADE MARKS ACT, 1883. 46 & 47 Vict. c. 57. An Act to amend and consolidate the Law relating to Patents for Inventions, Registration of Designs, and of Trade Marks. [25th August, 1883.] Be it exacted by tlie Queen's most excellent Majesty, by and with the advice and consent of the lords spiritual and temporal, and commons, in this present Parliament assembled, and by the authority of the same, as follows : PAET I. — Preliminary, 1. This act may be cited as the Patents, Designs, and Trade Marks Short title. Act, 1883. 2. This act is divided into parts, as follows : — Division of act Part I.— PreHminary. i"to parts. Part II. — Patents. Part III. — Designs. Part IV.— Trade Marks. Part V. — Greneral. 3. This act, except where it is otherwise expressed, shall commence Commence- from and immediately after the 31st day of December, 1883. m^iit of act. PAET II.— Patents. Application for a)id Grant of Patent. 4. (1) Any person, whether a British subject or not, may make an Persons en - application for a patent, [page 5] titled to apply (2) Two or more persons may make a joint application for a patent, ^°^ patent, and a patent may be granted to them jointly. [f^«<7e 5] ^.°"^* applica- 5. (1) An application for a patent must be made in the form set forth AiipUcation in the tirst schedule to this act, or in such other form as may be from "."^i specifica- time to time pi'escribed ; and must be left at, or sent by post to, the ''"■ patent office in the prescribed manner. \_ pages 5. 12, 52'] {2) An appHcation must contain a declaration to the effect that the Declaration, applicant is in possession of an invention, whereof he, or in the case of a joint application, one or more of the applicants, claims or claim to be 270 APPENDIX. Provisional specification. Complete specificatioii. Xecessary con- tents of speci- fication. Reference of application to examiner. Power for comptroller to refuse applira- tion or require amendment. Appeal from comptroller. Law officer may make order. Notice to he piven to appli- cant. Where suhsc- fjuent a]i)i]ica- tion hcforf! finrt Beale and be accompanied by drawings, if required. \^pa(/es 52, 59] (4) A complete specification, vrhether left on application or subse- quently, must particularly describe and ascertain the nature of the inven- tion, and in -wliat manner it is to be performed, and must be accompanied by drawings, if required, [pages 53, 61^. ct seq.'\ (Jt) A specification, whether provisional or complete, must commence with the title, and in the case of a complete specification must end with a distinct statemi^nt of the invention claimed. \_j)ages 53, 83'\ 6. The comptroller shall refer every application to an examiner, who shall ascertain and report to the comptroller whether the nature of the invention has been fairly described, and the application, specification, and flrawings (if any) have been prepared in the prescribed manner, and the title suflicientlv indicates the subject matter of the invention, [pages 53, 59'\ 7. (1) If the examiner reports that the nature of the invention is not fairlj' described, or that the application, specification, or drawings has not or have not been jirepared in tlie prescribed manner, or that the title does not sufFicicntly indicate the subject matter of tlie invention, the comp- troller may require that the application, specification, or drawings be amended before he proceeds Avith tlie application, [pages 53, U()~\ (2) "WHiere the comptroller requires an amencbnent, the applicant ma}' appeal from his decision to the law ofiicer. (3) Th(? law ofiicer shall, if required, hear the applicant and the comp- troller, and may make an order determining whether and subject to what conditions, if any, the ai)plication shall bo accepted. (1) The comptroller sliall, wlien an application has been accepted, give notice thereof to the a])plicant. (o) If after an a]iiili, it sliall be the duly of the examiner to report to the cdmjttroller whether llie specification ajipears to him to comprise the same invention ; and, il" he reimrts in the affirmative, the conii>troller shall j^ive notice to the apjiliiaiits that he has so rei>orted. ffj) AVhere the examiner rej»orts in the allinuative. the conqjlroller may determine, subject to an ajijieal to the law ofiicer, wliether tlio invention conijiriKcd in botli applications is the same, and if so he may refuse to seal u patent on the application of the second applicant. 8. (1) If tlie applicant does not leave a conipleto specification with his ajtjilication, ho may leave it at any 8ubse(|uent time within nine months frc^m tin- dale oi" apjilication. [pages 53, 59] ('2) I'nless a «oiiipletr« sjM'cIfinif ion is lej't within that time the a[t[ilica- ' tion shall bo deemed to bo abandoned. 9. (1) Whero a comjileto spocification is loft after a provisional spocifi- catioii, the coni]»trol|er sliall refr-r lioth s]»ecilieations to an exiuniner for the purpose" of ascertaining wlu'tluT the conqilete s|»ecifieation has been jirepared in the prescribed manner, and ^vh( tier the invention particularly PATENTS, DESIGNS, AND TRADE MAEKS ACT, 1883. 271 described in the complete specification is substantially the same as that which is described in the provisional specification. \_2)ages 90, 931 (2) If the examiner reports that the conditions hereinbefore contained Power of have not been complied with, the comptroller may refuse to accept the jg^^'e'^^tU complete sjiecification imless and until the same shall have been amended amended. to his satisfaction ; but any such refusal shall be subject to appeal to the law officer. [^Jw^e 5 J] (3) The law officer shall, if required, hear the applicant and the comp- Power of law troller, and may make an order determining' whether and subject to what officer, conditions, if any, the complete specification shall be accepted, [^jjages 53, 901 (4) Unless a complete specification is accepted within twelve months When speci- from the date of application, then (save in the case of an appeal having fication void, been lodged against the refusal to accept) the application shall, at the expiration of those twelve months, become void. (5) Eeports of examiners shall not in any case be published or be open Reports of to i^ublic inspection, and shall not be liable to production or inspection exammers to in any legal proceeding, other than an appeal to the law officer under -^ this act, unless the court or officer having power to order discovery in such legal proceeding shall certify that such production or inspection is desirable in the interests of justice, and ought to be allowed. 10. On the acceptance of the complete specification the comptroller Advertisement shall advertise the acceptance ; and the application and specification or °^ acceptance specifications with the di-awings (if any) shall be open to public in- spedfication. spection. [_ pages 5 If, ,99] 11. (1) Any person may at any time within two months from the date Opposition to of the advertisement of the acceptance of a complete specification give ^^p*^°* notice at the j^atent office of opposition to the grant of the patent on the patent. Time and ground of the applicant having obtained the invention from him, or from o-rounds for a person of whom he is the legal representative, or on the ground that the invention has been patented in this coiintry on an application of prior date, or on the ground of an examiner having reported to the comptroller that the specification appears to him to comprise the same invention as is comprised in a specification bearing the same or a similar title and accom- panying a 2:)revious application, but on no other ground. \_2)(ige 99^ (2) Where such notice is given the comptroller shall give notice of the After notice opposition to the applicant, and shall, on the expiration of those two comptroller to months, after hearing the applicant and the person so giving notice, if desirous of being heard, decide on the case, but subject to appeal to the law officer. (3) The law officer shall, if required, hear the applicant and any Or on appeal, person so giving notice and being, in the opinion of the law officer, ^^^ officer, entitled to be heard in opposition to the grant, and shall determine whether the grant ought or ought not to be made. (4) The law officer may, if he thinks fit, obtain the assistance of an Who may ob- expert, who shall be paid such remuneration as the law officer, with the ^^^"^ expert's consent of the treasury, shall appoint. 12. (1) If there is no opposition, or, in case of opposition, if the deter- Sealing of mination is in favour of the grant of a patent, the comptroller shall cause patent. a patent to be sealed with the seal of the patent office. [_pagcs 101, 102~\ When sealed. 070 Great soal abolished for patents. Time for seal- ing. Exceptions to limit. (a) For legal proceedings. (1>) When ap- phcaut dead. Date of patent. .VPPENDIX. (2) A patent so scaled shall liave tlio same effect as if it wore sealed with the groat seal of tlio united kingdom. \^])(iye 225~\ (3) A patent sliall 1)0 sealed as soon as may be, and not after the ex- piration of lifteon months from the date of application, except in the cases hereinafter mentioned, that is to say — (a) "Wliere the sealing is delayed by an appeal to the law officer, or by opposition to the grant of the patent, the patent may bo sealed at such time as the law oliicer may direct. (b) If the person making the application dies before the expiration of the fifteen montlis aforesaid, the patent maybe granted to his legal representative and sealed at any time within twelve months after the death of the appHcant. 13. l^'ory patent shall be dated and sealed as of the day of the applica- tion : provided that no proceedings shall be taken in respect of an in- fringement committed before the publication of the complete speciffcation : pro^'ided also, that in case of more than one application for a patent for the same invention, the sealing of a patent on one of those applications shall not prevent the sealing of a patent on an earlier application. Provisional protection. Provisional Protection. 14. Wliere an application for a patent in respect of an invention has been accepted, tlie invention may during the period between the date of tin* application and tlie date of sealing such patent bo used and i)ub- lished without prejutlico to the patent to be granted for the same ; and such pr(jtection from the consequences of use and publication is in this act referred to as provisional protection, [pof/e 17] Effect of acceptance of complit*; i!lK;cjfication. Protection hy Complete Specification. 15. After the acceptance of a complete specification and until the date of sealing a ])atent in res])ect thereof, or the expiration of the time for sealing, tlie applicant shall have tlie like privileg(>s and riglits as if a ])atent for the invention had been sealed on the date of the acceiitance of the complete spc«ilication : provided tliat an ajijilicant sliall not be entitled to institute any proceecling for infringement unless and until a patent for the invintion has been granted to him. [^payvs 6' J ct A'y-] Extent of ))atent. Term of {uttont. VfnMM on failure of pay- mcnUi. Exrfrplion hjr appliratiou to comptroller. Extmmon of time for PatciU. 16. Kvery patent when sealed shall have effect throughout tln^ united kingdom and the Isle of Man. [pai/cs JOJ rt at!' tin- alMive-nientiuned causes, on receipt nl' the PATENTS, DESIGNS, AND TRADE MARKS ACT, 1883. 273 prescribed fee for enlargement, not exceeding ten x^ounds, enlarge the ^g'^/^^g^^*"^^"^ time accordingly, subject to the following conditions : (a) The time for making any pajmient shall not in any case be enlarged (a) Period of for more than three months. _ _ extension. (b) If any proceeding shall be taken in respect of an infringement of (b) Damages the patent committed after a failure to make any payment within ^g^^^^ ^fg" the prescribed time, and before the enlargement thereof, the interval, court before which the proceeding is proposed to be taken may, if it shall think fit, refuse to award or give any damages in respect of such infringement. Amendment of Sjiecijicatlon. 18.— (1) An applicant or a patentee may, from time to time, by request Amendment of in writing left at the patent office, seek leave to amend his specification, specification, including drawings forming part thereof, by way of disclaimer, correc- tion, or explanation, stating the nature of such amendment and his reasons for the same. \_ pages SIj.., 92, 03, 101~\ (2) The request and the nature of such proposed amendment shall be Advertisement advertised in the prescribed manner, and at any time within one month °^^f ^o^c^of from its first advertisement any person may give notice at the patent opposition to office of opposition to the amendment. ^^ given. (3) Where such notice is given the comptroller shall give notice of the W^^^^'^ notice opposition to the person making the request, and shall hear and decide froller'^d^Fdes. the case subject to an appeal to the law officer. (4) The law officer shall, if required, hear the person making- the ^P^^f ^'^^^'^ request and the person so giving notice, and being in the opinion of the law officer entitled to be heard in opposition to the request, and shall determine whether and subject to what conditions, if any, the amendment ought to be allowed. (5) Where no notice of opposition is given, or the person so giving Where no notice does not appear, the comptroller shall determine whether and ^'roller deteT- subject to what conditions, if any, the amendment ought to be allowed. mines condi- (6) When leave to amend is refused by the comptroller, the person tions of ^ making the request may appeal from his decision to the law officer. (7) The law officer shall, if required, hear the person making the ^^P^f *° ^'''^ reqviest and the comptroller, and may make an order determining whether, and subject to what conditions, if any, the amendment ought to be allowed. ,. , . -n ■ Noamend- (8) No amendment shall be allowed that would make the specification, ment allowed as amended, claim an invention substantially larger than or substantially so as to enlarge different from the invention claimed by the specification as it stood before °gj.Llly ^eci- amendment. fication. (9) Leave to amend shall be conclusive as to the right of the party to Leave conclu- make the amendment allowed, except in case of fraud ; and the amend- sive except m ment shall in all courts and for all purposes be deemed to form part of the amendment ' specification. forms part of (10) The foregoing provisions of this section do not apply when and so specification. long as any action for infringement or other legal proceeding in relation to a patent is pending. \_pa(je 97'] 19.— (1) In an action for infringement of a patent, and in a proceeding ^°J)'^ p*°t*^f' for revocation of a patent, the court or a judge may at any time order that invention the patentee shall, subject to such terms as to costs and otherwise as the during action, T. T '^'''" •j:4 APPENDIX. Restriction on recovery of damages. Advertisement of amendment. Power for board of trade to order grant of licenses. court or a judge may impo-so, be at liberty to apply at the patent office for leave to iimeiul Lis specification by -way of disclaimer, and may direct that in the meantime the trial or hearing of the action shall be postjjoned. 20. "Where an amendment by way of disclaimer, correction, or explana- tion, has been allowed under this act, no damages shall be given in any action in respect of the use of the invention before the disclaimer, correc- tion or explanation, unless tlio patentee establishes to the satisfaction of the court, that his original claim was framed in good faith and with reasonable skill and knowledge, [pages 9^, 98^ 21. Every amendment of a specification sliall be advertised in the prescribed manner. Compuhonj Licenses. 22. If on the petition of any person interested it is proved to the board of trade that by reason of the default of a patentee to gi-ant licenses on reasunalde terms — [p^fO^ US'] (a) The patent is not being worked in tlio imited kingdom ; or (b) The reasonable requirements of the public with respect to the inventicjn cannot be supplied; or (c) Any person is prevented from working or using to the best advan- tage an invention of which he is possessed, tlio board may order the patentee to grant licenses on such teiins as to the amount of royalties, security for payment, or otherwise, as the board, having regard to the nature of tins iuvi-ntiou and the circumstances of tho case, may deem just, and any such oidcr may be enforced by mandamus. Keijiiftcr of patents. Wherp to be kept and coutcnta. Is evidence. Copies for filing. Fct« payable. Power lo reduco fern. Ilcfjistcr of Patoits. 23.— (1) There shall be kept at the patent office a book called tho Eegister of I'atents, Avherein shall be entered the names and addresses of grantees of patents, notifications of assignments and of transmissions of j)atentH, of licenses under patents, and of amendments, extensions, and revocations «>f patents, and such other nuitlers affecting the validity or ])roj)rietorship of patents as may from time to time be prescribed, [piiycs (2) Tne register of patents shall bn prima facie evidence of any matters liy this act directed c bound by par- ticulars. Amendment of particulars. Patentee thouph defen- dant hasprivi- lepes of j)laiu- tiff at trial. \NTiere patent revokeil for fraud, first true inventor may obtain patent. ho elainis an interest in any trade, business, or manufacture, Lad publiclj' manufactured, used, or sold, within this realm, before the date of the patent, anything' claimed by the patentee as his invention. (5) The plaintiff must deliver witli his petition particulars of the objec- tions on which he means to rely, and no evidence shall, except by leave of the court or a judge, be admitted in proof of any objection of which particulars are not so delivered. \_p(i(/e ^.^0'] (()) Particulars delivered may be from time to time amended by leave of the court or a judge. \_p(iyc ^^4'"] (7) The defendant shall bo entitled to begin, and give evidence in .support of the patent, and if the plaintiff gives evidence iuipeaching the validitv of the patent, the defendant shall be entitled to reply, [^jtagcs (8) Where a patent has been revolted on the ground of fraud, the comptroller may, on the application of the true inventor, made in accord- ance with the provisions of this act, gi'ant to him a patent in lieu of and bearing the same date as the date of revocation of the patent so revoked, but the patent so granted shall cease on the expiration of the term for which the revoked patent was granted. Patent to bind crown. Exception.s. C'roirn. 27. — (1) A patent shall have to all intents the like effect as against liir majesty the fjueen, her heirs and successors, as it has against a subject. \_pa(jes 111, 15'J'\ (li) But the ofRcers or authorities administering any department of the service of the crown may, by themselves, tlieir agents, contractors, or others, at any time after the application, use the invention for the services of the crown on terms to bo before or after the use thereof agreed on, with the approval oi the treasury, between those ofTicers or authorities and the patentee, or, in default of such agreement, on such terms as uuxy be settled by the treasury after hearing all parties interested. Hcarinf; witli iutMauftr. IJy court. Court of appeal or pri^p-y council may nit with UMwuaom. AjisoHom' fccfl. DcliTcrv of j'nrtirulam of brcocbca ; Lcyal Proceedhujs. 28. — (1; In an action or procetfding fur infringement or revocation of a jiiitcnt, the; court nuiy, if it thinks fit, and shall, on tlio re(pu'.st of eitlier of the j)arties to the ])r(jceeding, cull in the aid of an asst'ssor specially qualified, and try and liear the (uho wholly or partially with liis assist- unco ; the action Khali Ijo tried without a jury unless the court shall other- wiH*' direct. \^j)aijeH ^^1, ^.'^7, -JVJ (2) Tlio court of ajiiieul or the judicial conuuitteo of the privy council may, if they see fit, in any proceeding before them respectively, call in the aid of an asKOHKor as aforesaid. (.'Jj Tlie n.-muneration, if any, to be paid to an assessor under this sec- tion hIuiU 1»o determined by tlie court or the court of ajtpeal or judicial fomniittee, nH thn caHf* nuiy be, aiul bo paid in the same manner as tho other cxpenHCH of tho execution of this act. 29. — '1) In an notion for infringement of a patent the plaintiff must deliv«'r with liis Htut«'ment of claim, or l»y order of the eourt or the judge, at anvH«ib»e(jueiit time, particulars of the breaches comi)lained of. \j)a(jes lU.'^, kj2, 21^8, 250] PATENTS, DESIGNS, AND TEADE MAEKS ACT, 1883. 277 (2) The defendant must deliver, with, his statement of defence, or, by of objections, order of the court or a judge, at any subsequent time, particulars of any objections on which he relies in support thereof, \_pcige 201 et seq.'] (3) If the defendant disputes the vahdity of the patent, the particidars Grounds must delivered by him must state on -what grounds he disputes it, and if one of ^ s a e . those grounds is want of novelty, must state the time and place of the previous pubHcation or user alleged by him. \_page 260~\ (4) At the hearing no evidence shall, except by leave of the court or a Evidence must judge, be admitted in proof of any alleged infringement or objection of p°rtfc°ulaS?^'^ which particulars are not so delivered, \_pfige 19^^ (5) Particidars delivered may be, from time to time, amended, by leave Amendment, of the court or a judge, {^jjcige 19If\ (6) On taxation of costs, regard shall be had to the particulars de- Costs. livered by the plaintiff and by the defendant ; and they respectively shall not be allowed any costs in respect of any particular deUvered by them, unless the same is certified by the coiu't or a judge to have been proven, or to have been reasonable and proper, without regard to the general costs of the ease, \_pages 2Ij.l, 20, 2Jf8^ 30. In an action for infringement of a patent, the coiu-t or a judge Order for iu- may, on the apphcation of either i)arty, make such order for an injunc- ^*!^(;tiou. ^'' tion, inspection, or account, and impose such terms, and give such direc- tions respecting the same and the proceedings thereon as the coiu't or a judge may see fit. '[2^age 216~\ 31. In an action for infringement of a patent, the court or a judge may Certificate that certify that the validity of the patent came in question ; and if the court or validity ques- a judge so certifies, then in any subsequent action for infi-ingement, the plaintiff in that action, on obtaining a final order or judgment in his f avoiu', shall have his full costs, charges, and expenses as between solicitor and client, unless the court or judge trjdng the action certifies that he ought not to have the same, \_pages 239, 21^1, 2I^.6~\ 32. Where any person claiming to be the patentee of an invention, by Eemedyincase crrcidars, advertisements, or otherwise, threatens any other joerson with ?^ ,^^?^H^^^ , any legal proceedings or liabiHty in respect of any alleged manufacture, proceedings?" use, sale, or purchase of the invention, any person or persons aggrieved thereby may bring an action against him, and may obtain an injimction against the continuance of such threats, and vaaj recover such damage (if any) as may have been sustained thereby, if the alleged manufactui-e, use, sale, or piu'chase to which the threats related was not, in fact, an infringement of any legal rights of the person making such threats : Pro- vided that this section shall not apply if the person making such threats with due dihgence commences and prosecutes an action for infringement of his patent. \_ii(ige 21^9'] Miscellaneous. 33. Every patent may be in the form in the first schedule to this act. Patent for one and shall be granted for one invention only, but may contain more than m^entiononly. one claim ; but it shall not be competent for any person in an action or other proceeding, to take any objection to a patent on the ground that it comprises more than one invention. \^page lli2'\ 278 AITKNDIX. Patent on up- plicatiou of representative of deceased inventor. Time and con- tents of appli- cation. 34. — (1) If a person possessed of au invention dies 'svitliout making ap- plication for a patent for the invention, application may be made by, and a patent for the invention granted to, his legal rejiresentativo. \^pages 8, (2) Every such application must be made within six months of the decease of such person, and must contain a declaration by the legal repre- sentative that ho believes such person to be the true and tirst inventor of the invention. Patent to first 35. A patent granted to the true and first inventor shall not be in- inventor not validated by an application in fraud of liim, or by provisional protection application iu obtained thereon, or by any use or publication of tlie invention subsequent fraud of liiin. to that fraudulent application during the period of provisional protection. Ipacje W] Assignment for particular places. Loss or de- struction of patent. Proceedings and costs before law officer. Exhibition at industrial or international exhibition not to prejudice patent rights. Conditiona : (o) Notice ; (b) Pnt*fnt muNt Itn ap- p!icV, 14^, 188] 37. If a patent is lost or destroyed, or its non-production is accounted for to the satisfaction (jf the comptroller, the comptroller may, at any time, cause a duplicate thereof to be sealed. 38. The law officers may examine witnesses on oath, and administer oaths for that piu-poso under this part of tliis act, and may, from time to time, make, alter, and rescind rules regulating references and appeals to tlio law officers, and tlie practice and procedure ])efore them under this part of this act; and in any pi-oceeding before either of tlie law officers under this part of this act, tlie law officer may order costs to be paid by either party, and any such order may be made a rule of the court, \_pages 91, 08, 101.] 39. The exhibition of an invention at an industrial or international exhil)ition, certified as such by the l)oard of trade, or the publication of any description of the invention during the period of tlie holding of the oxhibitif)n, or the use of the invention for the purpose of the exhibition in the ])luce where the exhiliition is held, or the use of the invention during the period of tlu^ liolding of the exhibition by any person else- where, without the privity or consent of the inventor, shnll n(»t j)rejudico the right of the inventor or his li-gal ])ersonal representative to apply for and rjhtaiii ])rovisioiuil jirotection and a patent in resp(>ct of the invention or tlu> validity of any patent granted on the application, provided that both the following conditions are conijdied with, namely, — (a) The exhibitor must, br'forn cxliiliiting tlie invention, give (ho comp- troller tlie prescribed notices of his intention to do so ; and (b) The application for a jiateiit must bo made before or within six Tiionth.s from the date oi the opening of the exhibition. 40. — (1) The comptroller shall cause to bo is.sued periodically an illus- tratfd journal of patr-nted inventions, as well as reports of patent oases dccidecl by courts <»f law, and any other information that tli(< comptroller mnv doom generally useful or inii)ortaiit. (2) Provision shall bo made by the comptroller for keeping on sale PATENTS, DESIGNS, AND TRADE MARKS ACT, 1883. 279 copies of such journal, and also of all complete specifications of patents for the time being in force, with their accompanying drawings, if any. (3) The comptroller shall continue, in such form as he may deem Contimiation expedient, the indexes and abridgments of specifications hitherto pub- o^ publication, lished, and shall from time to time prepare and publish such other indexes, abridgments of specifications, catalogues and other works relating to inventions, as he may see fit. 41. The control and management of the existing patent museimi and Patent its contents shall, from and after the commencement of this act, be trans- museum, f erred to and vested in the department of science and art, subject to such directions as her majesty in council may see fit to give. 42. The department of science and art may at any time require a Power to re- patentee to furnish them with a model of his invention on pajmient to oQ^^aw^ent! the patentee of the cost of the manuf actiu-e of the model ; the amount to be settled, in case of dispute, by the board of trade. 43. — (1) A patent shall not prevent the use of an invention for the Foreign vessels pui-poses of the navigation of a foreign vessel within the jurisdiction of "^ British any of her majesty's coui-ts in the united kingdom, or Isle of Man, or the use of an invention in a foreign vessel within that jurisdiction, pro- vided it is not used therein for or in connexion with the manufacture or preparation of anji;hing intended to be sold in or exported from the united kingdom or Isle of Man. {_paffe 162] (2) But this section shall not extend to vessels of any foreign state of Exception, which the laws authorize subjects of such foreign state, having patents or like privileges for the exclusive use or exercise of inventions within its territories, to prevent or interfere with the use of such inventions in British vessels while in the ports of such foreign state, or in the waters within the jurisdiction of its coiu'ts, where such inventions are not so used for the manufactiu'e or preparation of anything intended to be sold in or exported from the territories of such foreign state. 44.— (1) The inventor of any improvement in instruments or munitions Assignment to of war, his executors, administrators, or assigns (who are in this section ^^ar^of c^teki comprised in the expression the inventor), may (either for or without inventions, valuable consideration) assign to her majesty's principal secretary of state for the war department (hereinafter referred to as the secretary of state), on behalf of her majesty, aU. the benefit of the invention and of any patent obtained or to be obtained for the same ; and the secretary of state may be a party to the assignment, [^paffe 111] (2) The assignment shall effectually vest the benefit of the invention Extent of as- and patent in the secretary of state for the time being on behalf of her signment. majesty, and all covenants and agi*eements therein contained for keeping the invention secret and otherwise shall be vaHd and effectual (notwith- standing any want of valuable consideration), and may be enforced accordingly by the secretary of state for the time being. (3) AVhere any such assignment has been made to the secretary of Power of se- state, he may at any time before the application for a patent for the Yot wlr^to ^ ^ invention, or before publication of the specification or specifications, keep invention certify to the comptroller his opinion that, in the interest of the public secret on certi- service, the particulars of the invention and of the manner in which it is i^pfbUc^in- ^^ to be performed should be kept secret. terest to do so. 280 APPENDIX. In which case speciticatious and documents are sealed up. For term of patent. Delivery of packet under Bccretarj- of state's autho- rity during term. At expiration. ForcpoinK sub- sections to apply whcro patent applied for hut specifi- cations not published. ^^'horc certified by secretary of state no petition for revocation. No copy of any secret speciti- cations to >k) made public. Power of Becn-tary of state to waive licnefit of sec- tion. Communica- tion to wcrc- tary of state for war not to be deemed publication. (-1) If the secretary of state so certifies, the application and specification or specifications -with the drawings (if any), and any amondment of tlie specification or specifications, and any copies of such documents and drawings, shall, instead of being left in the ordinary manner at the patent oftice, bo delivered to the comptroller in a packet sealed by authority of the secretary of state. (o) Such packet shall, nntil the expiration of the tenn or extended term during wliich a patent for the invention may bo in force, be kept sealed by the comptroller, and shall not bo opened save Tinder the authority of an order of the secretary of state, or of the law officers. (G) Such sealed packet shall bo delivered at any time during the continuance of the patent to any person authorized b}- writing under tlio hand of the secretary of state to receive the same, and shaU if returned to the com]itroller be again kept sealed by him. (7) On the expiration of the term or extended term of the patent, such sealed packet shall be delivered to any person authorized by writing under tlie hand of the secretary of state to receive it. (8) Where the secretary of state certifies as aforesaid, after an appli- cation for a patent has been left at the patent ofiice, but before the publication of the specification or specifications, the application, specifica- tion or specifications, with the drawings (if any), shall be fortliwith placed in a packet sealed by autliority of the comptroller, and such packet shall bo subject to the foregoing provisions respecting a packet sealed by authority of the secretary of state. (t)) No proceeding by petition or otherwise shall lie for revocation of a patent granted for an invention in relation to which the secretary of state has certified as afcjresaid. (10) No copy of any specification or other document or drawing by this section required to bo placed in a sealed jjacket, shall in any manner whatever bo published or open to the inspection of the i)ublic, but save as in this section otherwise directed, the provisions of this part of tliis act shall apply in respect of any such invention and jiatent as afore- said. (11) The secretary of state may, at any time by writing under his hand, waive the benefit of this section witli respect to any particular invention, and tlio specifications, documents and drawings sliall be thenceforth kept and dealt with in the oj-dinary way. (12) The conimuniciitiun of any invention for any improvement in instruments or munitions of war to the secretary of state, or to any person or ]»ersr)ns autliorized by him to iTivestigate the same or the m(>rits thereof, sliall not, nor shall anything done for tlie pur])oses of the investigation, ])0 deemed use or ]iul.li(ation of such invention so as U) prejudice the grout or validity of any i»atent lor the same. IStlllL' |>,ltl Iltil Existintj Patintit. J'r.,vi«ir,n« 45.— (1) The j.vovisioiiH of this act relating to a]iplications for patents TotyHiUumx- „„,| jii-occedings thereon sluill liavo effect in respect only of apjilications nuulo after the coniTnenconieiit of this act. (2) Every ])ateiit granted l)ef(»re the commencement of this act, or on an application then landing, shall nuiiiin unad'ected 1>y the provisions of this act relating to patents binding the crown, and to compulsory licenses, [pngf 135~\ PATENTS, DESIGNS, AND TRADE MARKS ACT, 1883. 281 (3) In all other respects (including the amount and time of payment of fees) this act shall extend to all patents granted before the commence- ment of this act, or on applications then pending, in substitution for such enactments as would have applied thereto if this act had not been passed. \^p(fffe 135~\ (4) All instruments relating to patents granted before the commence- Documents left ment of this act required to be left or filed in the great seal patent office ^^^^^^^^^^^^ shall be deemed to be so left or filed if left or tiled before or after the deemetUefTat commencement of this act in the patent office. patent office on commence - T, £ -J • ment of this Definitions. j^^t. 46. In and for the purposes of this act — Definitions of " Patent " means letters patent for an invention : " Patent ;" " Patentee " means the person for the time being entitled to the benefit "Patentee;" of a patent : \^2^ages 5, 95~\ "Invention" means any manner of new manufacture the subject of "Invention;" letters patent and grant of privilege within sect. 6 of the Statute of Monopolies (that is, the act of the twenty-first year of the reign of King James the Pirst, chapter 3, intituled, "An Act concerning monopolies and dispensations with penal laws and the forfeiture thereof"), and in- cludes an alleged invention, \_payes 22^ 119\ In Scotland " injunction" means "interdict." "Injunction" in Scotland. PAET III.— Desigxs. Registration of Designs. 47. — (1) The comptroller may, on application by or on behalf of any Application person claiming to be the proprietor of any new or original clesign not o7dea<^Qs^*^°^ previously published in the united kingdom, register the design under this part of this act. (2) The application must be made in the form set forth in the first How made, schedule to this act, or in such other form as may be from time to time prescribed, and must be left at, or sent by post to, the patent office in the prescribed manner. (3) The application must contain a statement of the nature of the Contents, design, and the class or classes of goods in which the applicant desires that the clesign be registered. (4) The same design may be registered in more than one class. Classification (5) In case of doubt as to the class in which a design ought to be Power of registered, the comptroller may decide the question. cS^s^ify!^^*^^ *° (0) The comptroller may, if he thinks fit, refuse to register any design po^er to re- presented to him for registration, but any j^erson aggrieved by any such fuse registra- refusal may appeal therefrom to the board of trade. tion. (7) The board of trade shall, if required, hear the applicant and the Appeal to comptroller, and may make an order determining whether, and subject to board of trade, what conditions, if any, registration is to be permitted. 48. — (1) On application for registration of a design the applicant shall Drawings, &c., fiu'nish to the comptroller the prescribed nimiber of copies of drawings, to be furnished photographs or tracings of the design sufficient, in the opinion of the °^ ^^^ comptroller, for enabling him to identify the design ; or the applicant may, instead of such copies, furnish exact representations or specimens of the desi2:n. 282 APPENDIX. Certificate of registration. Copies. Copyright on registration. Power of (2) The comptrollei- may, if ho thinks fit, refuse any drawing-, photo- comptrollcrto pjaph, tracing, roprosontation or specimen ■which is not, in his opinion, suitable. suitaltlt' fur tlie official records. 49. — 1 ) The comptroller shall grant a certificate of registration to tho proprietor of the design when registered. ('J) The comptrolk'r may, in case of loss of the original certificate, or in any other case in which he deems it expedient, grant a copy or copies of the certificate. ('opyri(jIit ill registered DesKjiiN. 50. — ' 1 ) "Wlien a design is registered, the registered proprietor of tho design sliall, subject to the provisions of this act, have copjTight in tho design during five years from the date of registration. (2) Before deliver}' on sale of any articles to Avhich a registered design has been applied, the proprietor must (if exact representations or speci- mens wer(! nut furnished on tlie application for registration) furnish to the comptroller thi» prescrilied numljer of exact representations or speci- mens of the design ; and if he fails to do so, tlie ct)mptroller nuiy erase his name from the registei*, and thereupon his coi)yright in tho design fihall cease. 51. Before deliver}- on sale of any articles to which a registered design has been applied, the proprietor of tlio design shall cause each such article to be marked with the prescribed mark, or with tho prescribed word or words or figures, deiujting that tho design is registered ; and if lie fails ii) do so tho cop\Tight in the design shall cease, unless the pro- prietor shows tliat he took all proper steps to ensure tho marking of the article. 52. — (1) During tlio existence of cop^Tight in n design, the design shall not be open to inspection except I)}' the proprietor, or a j)erson autliorized in writing by tlie proprietor, or a persini autliori/ed by the comptroHer or by tho court, and furnisliing such information as may enable the comp- troller to itlentify th<' design, nor excei)t in the presence of tlie comptroller, or of an officer acting under him, nor excei)t on jiayment of the ])rescribed fee ; and the ])erson making th(» inspiMition shall not be entitled to tako any cojiy of tlus design, or of any \niYt thereof. \'l) NV'lien tho copyright in a design has ceased, the design shall bo open to inspection, and copies thereof may bo taken by any person on payment of the ]ires(ril)ed lee. Marking registered designs. Inspection registered designs. of \\1nn ropA rig)it )ian . . ...M d. iiii'irrnation a* 63. On tin* request of any i)erson producing a i)articular d(^sign, uj exixwtue oi (,,^,.(1,,^ with its mark of regi.slration, or producing only its mark of registration, f»r furnishing kikIi information as nuiy i-nable tin* comptroller to iflentifv the dcHigii, and on jiayment of the prescribed f»>(>, it sliall bo tliedutvof the comptroller to iiif<»rm such jiersoii whether fh(> registration Htill c.xiHt.s in respect of such dcMigii, and if so, in resjiect of what class or claHses of goofls, and stating also the (Iati< of rcgistraf ion, and fh(! name and address of the registered proprie-lor. Forngn dn- 54. If a registered design is used in manufacturo in any fon>ign "8"- country, and is not used in this country within six months of its registra- tion in this countrv. tin- .-..i.Miirlif in fh.- dcsi^rn hIiiiII cease. PATENTS, DESIGNS, AND TRADE MARKS ACT, 1883. 283 Heffister of Designs. 55. — (1) There shall be kept at the patent office a book called the Eegisterof register of designs, wherein shall be entered the names and addresses of designs, proprietors of registered designs, notifications of assignments and of transmissions of registered designs, and siich other matters as may from time to time be prescribed. (2) The register of designs shall be prima facie evidence of any matters by this act directed or authorized to be entered therein. Fees. 56. There shall be paid in respect of apjilications and registration and Fees on regis- other matters under this part of this act such fees as may be from time to t^ation, &c. time, with the sanction of the treasiuy, prescribed by the board of trade ; and such fees shall be levied and paid to the account of her majesty's exchequer in such manner as the treasury shall from time to time direct. Industrial and International Exhibitions. 57. The exhibition at an industrial or international exhibition, certified Exhibition at as such by the board of trade, or the exhibition elsewhere during the l^'iustrial or • • • • mtcnitiLioiiiil period of the holding of the exhibition, without the privity or consent of exhibition not the proprietor, of a design, or of any article to which a design is apphed, to prevent or or the publication, during the holding of any such exhibition, of a descrip- m^^Mate tion of a design, shall not prevent the design from being registered, or ° invalidate the registration thereof, provided that both the following con- ditions are complied with, namely : — (a) The exhibitor must, before exhibiting the design or article, or Conditions. publishing a description of the design, give the comptroller the prescribed notice of his intention to do so ; and (b) The application for registration must be made before or within six months from the date of the opening of the exhibition. Legal Proceedings. 58. During the existence of cop^^right in any design — (a) It shall not be lawful for any person, without the licence or written Penalty on consent of the registered proprietor, to apply such design or any piracy of fi-audulent or obvious imitation thereof, in the class or classes of ^gfign^^ goods in which such design is registered, for purposes of sale to any article of manufacture or to any substance artificial or natxu'al or partly artificial and partly natural ; and (b) It shall not be lawful for any person to publish or expose for sale ■ any article of manufacture or any substance to which such design or any fraudident or obvious imitation thereof shall have been so applied, knowing that the same has been s6 applied without the consent of the registered proprietor. Any person who acts in contravention of this section shall be liable for every offence to forfeit a sum not exceeding fifty pounds to the registered proprietor of the design, who may recover such sum as a simple contract debt by action in any court of competent jiu'isdiction. 59. Notwithstanding the remedy given by this act for the recovery of Action for such penalty as aforesaid, the registered proprietor of any design may (if damages. he elects to do so) bring an action for the recovery of any damages arising from the application of any such design, or of any fraudulent or ob'\-ious 284 APPENDIX. imitation thereof for the purpose of sale, to any article of niauufaeturo or sul)stance, or from the puhlicntion, sale or exposure for sale hy any person of any article or substance to Avhich such desij^n or an}- fraudulent or obvious imitation thereof shall have been so applied, such person knowing that the projjrietor had not given his eouscnt to such ajiplication. Definition of " design." " CopjTight." Definition of proprietor. Drfniitions. 60. In and for the purposes of this act — "Design " means any design applicable to anj' article of manufacture, or to any substance artificial or natural, or partly artificial and partly natural, whether the design is applicable for the pattern, or for the shape or configuration, or for the ornament thereof, or for any two or more of such purposes, and by whatever means it is applicable, whether by printing, painting, embroidering, Aveaving, sewing, modelling, casting, eni])Ossing, engraving, staining, or any other means whatever, maniial, mechanical, or chemical, separate or combined, not being a design for a sculpture, or other thing within the jirotection of the ISculpturo Copy- right Act (jf the year 1814 (54 Geo. ."3, c. 50). " CopjTight " means the exclusive right to apply a design to any article of nuinufacture or to any such substance as aforesaid in tlio class or classes in which the design is registered. 61. The autlior of any new and original design shall be considered the proprietor thereof, unless ho executed the work on behalf of another j)erson for a good or valuable consideration, in which case such person shall be considered the proprietor, and every person acquiring for a good or valualjle consideration a new and original design, or the right to apply tlie .same to any such article or substance as aforesaid, either exclusively of any other person or otherwi.sc, and also every ])erson on whom tho l)roperty in such de.si first Kcjieduh! to this act, or in such other form as may Ix* from time to time prescribed, and must be left at, or sent by post t patent office in tho prescribed manner. (.'J; Tiie api)licution mtist be accompanied by the ])r(\s(ribed number of ro]»re8ontati(»nH of the trade niarlc, and must stat(< tlie j)articular goods or clu.ssOH of goods in connexion with wliicli the appbcant desires the trade mark to bo registered. (i) Tho conijit roller may, if he thinks fit, refuse* to register a trade mark, but any such refusal shall bn subject to ajipeal to tho board of trade, who shall, if n'<|uired, hear tho applicant and thc> comptroller, and may mako an order detennining wlu-ther, and subject to wliat conditions, if any, registration is to be permitted. PATENTS, DESIGNS, AND TRADE MARKS ACT, 1883. 285 (o) The board of trade may, however, if it appears expedient, refer the Appeal to appeal to the court ; and in that event the court shall have jurisdiction to l^oardof trade. hear and determine the appeal, and may make such order as aforesaid. 63. Where registration of a trade mark has not been or shall not be 'Limit of time completed within twelve months from the date of the apphcation, by ^'iifapi^^S^ reason of default on the part of the appHcant, the application shall be tion. ' deemed to be abandoned. 64. — (1) For the purposes of this act, a trade mark must consist of or Conditions of contain at least one of the following essential particulars : _ trfdtmark.°* (a) A name of an indi\'idual or firm printed, impressed, or woven in j^^^^^ contain some particular and distinctive manner ; or z^-. name. (b) A written signature or copy of a written signature of the individual q^-^ signature, or firm applying for registration thereof as a trade mark ; or (c) A distinctive device, mark, brand, heading, label, ticket, or fancy (c) device. word or words not in common use. (2) There may be added to any one or more of these particulars any Combination letters, words, or figures, or combination of letters, words, or figiu-es, or °^ ^dde^d ^^^ any of them. (3) Provided that any special and distinctive word or words, letter. Proviso pro- figure, or combination of letters or figiu-es, or of letters and figiu-es used ^°*™f4Td^ as a trade mark before the 13th day of August, 1875, may be registered before Act of as a trade mark under this part of this act. 1875. 65. A trade mark must be registered for particular goods or classes of Connexion of trade mark with goods. goods " * " trademark 66. When a person claiming to be the proprietor of several trade marks Registration of which, while resembling each other in the material particulars thereof, ^ series of yet dift'er in respect of («) the statement of the goods for which they are respectively used or pro^^osed to be used, or (5) statements of numbers, or (c) statements of price, or (rf) statements of quality, or (e) statements of names of places, seeks to register such trade marks, they may be registered as a series in one registration. A series of trade marks shall be assignable and transmissible only as a whole, but for all other purposes each of the trade marks composing a series shall be deemed and treated as registered separately. 67. A trade mark may be registered in any colour, and such regis- Trademarks tration shall (subject to the provisions of this act) confer on the regis- may be regis- tered owner the exclusive right to use the same in that or any other colour. colour. 68. Every application for registration of a trade mark under this part Advertisement of this act shall as soon as may be after its receipt be advertised by the o* application, comptroller. 69. — (1) Any person may within two months of the first advertisement Opposition to of the application, give notice in duplicate at the patent office of oppo- registration, sition to registration of the trade mark, and the comptroller shall send oijposition. one copy of such notice to the applicant. (2) Within two months after receipt of such notice, or such further Counter state - time as the comptroller maj' allow, the applicant may send to the comp- ™^?* °* apph- 28G APPENDIX. Notice to opposers and security for coats. Notice of security for costa. Assipnmeut and transmis- sion of trade mark. Conflicting^ claims to registration. Bestrictions on registration. No rcplftra- tion of iden- tical marks. Nor of very similar mark.s. Further rextriction on registration. Addition fn tnule murk may Ixj regis- tered. T>eforo 1875 Act; under 187.J Act. troUor a counter statement in duplicate of the grounds on wliich Le relies for liis ajiplication, and if he does not do so, shall be deemed to have abandoned his application. (3) If the ap})licant sends such counter statement, the comptroller shall furnish a copy thereof to the person who gave notice of opposition, and shall require him to give .security in such manner and to such amount as the comptroller may require for such costs as may be awarded in respect of such opp(Jsitiun ; and if such security is not given •uithin four- teen days after such requirement was made, or such further time as the comptroller may allow, the opposition shall be deemed to bo withdrawn. (4) If the person who gave notice of opposition didy gives such security as aforesaid, the comptroller shall inform the applicant thereof in writing, and thereupon the case shall be deemed to stand for the determination of the coiu-t. 70. A trade mark, when registered, shall bo assigned and transmitted only in connexion with the goodwill of the business concerned in the particidar goods or classes of goods for which it has been registered, and shall be determinable with that goodwill. 71. AMiore each of several persons claims to be registered as proprietor f)f the same trade mark, the comptroller may refuse to register any of them until their rights have been determined according to law, and the coniptroller may himself submit or require the ilainumts to submit theu- rights to the court. 72. — (1) E.xcept whore the court has decided that two or more persons are entitled to be registered as propriet(n-s of the same trade mark, tho comptroller shall not register in respect of tho same goods or description of goods a trade mark identical with one already on llie register with respect to such goods or descri[)tion of goods. (2) Tlie comptroller shall not register with respect to the same goods or description of gotxls a trade* mark so nearly resembling a tradi' mai'k already on t]u» register with respect to sucli goods or descriptiou of goods as fo be cidculated to deceive. 73. it hliall not be lawful to register as part of or in comliiimtion willi a trade mark any words tiu! exclusive use of which would by reason of their l)eing calculated to deceive! or (otherwise, be deemed di.sentitled to protoction in u court of justice, or any ecandahnis design. 74. — (1) Notliing in this act shall bo construed to prevent tho comptroller entering on the register in the ])rescribed maimer, and subject to tlu? pre- scribed conditions, as an addition to any trade murk — (a) In the caso of an Jipplicati.on for registration of a trade nuirk used befor«! the l.'JtIi day of August, lH7o — ;\jiy distinctive device, mark, brand, heading, label, ticket, letter, word, or tigure, or combination of letters, words, or figures, tlmugh the wmie is common to the trade in tho gotjds with respe«t to wljjclj the ap])li('ation is ma' of the company of cutlers in Ilallamshire, in the county of York iu this act called the cutlers' cijmpau}'), and the marks or devices (in this act called Sheflield marks; assigned or registered l)y the master, wardens, sonrdiers, and assistants of that company, the following pro- visions shall have effect : (1) The cutlers' company shall establish and keep at Sheffield a new register of trade nuirks (in this act called th(> Sheflield regi.ster) : (2) Tlie cutler.s' company shall enter in tlu^ ShellieM register, in respect of cutlery, edge tools, . (3) An application for registration of a trade mark used on cutlery, rdgn to«jls, or on raw steel, or on goods made of steel, or of steel ami iron combined, whether with or without a cutting edge, shall, if nuide after the cDininenccMnent of this act by a jterson carrying on IjusineKH in llallanishire, or within six miles thereof, bo mado to the cutlers' conn»any : (4) Every ajtplication ho nuido to the cutlers' company shall l)e notified to tlio comptroller in the j)reHcribed manner, and unless the comp- troller, within the prescribed time, gives notice to the cutlers' company that ]><> objec'ts to tlio accejiUmce of the a])plication, it hhall bo pnx'coded witli by tlic cutlers' company in the prescribed manner : PATENTS, DESIGNS, AND TRADE MARKS ACT, 1883. 289 (5) If tlie comptroller gives notice of objection as aforesaid, the appli- Notice of cation shall not be proceeded with by the cutlers' company, but ° ^^^ ^°^' any person agg-rieved may appeal to the court. (G) Upon the registration of a tirade mark in the Sheffield register, the Notification of cutlers' company shall give notice thereof to the comptroller, who ^^^^'^ °^ mark, shall thereupon enter the mark in the register of trade marks ; and such registration shall bear date .as of the day of application to the cutlers' company, and have the same effect as if the appli- cation had been made to the comj)troller on that day : (7) The provisions of this act, and of any general rides made under Notice of entry this act, with respect to application for registration in the register ^^ Shefaekl of trade marks, the effect of such registration, and the assignment '^ and transmission of rights in a registered trade mark shall apply in the case of applications and registration in the Sheffield register ; and notice of every entry made in the Sheffield register must be given to the comptroller by the cutlers' company, save and except that the provisions of this sub-section shall not prejudice or affect any life, estate, and interest of a widow of the holder of any Sheffield mark which may be in force in respect of such mark at the time when it shall be placed upon the Sheffield register : (8) Where the comptroller receives from any person not carrying on Application business in Hallamshire or within six miles thereof an application *^;°™. o/^tside for registration of a trade mark used on cutlery, edge tools, or on raw steel, or on goods made of steel, or of steel and iron com- bined, whether with or without a cutting edge, he shall in the prescribed manner notify the application and proceedings thereon to the cutlers' company : (9) At the expiration of five years from the commencement of this act Close of regis- the cutlers' company shall close the cutlers' register of corporate HV'^^i ^^ arks trade marks, and thereupon all marks entered therein shall, therein, unless entered in the Sheffield register, be deemed to have been abandoned : (10) A person may (notwithstanding anything in any act relating to Kegistiy of the cutlers' company) be registered in the Sheffield register as pro- D^o^^ethan one prietor of two or more trade marks : (11) A body of persons, corporate or not corporate, may (notwith- Bodies cor- standing anything in any act relating to the cutlers' company) be V°'^^^^ ^J^ ^°^" registered in the Sheffield register as proprietor of a trade mark register. or trade marks : (12) Any person aggrieved by a decision of the cutlers' company in Appeal, respect of anything done or omitted under this act may, in the prescribed manner, appeal to the comptroller, who shall have ]Dower to confirm, reverse or modify the decision, but the deci- sion of the comptroller shall be subject to a further appeal to the court : (13) So much of the Cutlers' Company's Acts as appHes to the sum- Sutler? Com- mary punishment of persons counterfeiting Sheffield corporate pany's^Acts. marks, that is to say, the fifth section of the Cutlers' Company's Act of 1814, and the provisions in relation to the recovery and application of the penalty imposed by such last-mentioned section contained in the Cutlers' Company's Act of 1791, shall apply to any mark entered in the Sheffield register. U '290 APPENDIX. Patent office. Control. P.VET ^^— Gkxeual. Patent OJpce and Proccedhujs thereat. 82. — ' 1 ) The treasury may provide for the purposes of tliis act an office with all requisite buildings and conveniences, which shall bo called, and is in this act referred to as. the patent oifice. (2) Until a new patent oflice is provided, the offices of the commis- sioners of patents for inventions and for the registration of designs and trade marks exi.sting at the commencement of this act shall be the patent office within the meaning of this act. (3) The patent office shall be under the immediate control of an officer called the comptroller general of patents, designs, and trade marks, who shall act under the superintendence and direction of the board of trade. (4) Any act or thing directed to be done by or to the comptroller may, in his absence, bo done by or to any officer for the time being in that behalf authorized by the board of trade. 83. — (\) The board of trade may at any time after the passing of this act. and from time to time, subject to the approval of the treasury, ap- point the comptroller-general of patents, designs, and trade marks, and 80 many examiners and otlier officers and clerks, with such designations and duties as the board of trade think fit, and may from time to time remove any of those officers and clerks. {•!) The salaries of those officers and clerks shall be appointed by the board of trade, with the concurrence of the treasury, and the same and the other expenses of the execution of this act shall be paid out of money provided by parliament. Seal of patent 84. There shall ])e a seal for the patent office, and impressions thereof office. shall bo judicially noticed and admitted in evidence. {_2^a(/c 10^'] Officers aiul clerks. Salaries. Tnwt not to Ix) entered in registcrH. RcfuJ>al to l^unt [.atcut, iic, iu certain cases. 85. There shall not be entered in any register kept under this act, or be receivable by the comptroller, any noticu of any trust expressed, im- plied or constructive. [^ pages ^0, 1.^1^ 86. The comptroller may refuse to grant a patent for an invention, or to regi.-iter a design or trade nuirk, of which tho use wouM, in his opinion, be contrary to law or morality, [/-'fyt' 105^ Entry of a«- 87. Where a person becomes entitled by assignment, transmission, or ■ipnnicptji ami (,^1,,.,. (,T)oration of law to a ])alent, or to tho cdpyright in a registered in rcgutcra. design, or to a registered trade mnilc, tin.' conii)(roll(r snail on recpiest, and on ])ruof of title to liis satisfaction, cause the name of such jjcrson to bo entered as projjrietor of llio i)atent, copyright in the design, or trado mark, in the register of patfiits, designs, or trado marks, as the case may bo. Tho person for tho tiuio being entered in tho register of patents, designs, or trado murk.s, a.s pronrietor of a jiafent, copyright in a design or trudo mark as tho caso may tjo, shall, subject to any rights appearing from such register to bo vested in any other person, have ])owcr abso- lutely to assign, grant licenses us to, or otherwise deal with, tho sarao and to give effectual receipts for any consideration for sudi assignment, license, or dealing. I'rovided that any equiti<'s in respect of such patent, design, or trado mark may be enforced in like manner as iu respect of any other jjr-rsonal j)n)peHy. [ par/r /W] PATENTS, DESIGNS, AND TRADE MARKS ACT, 1883. 291 88. Every register kept imder this act shall at all convenient times he Inspection of open to the inspection of the puhHc, suhject to such regulations as may from reo-fstos. be prescribed ; and certified copies, sealed with the seal of the patent office, of any entry in any such register shall be given to any person requiring the same on payment of the prescribed fee. \^iiage 121'] 89. Printed or written copies or extracts, purporting to be certified by Sealed copies the comptroller and sealed with the seal of the patent office, of or from ^° evideiTce ^ patents, sj)ecifications, disclaimers and other documents in the patent office, and of or from registers and other books kept there, shall be admitted in evidence in all courts in her majesty's dominions, and in all proceedings, without further proof or production of the originals, \_payes 121, 225] 90. — (1) The court may on the application of any person aggrieved by Eectification the omission without sufficient cause of the name of any person from any com-t? ^ register kept under this act, or by any entry made without sufficient cause in any such register, make such order for making, expunging, or varying tlie entry, as the coiu't thinks fit; or the coiu-t may refuse the aj)plication ; and in either case may make such order with respect to the costs of the proceedings as the court thinks fit. \_paffe 121] (2) The court may in any proceeding under this section decide any Powers of question that it may be necessary or expedient to decide for the rectifica- unnecessary ° tion of a register, and may direct an issue to be tried for the decision of questions, any question of fact, and may award damages to the party aggrieved. (3) Any order of the court rectifying a register shall direct that due Notice. notice of the rectification be given to the comptroller. 91. The comptroller may, on request in writing accompanied by the Power for • TIP i- -*T-*n coiiiptroll6r to prescribed fee,— [pac/e 121] _ _ _ correct clerical (a) Correct any clerical error in or in connection with an application for errors. a patent, or for registration of a design or trade mark ; or (b) Correct any clerical error in the name, style or address of the regis- tered proprietor of a patent, design, or trade mark ; (c) Cancel the entry or part of the entry of a trade mark on the register : Provided that the applicant accompanies his request by a statutor}^ declaration made by himself, stating his name, address, and calling, and that he is the person whose name appears on the register as the proprietor of the said trade mark. 92.— (1) The registered proprietor of any registered trade mark may Alteration of apply to the court for leave to add to or alter such mark in any particular, ^f^^_ not being an essential particular within the meaning of this act, and the court may refuse or grant leave on such terms as it may think fit. (2) Notice of any intended application to the court under this section Notice to be shall be given to the comptroller by the applicant ; and the comptroller gi"^en. shall be entitled to be heard on the application. (3) If the court grants leave, the comptroller shall, on proof thereof Comptroller to and on payment of the prescribed fee, cause the register to be altered in ||||ge!;^/J^*^°' conformity with the order of leave. order. 93. If any person makes or causes to be made a false entry in any Falsification register kept under this act, or a writing falsely piu-porting to be a copy j-goisters. of an entry in any such register, or produces or tenders or causes to be ' produced or tendered in evidence any such writing, knowing the entry or writing to be false, he shall be guilty of a misdemeanor. u2 29-2 APPENDIX. Exerciso of 94 Wliofc any (liscTotiouary power is l)y this ad j^ivou to tho comp- power b v**^ trolli-r, he shall not oxcrciso that power adversely to the applicant for a comptroller. jiuteiit, or for amendment of a speciheation. or for r»'<^istration of a trade mark or desig-n, without (if so required within the prescrihed tinio by the apjilicant giving the applicant an opportunity of being heard personally or by his agent. [/J^y '^-Z] Power of 95. The comptroller may, in any ease of doubt or difficulty arising comptroller to j^ ^j^^^ administration of anv of the provisions of this act, aiiply to taK<' uint-tious <. 1 1 /r> r !*• • • 1 '11.' of luw offict-nj. either of tho law olhcers tor iluvctions m the matter. • . rtificate of 9g. A certificate purporting to be under the hand of tho comptroller as uj^^dencc **^ ""^' •'"^''y' luatter, or thing which he is autliori/.od by this act, or any general rules made thereunder, to make or do, sliall be prima facie evidenco of tho entry having been made, and of tho contents thereof, and of tho matter or thing having been done or left undone. [_pay itifuiit, lutuitic, A:c. I.f I' of 'l" itl' -l- tiotu, kc. 97. (1) Any application, notice, or other document authorized or required to be left, made, or given at tho patent t)l!ice, or to the comp- troller, or to any other person under this act, may be sent by a prepaid letter through tho post ; and if so sent shall be deemed to have been left, made, or given respectively at the time when tho letter containing tho same would be delivered in tho ordinary course of post. ('2) In proving such service or sending, it shall be suliicient to prove that the letter was properly addressed and put into the post. , 98. Whenever tho last day fixed liy lliis act, or by any rule for tho time being in force, for leaving any document or paying any fee at the ]>atent office shall fall on Christmas Day, (Jood Friday, or on a Saturday or Sunday, «»r any day observed as u holiday at tlio Kank of England, or any day obsened as a day of juiblic fast or thanksgiviTig, herein referred to as excluded days, it shall be lawful to leave such document, or to pay Buch fee, on the day next following such excluded day, or days if two or moru of them occur consecutively. 99. Tf any pers^ju is, by reason of infancj*, lunacy, or other inability, in( apablo <»f making any declaration or doing anything refjuired or per- mitte«l by this act or by any rules made under the authority of this act, then tho guanlian or committee (if any) of such incapable- person, or if there bo none, any jterson ajipointed by any court or judge possessing jurisdiction in respect of the property of incapable persons, upon tho petition of any jjcrson on btlialf of such incapable person, or of any other person interested in the n»aking such *< trauhniitted to the Edinburgh muMi'\ I'rovided that his application is made, in the case of a patent within seven months, and in the case of a design or trade mark within four months, from his applying for protection in the foreign state with which the arrangement is in force. Provided that nothing in this section contained shall entitle the patentee or proprietor of tlie design or trade mark to recover danuiges for infringements hap])ening prior to tlic dato of the actual acccptanco of his complete speciticntion, or the actual registration of his design or trade mark in this country, as the case may be. (2) The publication in tlie united kingdom or the Isle of l^lan, during the respective jx'riods aforesaid, of any descri[)tion of the invention, or the use therein during such periods of t)ie invention, or tlie cxliihition or use therein during sudi periods of th(( design, or the pultlitation tliercin during such periods of a description or representation of tlio design, or the u.st» therein during such periods of tlio trade mark, shall not invalidato the patent which may be granted for the invention, or the registration of th»^ design f)r trade mark : (.J) The application for the grant of a patent, or the registration of a design, or the registration of a trade mark under this section, must bo made in the same manner as an ordinary application under this act : Provided that, in the case of trade marks, any trade mark the regis- tration of wliich lias been duly applied for in the country of origin may bo registered under this act: ('I) Th(> provisions of this section shall apply only in the cas(< of tho.se foreign states with respect to wliich her majesty shall from tinu' to time by order in council d(;clare them to bo a])])li( iilile, and so long only in the case of cwh state os the order in council shall continue in force with respect to that state. Provinion for colonic* and India. Fflect of order in council. 104. — (1) Where it is made to appear to lier majesty that llio legis- lature of any liritiHh possession has made satisfactory jirovision for the protection of inventions, desii^ns, and trade marks, jiatented or regis- tere«l in this country, it shall be lawful for her majesty, from timo to tinu', by firder in council, to ajiply the provisi<»ns of tlm last jireceding Koction, with such variations or additions, if any, as to her majesty in council may Kceni fit, to such IJritish posscHsion. [ payrs /.S'.7, /W] (2) An order in council under this act shall, from a yriglit or right to us(> a trad<> mark granted or ae(|uin'd, or apjilication ]»ending, or a]»p<»intment nuide, or conijiensation giiinted, or order or direction ma>o dp«Tn<-d routiiiiK d. rusting rulcf. PATENTS, DESIGNS, AND TRADE MARKS ACT, 1883. 297 tion, or amenclment shall take effect before the commencement of this act; and, subject as aforesaid, such general rules shall, so far as they are consistent ^vith and are not superseded by this act, continue in force as if they had been made by the board of trade under this act. 116. Nothing in this act shall take away, abridge, or prejudicially gaviug for affect the prerogative of the crown in relation to the granting of any prerogative. letters patent, or to the withholding of a grant thereof. General Definitions. 117. — (1) In and for the purposes of this act, unless the contest other- Qeneral wise requires, — definitions. " Person " includes a body corporate : "Person." "The Court" means (subject to the provisions for Scotland, Ireland, ((Qo^^" and the Isle of Man) her majesty's high court of justice in England : [^page 181~\ "Law officer" means her majesty's attorney-general or solicitor- u^awofficer." general for England : " The Treasury " means the commissioners of her majesty's treasury. << Treasury " " Comptroller" means the comptroller general of patents, designs, and uqq trade marks : troUer." " Prescribed " means j^rescribed by any of the schedules to this act, or «' prescribed." by general rules under or within the meaning of this act : " British possession " means any territory or place situate within her " British pos- majesty's dominions, and not being or forming part of the united session." kingdom, or of the Channel Islands, or of the Isle of Man, and all territories and places under one legislature, as hereinafter defined, are deemed to be one British possession for the purposes of this act : " Legislature " includes any person or persons who exercise legislative a Ler OF PnovisioxAL SPECincATiON. Improvements in Seicing Machines [a). I, [h) John Smith, of 29, rernj Street, Birmingham, in the county of Jranciek, Engineer, do hereby declare the nature of my invention for " Improvements in Sewing Machines,^' to be as follows (c): — (rf) John Smith. Dated this day of 18 , Note. — No stamp is required on this document. (fi) Hero insert title, as in SclIKDULE. Fees on Initrumenti for obtaining Patents and Retieual. (a.) Up to sealing. On nnplicatinn for provixional prot<'ction On filing roniplel*' Mp«-ciJication - - . - vr On filing complete npeciftratif)n with first applicjition ... (b.) Further hrfore end of four gears from date of patent . On ccrtlficato of rrnewnl ..---.. (o.) Further before end of leien geam, or im Ibe ca»r «./ patents granted after the mtnt of thif act, before the end of eight gears from date of patent. On rcrtificntc of renewal ..-..-- £ s. d. £ s. d. 1 :\ 4 •i 50 com men ee- 100 PATENTS, DESIGNS, AND TRADE MARKS ACT, 1883. 301 Or in lieu of the fees of £bl) and £100 the following annual fees : — Before the expiration of the fourth year from the date of the patent ,, ,, fifth ,, ,, sixth ,, ,, seventh „ „ eighth ,, ,, ninth „ , „ tenth ,, ,, eleventh ,, ,, twelfth ,, ,, thii'teenth The Third Schedule. Enactments Mepealed. 21 James 1, c. 3 (1623). — The Statute of Monopolies. In part; namely, sections 10, 11 and 12. 5 & G Will. 4, 0. 62 (1835) [In part].— The Statutoiy Declarations Act, 1835. In part ; namely, section 1 1 . 5 & 6 "Will. 4, c. 83 (1835). — An act to amend the law touching letters patent for inventions. 2 «& 3 Vict. c. 67 (1839). — An act to amend an act of the fifth and sixth years of the reign of king William the fourth, intituled "An Act to amend the law touching letters patent for inventions." 5 & 6 Vict. e. 100 (1842). — An act to consolidate and amend the laws relating to the copyright of designs for ornamenting articles of manufacture. 6 & 7 Vict. c. 65 (1843). — An act to amend the laws relating to the copyright of designs. 7 & 8 Vict. c. 69* (1844) [In part]. — An act for amending an act passed in the fourth year of the reign of his late majesty, intituled " An act for the better adminis- tration of justice in his majesty's privy council, and to extend its jurisdiction and powers." In part ; namely, sections 2 to 5, both included. 13 & 14 Vict. c. 104 (1850). — An act to extend and amend the acts relating to the copyright of designs. 15 & 16 Vict. c. 83 (1852).— The Patent Law Amendment Act, 1852. 16 & 17 Vict. c. 5 (1853) — An act to substitute stamp duties for fees on passing letters patent for inventions, and to provide for the pui'chase for the public use of certain indexes of specifications. 16 & 17 Vict. c. 115 (1853). — An act to amend certain provisions of the Patent Law Amendment Act, 1852, in respect of the transmission of certified copies of letters patent and specifications to certain ofiices in Edinburgh and Dublin, and otherwise to amend the said act. 21 & 22 Vict. c. 70 (1858). — An act to amend the act of the fifth and sixth years of her present majesty, to consolidate and amend the laws relating to the copyright of designs for ornamenting articles of manufacture. 22 Vict. c. 13 (1859). — An act to amend the law concerning patents for inventions with respect to inventions for improvements in instruments and munitions of war. 24 & 25 Vict. c. 73 (1861). — An act to amend the law relating to the coj^yright of designs. 28 & 29 Vict. c. 3 (1865).— The Industrial Exhibitions Act, 1865. 33 & 34 Vict. c. 27 (1870).— The Protection of Inventions Act, 1870. 33 & 34 Vict. c. 97 (1870).— The Stamp Act, 1870. In part; namely, section 65, and in the schedule the words and figures, " Certificate of the registration of a design . . £5 0. And see section 65." 38 & 39 Vict. c. 91 (1875).— The Trade Marks Registration Act, 1875. 38 & 39 Vict. c. 93 (1875).— The Copyright of Designs Act, 1875. 39 & 40 Vict. c. 33 (1876).— The Trade Marks Registration Amendment Act, 1876. 40 & 41 Vict. c. 37 (1877).— The Trade Marks Registration Extension Act, 1877. 43 & 44 Vict. c. 10 (1880).— The Great Seal Act, 1880. In part ; namely, section 5. 45 & 46 Vict. 0. 72 (1882). — The Revenue, Friendly Societies, and National Debt £ s. d. 10 10 10 10 15 15 20 20 20 20 Section 113 Act, 1882. In part ; namely, section 16. * Xotc.- Act, 1874. -Sects. 6 and 7 of this act are repealed by the Statute Law Revision No 2) :^02 APPENDIX. PATENTS RULES, 1883. Short title. Commence - meut. By virtue of the provisions of the Patents, Desig;ns, and Trade Marks Act, 1883, the Board of Trade do hereby make the following liule.s :— SiioKT Title. 1. These Ivules may bo cited as the Patents Pules, 1883. CoMME>-CEMEXT. 2. These Pules shall come into opex'ation from and immediately after the 31st day of December, 1883. IxTEUrRETATIOX, Interpretation. •5- In the construction of these Pules, any words herein used defined by tins said Act shall luivi; the meanings thereby assigned to them respectively. Pees. Fec-3. -l. Tlic fees to be ])!iid under the above-mentioned Act, in addition to the fees mentioned in tlie Second Schedule thereto, so far as it relates to ])atents, shall be those specified in the list of fees iu the First (Schedido to these Pules. Forma. Alterutioiui. Api'Iicatiou. S|iccificatioii. Other formn. IToiini of btuinuM. FoUMS. .5. The Forms A., li. and C. in the First Schednlo to tlie said Act shall Ix' aht-n'd or amended by tho substitution llierefor res]i(>c- tively of the Forms A., Al., 1?. and C in tin- Sttoiid Scliedule hereto. G. (1.) An apjilication for a jjatcnt sliall 1)<( madf citlu'r iu tlie Form A. or the l"'orm Al. set forth in tlu' Second .Sch(;dul(! hereto, as the cas<' nuiy be. (2.) The Form li. in such Schedul(> of ])rovisional specification und tlu- Form C of complet(t specification shall respectively be used. (3.; Th«! renuiiiiing forms m^t forth in such JSchedult! nniy, as far BH they are applicabli*, bo used in any i»roccedings under those RuIoH. Gkxeiial. 7. The Pnt«iit Officf' shall be open to the public every week-dny during the hours of ten und four, e.xcept on the days und times following : — f'hristmuH Day. (food l''riday. The day obHcrved jih Her Maji'sty h birt Inlay- The iluys' observed um days «»l ]iublic fust or tiuinksgiviiig, or ait hoIidavH ut tite ISank of J'ltiglaud. PATENTS RULES, 1883. 303 8. An application for a patent must be signed by the applicant, Agency, but all other communications between the applicant and the comp- troller and all attendances by the applicant upon the comptroller may bo made by or through an agent duly authorised to the satis- faction of the comptroller, and if he so require resident in the United Engdom. 9. The application shall be accompanied by a statement of an Statement of address to which all notices, requisitions, and communications of ^-ddress. every kind may be made by the comptroller or by the Board of Trade, and such statement shall thereafter be binding upon the applicant unless and until a substitiited statement of address shall be fm-nished by him to the comptroller. He may in any particular case require that the address mentioned in this Rule be in the United Kingdom. 10. All documents and copies of docviments sent to or left at the Size, &c. of Patent Office or otherwise furnished to the comptroller or to the comptndler may bo obviated witlunit detriment to the interests of any jx-rson, may bo corrected, if and on such terms as the comptroller may think fit. 19. Any application, notice, or other docimiont authorised or required to be left, made, or given at the Patent Ofhce or to the comptroller or to any other ])erson under these ]iulcs may be sent ])y a prepaid letter tlirough the post, and if so sent shall be di'enied to have been left, made, or given respectively at the time when the letter containing the same would be delivered in the ordinary course of post. In proving such service or sending it shall bo sufficient to prove that the letter was properly addressed and put into the post. 20. Affidavits may, except where otherwise prescribed by these Kules, be used as evidence in any proceedings thereunder when sworn to in any of the following ways, viz. : — (1.) In the United Kingdom before any person authorised to administer oatlis in the Sui)renit' Court of Judicature or Ix'foro a justice of the peace for the county or place where it is sworn or made. (2.) In any plac(i in the British d(jminions out of the United Kingdom before any court, judge, or justice of the peiu'o or any person autliorised to administer oatlis thi-re in any court. (3.) In any place out of the liritisli dominions l)efor(^ a Brifisli minister, or person exercising fht; functions of a Britisli minister, or a ]{ritisli consul, vice-(<»nsul, or other person exercising the functions of a liritish consul, or a notary public, or before u judge or magistrate. 21. "W^iero any statutory declaration prescribed by these Utiles, or UHifd in any ])roccedingH thereunder, is made out of the Unite. made in tlio manner prescribed in I'ule 20. sub-section (•i). PATENTS RULES, 1883. 305 Application with Proyisioxal or Complete Specification. 22. Applications for a patent sent by prepaid letter through, the Order of post shall, as far as may be practicable, be opened and numbered ™°iicatK)ns in the order in which the letters containing the same have been re- spectively delivered in the ordinary com-se of post. Applications left at the Patent Office otherwise than thi'ough the post shall be in like manner numbered in the order of their receipt at the Patent Office. 23. Where a person making application for a patent includes Application therein by mistake, inadvertence, or otherwise, more than one patentsby way- invention, he may, after the refusal of the comptroller to accept of amendment, such application, amend the same so as to apply to one invention only, and may make application for separate patents for each such invention accordingly. Every such application shall bear the date of the first applica- tion, and shall, together therewith, be proceeded with in the manner prescribed by the said Act and by these Pules as if every such application had been originally made on that date for one invention only. 24. An appKcation for a patent by the legal representative of a Application by person who has died possessed of an invention shall be accom- I'epresentative panied by an official copy of or extract from his will or the letters inventor, of administration granted of his estate and effects in proof of the applicant's title as such legal representative. 25. On the acceptance of an application with a provisional or Notice and complete specification the comptroller shall give notice thereof to % c^e^^tance the apphcant, and shall advertise such acceptance in the official journal of the Patent Office. 26. Upon the publication of such advertisement of acceptance in Inspection on the case of an application with a complete specification, the appli- ^f^^^^j^^^ete cation and specification or specifications with the drawings (if any) specification, may be inspected at the Patent Office upon payment of the pre- scribed fee. Application on CoMMrNi cation FEOii Abroad. 27. An application for a patent for an invention communicated Communica- from abroad shall be made in the Form A 1 set forth in the Second JbroS!™ Schedule hereto. Sizes and Methods op Preparing Drawings accompanying Pro- visional OR Complete Specifications. 28. The di-awings accompanying provisional or complete specifica- Size of tions shall be made upon half-sheets or sheets of imperial drawing <"'^^™^g3- paper, to be within a border line of 19 inches by 12 inches, or 27 inches by 19 inches, with a margin of ^ an inch all round. 29. A copy of the drawings will be required upon rolled imperial Copies of drawing paper or upon thin Bristol board of the same dimensions drawings. as the original di-awing or drawings. All the lines must be abso- lutely black, Indian ink of the best quality to be used, and the same strength or coloui" of the ink maintained throughout the drawing. T X 806 APPENDIX. Additional drawing to be furnished. Any shading must be in lines clearly and distinctly dravni and as open as is consistent with the required etfect. Section lines should not be too closely drawn. No colour must be used for any purpose upon the copy of the drawings. Ail letters and figures of reference must be bold and distinct. The border line should be one fine line only. The drawings must not be folded, but must be delivered at the Patent Office either in a perfectly flat state or rolled upon a roller so as to be free from creases or breaks.* 30. "Where a complete specification is left at the Patent Office after a provisional specification has been accepted the complete specification and drawing or drawi:igs accompanying the same, as well as the copy thereof, must l)e prepared in accordance with Eules 10, 28, and 29. Illustrated Joltixal. 31. Every applicant for the grant of a patent shall, in addition to the drawings to be furnished with his complete specification, furnish the comptroller with a drawing illustrative of the feature or features of novelty constituting his invention. Such di'awing nmst bo pre- pared in the manner prescribed for the copy of the original drawing or drawings accompanying the specification, but must not cover a space exceeding 16 square inches. The drawing must be accom- panied by a concise explanatory statement on foolscap paper and legibly wi-itten or printed. Xotice of opposition. Copy for applicant. Particulars of prior patent. Opponent's cviucucc. Applicant's evidence. Evidence in reply. OrrosiTiox to Grants of Patents. 32. A notice of opposition to the grant of a patent shall state the ground or grounds on which the person giving such notice (herein- after called the opponent) intends to oppose the grant, and sliall be signed by him. Such notice shall state his address for service in the United Kingdom. 33. On receipt of such notice a copy thereof shall bo furnished by the comptroller to the applicant. 34. "Whore the ground or one of the gi'ounds of opposition is that the invention has been patented in this country on an api)li(ation of prior dato, the title, number, and date of the patent granted in suth prior application shall be specified in the notice. 3o. "Witliin 11 days after the expiration of two months from the date of the advertisement of the acce])tance of a complete specifica- tion, the opponent shall leave at the I'atent Office statutory declara- tions in support of liis opposition, and deliver to the M]»[)licunt a list thereof. 30. AVitliin M days from the delivery of such list the apjilicant shall leave at the I'atent Office statutory declarations in answer, and deliver to the o])ponent a list thereof, and williiii seven days from such delivery the opi)onent sliall Ir'sive at tin* I'atent Office his statu- tory declarations in reply, and di liver to the applicant a list thereof. • Ah the drawing's nccompanyin^f llic provisional nnd complete specification rcxpfcfivily nrn i'T OF TiME. 4G. An application for an enlargement of the time for making a prescribed payment shall state in detail the circumstances in which the patentee hy accident, mistake, or inadvertence has failed to make sucli i)ayment, and the comptroller may require the patentee to substantiate by such proof as he may think necessary the allegations contained in the application fur enlargement. 47. The time prescribed by these Eules for doing any act, or taking any proceedings thereunder, may be enlarged by the com[)troller if lie think fit, and upon such notice to other parties, and proceedings thereon, and upon such terms, as he may direct. Request for leave to amend. Advertise- ment. Notice of oppositiou. Copv for the appQcaut. Opponent's evidence. Further jiro- ccediugH. Deciiiion to l>e notified to parties. lioquirementj* theroon. I/cavo )))• order of Court. AdTPrtiiwTnfiit of auKudiuent. Amendment of Specification. 48. A request for leave to amend a specification shall be .signed by the applicant ur patentee and accompanied by a copy of the original specificatiun and drawings, showing in red ink the proposed amendment, and shall bo advertised by publieation of the request and the nature of the i)roposed amendment in tlie official jom-nal of the Patent Office, and in such other manner (if any) as the comp- troller may in each case direct. 49. A notice of opposition to the amendment shall state the ground or grounds on Avliich the person giving such notice (herein- after called tlie opp(jnent) intends to oppose the amendment, and shall be signed l)y liiin. Such notice slndl state his address for service in the United Kingdom. •')(). On receipt of such notice a copy thereof shall be furnished by the comptroller to the ap})licant or patentee, as the case may bo (hereinafter called the applicant;. ol. Within 14 days after the expiration of one month from the first advertisement of the application for leave to amend, the opponent shall leave at the Patent Office statutory declarations in 8upi)ort of his opposition and deliver to the ai)plicant a list thereof. .02. I'pon such declarations being left, and such list being delivered, the jjrovisions of Kules .'}(), 37, .'JH, and .'}9 sliall apply to the case, and the furtlier ]irocecdings therein sliall be regulated in accordance with such provisiouH as if they were hero repeated. 53. The decision of the comptroller in the case shall bo notified by liim to the parties. 5t. Where leave to amend is givtu the apnlicant shall, if jho coiijjttrnllcr HO r<'f]uire, and within a time to oe limited by him, li'iivi' at thf« Patent Office a new specification antl drawings as amended, to bo prepared in accordance with Rules 10, 28, and 29. .O.'*. Where a requeHt for leave to amend is made l)y or in pur- Huunce of an order of the Court or a judge, an official or verified ropy of tlu' order shall })e left with the request at the Patent Office. •'iO. Kvery amendment of a specification shall bo forthwith advertised by the comptroller in the official journal of the Patent PATENTS EULES, 1883. 309 Office, and in sncli other manner (if any) as the comptroller may direct. CoMPULsoEY Licenses. 57. A petition to the Board of Trade for an order upon a Petition for patentee to grant a license shall show clearly the nature of the peti- ^°.^^ of^"^ tioner's interest, and the ground or grounds upon which he claims licenses. to be entitled to relief, and shall state in detail the circumstances of the case, the terms upon which he asks that an order may be made, and the purport of such order. 58. The petition and an examined copy thereof shall be left at To be left with the Patent Office, accompanied by the affidavits, or statutory p^tg*^^Q^ge declarations, and other documentary evidence (if any) tendered by the petitioner in proof of the alleged default of the patentee. 59. Upon perusing the petition and evidence, unless the Board Directions as of Trade shall be of opinion that the order should be at once to further pro- refused, they may require the petitioner to attend before the petition comptroller, or other person or persons appointed by them, to refused, receive his or their directions as to further proceedings upon the petition. 60. If and when n. prima facte case for relief has been made out Procedure, to the satisfaction of the Board of Trade, the petitioner shall upon their requisition, and on or before a day to be named by them, deliver to the patentee copies of the petition and of the affidavits Petitioner's or statutory declarations and other documentary evidence (if any) evidence, tendered in support thereof. 61. Within 14 days after the day of such delivery the patentee Patentee's shall leave at the Patent Office his affidavits or statutory declara- evidence, tions in opposition to the petition, and deliver copies thereof to the petitioner. 62. The petitioner within 14 days from such delivery shall Evidence leave at the Patent Office his affidavits, or statutory declarations in ^ ^*^P ^' reply, and deliver copies thereof to the petitioner ; such last-men- tioned affidavits or declarations shall be confined to matters strictly in reply. 63. Subject to any further directions which the Board of Trade Further pro- may give, the parties shall then be heard at such time, before such ^^^ °^' person or persons, in such manner, and in accordance with such procedure as the Board of Trade may, in the circumstances of the case, direct, but so that full opportunity shall be given to the patentee to show cause against the petition. Register of Patents. 64. Upon the sealing of arpatent the comptroller shall cause to be Entry of entered in the register of patents the name, address, and description grant, of the patentee as the grantee thereof, and the title of the in- vention. 65. Where a person becomes entitled to a patent or to any share Eequest for or interest therein, by assignment either throughout the United entry of sub- Kingdom and the Isle of Man, or for any place or places therein, prietors£p°" or by transmission or other operation of law, a request for the 310 APPENDIX. Signature of request. Particulars to be stated in request. Production of documents of title and other proof. Copies for Patent Office. Body corpo- rate. Entry of orders of flic I'rivy Coiiiifil or of the Court. Entry of pay- ment of ftea on issue of certificate. entry of his name in tlio register as such complete or partial pro- prietor of the patent, or of such share or interest therein, as the case may be, shall be addressed to the comptroller, and left at the Patent Office. 66. Siich request shall in the case of individuals be made and signed by the person rcquii-ing to be registered as proprietor, or by his agent duly authorized, to the satisfaction of the comptroller, and in the case of a body corporate l)y their agent authorized in like manner. 67. Every such request shall state the name, adch-ess, and descrip- tion of the person claiming to be entitled to the patent, or to any share or interest therein, as the case may be (hereinafter called the claimant), and the particulars of the assignment, transmission, or other operation of la-sv, by virtue of which he requires to bo entered in the register as proprietor, so as to show the manner in Avhich, and the person or persons to whom, the patent, or such share or interest therein as aforesaid, has been assigned or trans- mitted. 68. Every assignment and every other document containing, giving effect to, or being evidence of, the transmission of a patent or affecting the proprietorship thereof as claimed by such request, except such documents as are matters of record, shall bo produced to the comptroller, together with the request above prescribed, and such other proof of title as he may require for his satisfaction. As to a document Avhich is a matter of record, an official or certified copy thereof shall in like manner be produced to the comptroller. 69. There sliall also be left willi llie request an examined copy of the assignment or oilier docunicnt above required to be pro- duced. As to a document Mliieh is a matter of record, an ofiicial or certified copy shall be left Avith the request in lieu of an examined copy. 70. A l)ody corporate may be registered as projn-ietor by its corporate name. 71. "Where an order 1ms been made by lier Majesty in Council for tlio extensifju of a ])ateiit for a fiirtlier term or for the grant of anew patent, or where an order lia.s Iteen made by the Court for tlio revocation of a patent or the rectification of the regi.ster under section 90 of the said Act, or (jlherwiso afl'ectiiig the validily or proprif'torship of tlie ]»aleiit, the ])er8on in wliose favour such oider has been made shall fortlnvith leave at Ihe Patent Office an ofiico coj^y of such order. The register shall thereupon l)e rectified or the purport of Huch order shall otherwise b(j duly entered in the register, as the case may bo. 72. Upon the issue of a certificate of payment under Pule 45, the comptroller shall cause to bo entered in the Pegister of Patents a record of the amount and date of payment of the fee on such certificate. PATENTS RULES, 1883. 311 73. If a xmtentee fails to make any prescribed payment -within Entry of the prescribed time or any enlargement thereof duly granted, such fees'"^ ° ^^^ failure shall be duly entered in the register. 74. An examined copy of every license granted under a patent Entry of shall be left at the Patent Office by the licensee, mth a request that a licenses, notification thereof may be entered in the register. The licensee shall cause the accuracy of such copy to be certified as the comptroller may direct, and the original license shall at the same time be produced and left at the Patent Office if required for further verification. 75. The register of patents shall be open to the inspection of the Hours of public on every week day between the hours of ten and four, except mspection on the days and at the times following : — " * (a) Christmas Day, Good Friday, the clay observed as Her Majesty's birthday, days observed as days of public fast or thanksgiving, and days observed as holidays at the Bank of England ; or (b) Days which may from time to time be notified by a placard posted in a conspicuous place at the Patent Office ; (c) Times when the register is required for any purjoose of official use. 76. Certified copies of any entry in the register, or certified Certified copies copies of, or extracts from, patents, specifications, disclaimers, of documents, affidavits, statutory declarations, and other public documents in the Patent Office, or of or from registers and other books kept there, may be furnished by the comptroller on payment of the prescribed fee. Power to Dispense with Evidence, &c. 77. Where, under these Pules, any person is required to do any act or thing, or to sign any document, or to make any declaration on behalf of himseK or of any body corporate, or any document or evidence is required to be produced to or left with the comptroller, or at the Patent Office, and it is shown to the satisfaction of the comptroller that from any reasonable cause such person is imable to do such act or thing, or to sign such document, or make such declaration, or that such document or evidence cannot be produced or left as aforesaid, it shall be lawful for the comptroller, with the sanction of the Board of Trade, and upon the production of such other evidence, and subject to such terms as they may think fit, to dispense with any such act or thing, document, declaration, or evidence. Eepeal. 78. All General Eules made by the Lord Chancellor, or by any Repeal, other authority, under the Patent Law Amendment Acts, and in force on the 31st day of December 1883, shall be and they are hereby repealed as from that date, without prejudice, nevertheless, to any application then pending. Dated the 21st day of December 1883. (Signed) J. CHAMBEELAIN, President of the Board of Trade. 312 APPENDIX. EULES EEGUL.\TING THE PEACTICE AND PEOCEDUEE ON APPEALS TO THE LAW OFFICEES. I. "When any person intends to appeal to the lavr officei* from a decision of the comptroller in any case in ■\vliicli sncli appeal is given by the Act, he shall -within 14 days from the date of the decision appealed against hie in the Patent Oliice a notice of such his intention. II. Suc'li notice shall state the nature of the decision appealed against, and whetlier the appeal is from the whole, or part only, and if so, what part of such decision. III. A copy of such notice of intention to appeal shall be sent by the i^arty so intending to appeal to the law officers' clerk at room 549, Eoyal Coui'ts of Justice, London ; and when there has been an opposition before the comptroller, to the opponent or opponents : and when the comptroller has refused to seal a patent on the ground tliat a previous application for a patent for the same inven- tion is pending, to the prior applicant. TV. t'pon notice of appc^al being tiled, the comptroller shall forthwitli transmit to the law officers' clerk all the papers relating to the matter of the application in respect of which such appeal is made. Y. No appeal sliall bo entertained of Avliich notice is not given within 14 da3s fr(jm tlio date of the decision appealed against, or such further time as the comptroller may allow, except by special leave upon application to the law ctiiicer. VI. Seven days' notice, at least, of the time and place appointed for the hearing of any appeal, shall be given by the law officers* clerk, uidess special leave be given by tlie law officer that any shorter notice bo given. VII. Such notice shall in all cases bo given to tlio comptroller and the appellant ; and, wlion there has been an opposition before the comptroller, to the opponent or opponents ; and, wlion tlxo comiitrollcr lias refused to seal a patent on tlie ground tliat an a]iplication for a p.ilciil fni- flic same invention is pending, to the prii»r applicant. VIII. The evidence used on appeal to tlie law officer shall bo tlio same as that used at the liearing before the comptroller ; and no further evidence shall bo given, save as to matters which have occurred or com<> to the knowledge of either party, after tlu> date of tlie decision ajjitealed against, except with the leave (tf the law officer upon aiii>li Board of Trade. 2 1st December 1883. Approved : (Signed) CIIAULFS C. COTKS. llMUr-llKT J. CiLADSTONK, Lords Conuiiissionors of ]Icr Maifstv's Treasury. 4th December 1883. 10 10 10 10 15 15 20 20 20 20 3 7 10 10 2 10 1 4 1 5 5 5 PATENTS RULES, 1883. 315 THE SECOND SCHEDULE. FOEMS. Page A. — Form of Application for Patent 315 Al. — ,, ,, ,, Communicated from Abroad 316 B. — ,, Provisional Specification 316 C. — ,, Complete Specification 317 D. — ,, Opposition to Grant of Patent 317 E. — ,, Application for Hearing by Comptroller 318 F. — ,, ,, to amend Specification or Drawings 318 G. — ,, Opposition to Amendment of Specification or Drawings .... 318 H. — ,, Application for Compulsory Grant of License 319 Hi. — ,, Petition for Compulsory Grant of Licenses 319 I. — ,, Opposition to Compulsory Grant of License 320 J. — ,, Application for Certificate of Payment or Renewal 320 K. — ,, Application for Enlargement of Time for Payment of Renewal Pee 321 L. — ,, Request to enter Name upon the Register of Patents 321 M. — ,, Request to enter Notification of License in Register 322 N. — ,, Application for Duplicate of Letters Patent 322 O. — ,, Notice of intended Exhibition of Unpatented Invention 322 P. — ,, Request for Correction of Clerical Error 323 Q. — ,, Certificate of Comptroller 323 R. — ,, Notice for Alteration of an Address in Register 323 S. — ,, Application for Entry of Order of Privy Council in Register . . 324 T.— ,, Appeal to Law Officer 324 Patents, Designs, and Trade Marks Act, 1883. [patent.] Form A. Application for Patent. (o) , do solemrily and sincerely declare that in possession of an invention for {b) that the true and first inventor thereof ; and that the same is not in use by any other jjerson or persons to the best of knowledge and belief ; and humbly pray that a patent may be granted — for the said invention. And make the above solemn declaration conscientiously believing the same to be true, and by vii'tue of the provisions of the Statutory Declarations Act, 1835. . (0 . Declared at {d) , in the , this day of , 18—. Before me (e) . [Declared at (d) , in the , this day of , 18 — . Before me (e) . Note. — "Whei'e the above declaration is made ovit of the United Kingdom, the words "and by vii'tue of the Statutory Declarations Act, 1835," must be omitted, and the declaration must bo made before a British Consular Officer, or, where it is not reasonably practicable to make it before such officer, then before a i^ublic officer duly authorised in that behalf. (a) Here insert name, fuU address, and calling of applicant or applicants. {h) Here insert title of invention. (c) Signature of applicant or applicants. (d) If declared by more than one applicant, and at different times or places, insert after " Declared" the words " by the above-named." (e) Signature and title of the person before whom the declaration is made. (/) If not required as in note {d), strike out part within brackets. 316 APPENDIX. Patents, Designs, and Trade Marks Act, 1883. [PATE>T.] Form Al. Application for Patent for Inventions Communicated from Abroad. I (./) , of , in tho county of , do sulomuly aiul sincerely declare that I am in possession of an invention for {b) , which invention has been communicated to me from abroad by (r) , that I claim ta]ii'r (but on one* side only) witli a margin of two iiuhi-H on left hand •)f pajxr. The Provisional Specification and tho " Dujdicato " thereof must be signed by the ajt])li('ant or his agent on tho last Hheot. the dato being first inserted as follows : " Dat.d this day of , 18—." (a) llfff inw>rt title, nn in dflarntion. (A) lI«Tf in(««Tt iiiiinr', full addrr k«, iukI rnlliiiff of iij>])lip«nt or applicniitj*, as in dcrlitmticin. (e) Hero innort nhort dcucription of invention. PATENTS RULES, 1883. 317 Patents, Designs, and Trade Marks Act, 1883. [patent.] Form C. Complete Specification. (To be furnislied iu Dui)licate — one unstamped.) (a) . {h) , do hereby declare the nature of tion for and in wbat manner tbe same is to be performed, to be particularly described and ascertained in and by the following state- ment : (c) Note. — This document must form the commencement of the complete Specification ; the continuation to be upon wide-ruled foolscap paper (but on one side only) with a margin of two inches on left hand of paper. The comjjlete Specification and the "Duplicate" thereof must be signed by the appHcant or his agent on the last sheet, the date being fii'st inserted as follows : — " Dated this day of , 18—." (a) Here insert title, as in declaration. (b) Here insert name, full address, and calling of applicant or applicants, as in declaration. (c) Here insert full description of invention, tchich must end with a distinct statement of claim or claims, in the following forms : " Having' now particularly described and ascertained the nature of my said invention, and in what manner the same is to be performed, I declare that what I claim is — "(1) "(2) " (3) ." Here state distinctly the featvures of novelty claimed. Patents, Designs, and Trade Marks Act, 1883. [patent.] Poem D. Form of Opposition to grant of Patent. [To he accompanied by an unstamped cojiy.'] *I hereby give notice of my intention to oppose the grant of letters patent upon application No. of , ajspHed for by upon the groundf . To the Comptroller, Patent Office, 25, Southampton Buildings, Chancery Lane, London, W.C. (Signed)t * Here state name and full address. t Here state upon which of the grounds of opposition permitted by section 1 1 of the Act the grant is opposed. X Here insert signature of opponent or agent. 318 APPENDIX. Patents, Designs, and Trade Marks Act, 1883. [patent.] Form E. Form of Application for Hearing by the Comptroller. Ix Cases of Eefi'sal to An kpt, Orrosixiox, or Arplicatioxs for Amendments, &e. Sir, of fa) hereby apply to lie hearcl in roferenco to and request that I may receive due notice of the daj' fixed for the hearing. Sir, Your obedient Servant. To the Comptroller, Patent Office, 25, Southampton Buildings, Chancery Lane, London, W.C. [a) Here insert full address. Patents, Designs, and Trade Maries Act, 1883. [patent."] Form F. Form of Application for Amendment of Specification or Drawings, seek leave to amend the si)Ocification of Letters Patent No. of 188 — , as shown in red ink in the copy of the original specification hereunto annexed . My reasons for making this amendment are as follows f ■ (Signed) . To thf CdiiiptroUer, Patent OJfice, 25, Southampton Buildinys, Chancery Lane, London, W.C. * Here state name and full address of applicant or patentee, t Here state reasons for seeking amendment ; and wliere tlio applicant is not the patentee, state what interest lie possesses in the letters patent. Patents, Designs, and Trade Marks Act, 1883. [patent.] Form (i. Form of Opposition to Amendment of Specification or Drawings. [7'o Ic arcompaniid hy an unstamped copy."] hereby give notice of objection to the proposed amendment of tho Bpocification or drawings of Lottors Patent No. of 18S — for the following reason : f • (Signed) • 'I'lj the Coriijitrdller, Patent OJfice, 25, Southampton Buildings, Chancery Lane, London, W.C. * Hero state nanio and fidl address of opponent, t Hero state reason of opposition. PATENTS RULES, 1883. 319 Patents, Designs, and Trade Marks Act, 1883. [patent.] FoRii H. Form of Application for Compulsory Grant of License. [To he accompanied hy an unstamped copy.'] * hereby request you to bring to tbe notice of the Board of Trade the accompanying petition for the grant of a license to me by f . (Signed) . Note. — The petition must clearly set forth the facts of the case and be accompanied by an examined copy thereof. See below. To the Comptroller, Patent Office, 25, Southampton Buildings, Chancery Lane, London, W.C. * Here state name and full address of applicant. t Here state name and addi-ess of patentee, and number and date of his patent. Patents, Designs, and Trade Marks Act, 1883. Form Hi. Form of Petition for Compulsory Grant of Licenses. To the Lords of the Committee of Privy Council for Trade. The petition of (o) — of in the county of , being a person interested in the matter of this petition as hereinafter described : — Sheweth as follows : — 1. A patent dated No. was didy granted to for an invention of {h) . 2. The nature of my interest in the matter of this petition is as follows : — (c) 3. {cl) Having regard to the circumstances above stated, the petitioner alleges that by reason of the afoi-esaid default of the patentee to grant licenses on reasonable terms (e) Your petitioner therefore prays that an order may be made by the Board of Trade (/) or that the petitioner may have such other relief in the j^remises as the Board of Trade may deem just. (a) Here insert name, full address, and description. (h) Here insert title of invention. (c) Hei'e state fully the nature of petitioner's interest. {d) Here state in detail the circumstances of the case under section 22 of the said Act, and show that it arises by reason of the default of the patentee to grant licenses on reasonable terms. The statement of the case should also show as far as possible that the terms of the in-oposed order are just and reasonable. The paragraphs should be numbered consecutively. (e) Here state the ground or grounds on which relief is claimed in the lan- guage of section 22, sub-sections («), (i), or (c), as the case may be. (/) Here state the purport and effect of the proposed order and the terms as to the amount of royalties, security for payment, or otherwise, upon which the petitioner claims to be entitled to the relief in question. 320 APPENDIX. Patents, Designs, and Trade Marks Act, 1883. [patent.] Form I. Form of Opposition to Compulsory Grant of License. hereby pivo uotice of objection to the application of for the compulsory- grunt of a license under I'ateut No. of 188 (Signed) - To the Comptroller, Patent Ojfice, 25, Southampton Bnihlings, Chancery Lane, London, ]V.C. • Hero state name and f idl address. Patents, Designs, and Trade Marks Act, 1883. FoKM J. Application for Certificate of Payment or Renewal, hereby transmit the fee prescribed fur tlie continuation in force of Patent No. , of 18 , for a further period of Name* . Address , To the Comptroller, Patent Office, 25, Southampton Buildings, Chancery Lane, London, 11'. C. * Here insert name and full address of patentee or his agent. Certificate of Payment or Renewal. [patent.] Letters Patent No. of 188 . 18 This is to certify that did this day of 18 , mako tho prescribed puviiu'nt of £ in respect of a period of from , and that )>y virtue of such payment tho righta of remain in force.' (Seal.) Patent Office, London. * Sco section 17 of tho Patontii, DoHignH, nnd Trade Marks Act, 1883. PATENTS RULES, 1883. 321 Patents, Designs, and Trade Marks Act, 1883. [patent.] Form K. Form of Application for Enlargement of Time for Payment of Renewal Fee. Sir, I HEREBY apply for an enlargement of time for month — in wliicli to make the payment of £ upon my Patent, No. of 188—. I am, Sir, (a) . Your obedient Servant, To the Comptroller, Patent Office, 25, Southampton Buildings, Chancery Lane, London, W. C, (a) Here insert full address to which receipt is to be sent. Patents, Designs, and Trade Marks Act, 1883. [patent.] Form L. Form of Request to enter Name upon the Register of Patents, and of Declarations in support thereof. I (a), hereby request that you will enter (i) name (c) in the Register of Patents : — id) claim to be entitled (e) of the Patent No. of 188 — , granted to (/) for {cj) by virtue of (A) . And in proof whereof I transmit the accompanying (i ) with an examined copy thereof (/). I am. Sir, Your obedient Servant, To the Comptroller, Patent Office, 25, Southampton Buildings, Chancery Lane, London, W. C. («) Or We. Here insert name, full address, and description. [b] My or our. (c) Or names. {d) lor We. {e) Here insert the nature of the claim. (/) Here give name and address, &c. of patentee or patentees. {g) Here insert title of the invention. \h) Here specify the particulars of such document, giving its date, and the parties to the same, and showing how the claim here made is substantiated. (j) Here insert tlie nature of the document. (./) Where any docmnent which is a matter of record is required to be left, a certified or official copy in heu of an examined copy must be left. T. 322 APPENDIX. Patents, Designs, and Trade Marks Act, 1883. [patent.] Form M. Form of Request to Enter Notification of License in the Register of Patents. I UEREBY transmit an examined copy of a license granted to me by , under Patout No. of 188 — , as well as the original license for Teiification, and I have to request that a notification tlieroof may be entered in tbe register. I am, Sir, (a) . Your obedient Servant, To the Comptroller, Patent Office, 25, Southampton Buildings, Chancery Lane, London, W.C. (a) Here insert full address. Patents, Designs, and Trade Marks Act, 1883. [patent.] Fokm N. Application for Duplicate of Patent. Date. Sin, I REGRET to have to inform you that the Letters Patent, dated * , No. , granted to , for an invention of f , have been % . I beg therefore to apply for the issue of a duplicate of such Letters Patent.§ [Signature of Applicant.] To the Comptroller, Patent Office, 25, Southampton Buildings, Chancery Lane, London, W.C. • Here insert date, No., name, and full address of patentee. t Hero insert title of invention. X Here insert tlic word " destroyed " or " lost," as the case may be." \ Here state interest possessed by applicant in tlio letters i)ateut. Patents, Designs, and Trade Marks Act, 1883. [rATE.\T.] I'ultM (). Notice of Intended Exhibition of an Unpatented Invention. Ini I -by K'^'" ""''"■'■"' '">' i 11 1< 'lit loll to Lxluldt ;i of ut tlicj lOxbibition, whirh + of 18 — , under tlio pro- vimoDH of tho I'utonts, Dcsi^uH, and Trudo Marks Act of lN8.'l. I herewith oncloso . (Signed) . To the ComjitroUrr, Patent ffffirr, 2.5, Southampton Buildings, Chancery Lane, London, W.C. • IItion of invention, with drawings if necessary. PATENTS RULES, 1883. 823 Patents, Designs, and Trade Marks Act, 1883. [patent.] FoRii p. Form of Request for Correction of Clerical Error. Sir, I HEREBY request that the following clerical error (a) may be cor rected in (&). Signature Full Address To the Comptroller, Patent Office, 25, Southampton Buildings, Chancery Lane, London, W.C. (a) Or errors. {b) Here state whether in appUcatioii, specification, or register. Patents, Designs, and Trade Marks Act, 1883. [patent.] Form Q. Certificate of Comptroller-General. Patent Office, London, 188—. I, , Comptroller- General of Patents, Designs, and Trade Marks, hereby certify Patents, Designs, and Trade Marks Act, 1883. [patent.] Form E. Form of Notice for Alteration of an Address in Register. Sir, («) hereby request that address now upon the Eegister may be altered as follows : — ih) Sir, Your obedient Servant, To the Comptroller, Patent Office, 25, Southampton Buildings, Chancery Lane, London, W.f. (a) Here state name or names and full address of aj^pUcant or applicants, (i) Here insert full address. y2 324 APPENDIX. Patents, Designs, and Trade Marks Act, 1883. [patent.] Fohm 8. Form of Application for Entry of Order of Privy Council in Register. («)' hereby transmit an office copy of an Order in Council with reference to (6). Sii-, Your obedient Servant, To the Comptroller, Patent Office, 25, Southampton Buildings, Chancery Lane, London, W.C. (a) Here state name and full address of applicant. (*) Here state the purport of the order. Patents, Designs, and Trade Marks Act, 1883. [patent.] Form T. Form of Appeal to Law Officer. I, (a) of (a) huix'bj' giro notice of luy intention to appeal to the law officer from (6) of the Comptroller of the day of 188 — , whereby he(c) No. ((/) of the year 188— (ci). Signature Date . N.B. — This notice has to bo .sent to the Comptroller- General at the Patent Office, London, W.C, and a copy of same to the Law Officer's Clerk, at Eoom 549, lloyal Courts of Justice, London. 2l8t December, 1883. (a) Hero insert name and full address of appellant. (i) Hero insert "the decision" or "that part of the decision," as the case may be. (c) Here insert "refused for allowed] application for patent," or "refused [or allowed] application for leave to amend patent," or otherwise, as the case may bo. (d) Inaort number and year. (Signoit trade markj. TrariMlntion of forr>ign charactcn. y. On receipt of the ap]tlioation, the comptroller shall furnish the applicant with an acknowledgment thereof. 10. ^^^lere application is made to register a trade mark which was used by the applicant or his predecessors in business before the 13th of August, 1875, the application shall contain a statement of the time during wliicli and of the person ])y who'm it has been so used in resjiect of the goods mentioned in the ajiplication. 11. Subject to any other directions that may be given by tlio comptroller, all applications, notices, counter-statements, repre- sentations of marks, papers having representations affixed, or other documents required by the said Act or by these Rules to be left with or sent to the comptroller or to the Cutlers' Company, shall bo upon foolscap jjaper of a size of 13 inches by 8 inches, and shall have on the left-hand part thereof a margin of not less than one inch and a-half . 12. In the case of an application for the registration of a trade mark used on any metal goods, other than cutlery, edge tools, and raw steel, the applicant shall state in the specification of goods in the form of application of what metal or metals the goods in respect to which he apphes are made. 13. Subject to any other directions that may be given by the comptroller, three representations of each trade mark, exci'pt in the case of marks applied for in classes 23 to So inclusive, mu.st be sup- plied upon paper of the size aforesaid, and must be of a durable nature. One of such representations must be made ujtou or afii.xed to the form of application, the others upon separate half-.sheets. In the case of trade marks exceeding the limits of the foolscap paper of the size aforesaid, such marks may bo pasted and folded upon the sheets of f(jolscap. In the case of marks applied for in classes 23 to 3.') inclusive, the applicant shall sujjply four representations of each nuirk for each class. AMiero a drawing or other representation or specimen cannot be given in manner aforesaid, a specimen or copy of the trade mark may be sent eifln-r of full size or on a r(>duced scal»>, and in sudi form as the comptroller may tliink most convenieiit. The compfrollcr may, if dissatislied with the representation of a trade mark, require a fresh nqn-esentation, eitlier liefore he proceeds with the application or before he registers the trade mark. Thn comjilnjller nuiy also, in exce]>tional cases, deposit in th(> I'atent Ollico a specimen or copy of any trade mark wliich cannot conveniently l)e shown by a repro8ontati«»n, and may refer thereto in till- register in such manner as he may think lit. 11. When an application relates to a series of trade marks differ- ing from one nnotfier in respect of the particulars mentioned in section (U't of the said Act, a representation of each tradn mark of the Heri«'S sliall be mudo or aflixed uj)on the form of application and ul.so upon ea
  • . \\Tiorever a mark consistB of or includes words j>rinted in other than Koman character, there shall be given at the foot or on the l»nck of ea«h representation a translation of such words, signed by the applicant or his agent. TRADE MARKS RULES. 327 16. Any application, statement, notice, or other document autho- Mode of rised or required to be left, made, or given at the Patent Office, or ^J^ices^ &(,, to the comptroller, or to any other person under these Eules, may be sent by a prepaid letter through the post, and if so sent shall be deemed to have been left, made, or given respectively at the time when the letter containing the same woidd be delivered in the ordinary course of post. In proving such service or sending, it shall be sufficient to prove that the letter was properly addressed and put into the post. Exercise of Discretionary Powers. 17. Before exercising any discretionary power given to the comp- Hearing by troller by the said Act adversely to the ap]3licant for registration of comptroUer. a trade mark, the comptroller shall give him ten days' notice of the time when he may be heard personally or by his agent before the comptroller. 18. Within five days fi'om the date when such notice would be Notice of wish delivered in the ordinary coiu-se of post, the applicant shall notify ^^fOTe^comp- to the comptroller whether or not he intends to be heard upon the troller! matter. 19. The decision of the comptroller in the exercise of any such ^^°VJ;^^*^°^ °^ discretionary power as aforesaid shall be notified to the applicant. decision. Appeal to the Board of Trade. 20. AVhere the comptroller refuses to register a trade mark, and :^PP®?'^ t° the applicant intends to appeal to the Board of Trade from such xrade. refusal, he shall, within one month fi-om the date of the decision appealed against, leave at the Patent Office, Trade Marks Branch, a notice of such his intention. 21. Such notice shall be accompanied by a statement of the Statement of grounds of appeal, and of the applicant's case in support thereof. appeal 22. The applicant shall forthwith on leaving such notice send a Copy of notice copy thereof to the secretary of the Board of Trade, No. 7, AVhite- ^^^^^^'^'^ °* hall Gardens, London. 23. The Board of Trade ma}^ thereupon give such directions (if Directions by any) as they may think fit with respect to evidence, or otherwise, ^o^^d. for the purpose of the hearing of the appeal by the Board of Trade, or for the piu'pose of their referring the appeal to the Court to hear and determine the same. 24. "Where the Board of Trade intend to hear the appeal, seven Notice of time days' notice, or such shorter notice as the Board of Trade may in °* Clearing, any particular case direct, of the time and place appointed for the hearing, shall be given to the comptroller and the appHcant. Advertisement of Application. 25. Every application shall be advertised by the comptroller in Advertisement the ofiicial paper, duiing such times, and in such manner as the °* application. comptroUer may direct. If no representation of the trade mark be inserted in the official paper in connexion with the advertisement of an application, the 328 APPENDIX. Definition of official paper. Means of ad- vertising trade mark to be supplied to official paper. Advertisement of series. comptroller shall refer in such advertisement to the place or places where a specimen or representation of the trade mark is deposited for exhibition. 26. The official paper for the pniiioses of these Rules shall bo some paper published under the direction of the Board of Trade, or such other paper as such Board may from time to time direct. 27. For the purposes of such advertisement the applicant may be recjuired to furnish a wood block or elec•trot^•;l1e (or more than one, if necessary) of the trade mark, of such dimensions as may from time to time be directed by tho comptroller, or with such otlier in- fonnation or means of advertising- tlie trade mark as maybe required by tho C(miptroller ; and tli(> comptroller, if dissatisfied Avitli tlio block or electrotype furnislied by the applicant or liis agent, may require a fresh block or electrot^1)e before proceeding with the advertisement. 28. When an application relates to a series of trade marks differ- ing from one anotlier in respect of the particidars mentioned in section GO of the said Act, the applicant may be required to furnish a wood block or electrotype (or more than one, if necessary) of any or of each of the trade marks constituting tho series ; and the comptndler may, if ho thinks fit, insert witli t]u> advertisement of the application a statement of tlie mauiier in respect of which tho several trade marks differ from one another. Manner of liriii(,niig case before Court. Mfidoof ((iving ti'itii c that tho matter hnii Impii brought b«for») tho Court. OrrosiTiox to Reoistratiox. 29. — (1.) "Wliere a case stands for the determination of tlie Court, undtT the provisions of section 09 of the* said Act, tho comp- trcjller shall recjuire the ai)])li(ant Avilliin one month, or sudi further time as tho comptroller nmy allow, to issue a siunmons in tho clianibers of a ji dge of ller Majesty's Higli Court of Justice for an order that notwithstiinding llie op])osition of whicli notice lias been given tlie registrati(»n of llio trade mark b(> ])ro- ceeded witli bj- the coniptrolk'r, or to take such other imiceedings ns may )»o proper and necessary for tlio determination of tho caso by tho Court. (2.) Tho ai)iiliciiiit sliiill tlicrcupon issue sucli sumiiKins, or take such otlier ]»roceeding.s as ul'oresaid, within the ])eriod of ono moiitli al»ove named, or sudi further lini(< ns tlie coin|i(roller may allow, and shall also within llic like jMiiod give nf mark from rcgijrtcr. therein, and declaring tliat tlie particulars above described com- prise every matorial fact and document affecting tlie proprietorship of the trade mark as claimed by such request. .38. The claimant shall furnish to the comptroller svuh other proof of title and of the e.xi.stenco and ownership of such goodwill as aforesaid as he may rf<|uire for his satisfaction. 39. A body corporate may be registered as proprietor by its corporate name. 40. The term " applicant " in Eules 17, 18, and 19 shall include each of several persons claiming to be registered as proprietor of the same trade mark. 41. Whether all of such per.sons so claiming require to lie heard before the comptroller or not, he may, before exercising the discre- tion vested in him by section 71 of the said Act, require such persons, or any or either of them, to submit a statement in writing within a time to be notified by him, or to attend before him and mako oral explanations with respect to such nuxtters as the comptroller may require. 42. Where each of several persons claims to be registered as proprietor of the same trade mark, and the comptroller refuses to register any of them until their rights have been determined acciudiiig to law, the manner in which the rights of such claimants may be submitted to the Court by the comptroller or if the comptroller so rccjuire, b}- the claimants, shall, unless the Court otherwise order, bo by a sjiecial case; and such special case shall bo filed and proceeded with in like nninner as any other special case submitted to the Courl. or in such other nuinner as the Court may direct. ■{.]. Where the speeiiil case is to be submitted to the parties, it may be agreed to by tliem, or if they differ, may bo settled by the eoiiiptroUer on payment of the prescribed fees. 44. Where an order has been made by the Court in either of the following cases, viz. : — (a) Allowing an appeal under section (i2 of the said Act ; (b) Disallowing an opposition to registration under section (i9; or, (c) Tnder the provisions of sections 72. 90, or 92 of the said Act, the pr-rsoii in whose favour such order has been nuule, or sucli one of them, if more than one, as the c(tmpt roller may direct, hhall forthwith leave at the Patent Ollire an oHiee cojiy of sticll (»rdplica- tion n-ceived by comp- troller. Similarity of f iroceedingN at I»ndon and at Sheffield. Ccrtiflcato by comptroller. the said Act, may be amended, ami any in-ogidarity in procedure whicli in the opinion of the comptroller may be obviated without detriment to tlie interest.s of any person, may be corrected, if the comptroller think fit, and on such terms as he may direct. Eni^vrgemext of Time. 52. The time prescribed by these Ivules for doiiip^ any act, or takinp any proceeding thereunder, may be enlarged Ity the comp- troHer, if he tliink fit. and upon sucli notice to otlier parties, and proceedings thereon, and upon such terms, as he may direct. Cutlers' Company. 53. All applications to the Cutlers' Company for registration of a trade mark, niidcr section 81 of the said Act. sliaU be in duplicate, accompanied by the i»rescribed fees and representations. 54. The Cutlers' Company shall, within seven days of the receipt by them of an application to register a trade mark, send the comp- trolk-r one copy of .such application, by way of notice thereof, together with two representations of the mark for each class for which tin,' applicant seeks registration. 55. — (1.) The time within whieli the comptroller shall give notice to the Cutlers' Comjtany of any objection he may have to the accept- ance of an application for registration made to the said company shall be one month from the date of the receipt by the comptrolliT of tlie notice from the said company of the making of the application. ^2.) If no such objection is made by the comptroller, tho Cutlers' Company shall reliciition. In tne case of a Tradu Mark claimed in one of tlio classes 23 to 3.3, three of these additional representations of tho mark must accompany tho form of application. Patents, Designs, and Trade Marks Act, 1883. [trade JLUiKS.] n. Form of Appeal to Board of Trade on Refusal of Comptroller to Register a Trade Mark. Sir, 1 iiEHKiiv ^'ivo notice (jf my intention to appeal against your decision upon my ai)plication to register a Trade Mark No. in Class for , and 1 beg to «ubmit my case* for tho decision of the Board of Trade. I aui, Sir, Your obedient Servant, To the Comptroller, Piitnit OjDirr, Truili Murki Jlnnich, 25, Huuthampton Jluildtii'jB, Londou. • The BtntcmfTiit of th« cnjut to l)e written upon foolneap paper (on one Bido only), with u mur(pu of two iucbea on tho luft-liand hide thereof. TRADE MARKS RULES. 337 Patents, Designs, and Trade Marks Act, 1883. [teade marks.] I. Fee for Registration of a Trade Mark. Sir, In reply to your request I hereby transmit the prescribed fee for the registration of the Trade Mark No. , in Class . I am, Sir, Your obedient Servant, To the Comptroller, Patent Office, Trade Marks Branch, 25, Southampto7i Bmhlings, London. Patents, Designs, and Trade Marks Act, 1883. [trade marks.] J. Notice of Opposition to Application for Registration. [To be accompanied by an unstamped duplicate.] In the matter of an Application, No. , by , of . Sir, Notice is hereby given that I •, of , oppose the Eegis- tration of the Trade Mark advertised under the above number for Class in the " Trade Marks Journal" of the day of 188 — , No. , page . The grounds of opposition are as follows : — To the Comptroller, Patent Office, Trade Marks Branch, 25, Southampton Buildings, London. To be dated and signed at the end by the opponent or his soUcitor. Patents, Designs, and Trade Marks Act, 1883. [trade marks.] K. Request to Enter Name of subsequent Proprietor of Trade Mark upon the Register, with Declaration in support thereof. I» («) hereby request that you will enter (b) name (c) in the Eegister of Trade Marks as proprietor of the Trade Mark No. in Class . {d) entitled to the said trade mark and to the goodwill of the business concerned in the goods with respect to which the said trade mark is registered. (e) . And I do solemnly and sincerely declare that the above several state- ments are true, and the particulars above set out comprise every material fact and document affecting the proprietorship of the said trade mark as above claimed. (/) And I make this solemn declaration, conscientiously believing the T. Z 338 APPENDIX. same to be true, aud bv virtue of the provisions of the Statutorj' Declara- tions Act, 1S3.5. Declared at this day of 188—. l.f ^'^ • Before mc, (70 . To the Comptrolhr, Patent Office, Trade Marls Branch, 25, Soti(ham])ton linihlinf/s, London. (a) Or Wc. Here insert uamc, full addif&ii, aud description. !b) My or our. e) Or names. (rf) I am, or TVe are. («) Here state whether trade mark transmitted by death, marriage, bank- ruptcy, or other operation of law, and if entitled by assiprnment state the par- ticulars thereof, a.s, <•.(/. "by deed dated tlie day of 188 — , made be- tween so-and-so of the one part." (/) This paragraph is not required when the declaration is made out of the United Kingdom. {(f) To be signed here by the person making the declaration. (A) Signature and title of the authority before whom the declaration is made. Patents, Designs, and Tnulo Marks Ad, 1883. J"ti:ade mauks.] L. Request for Certificate of Refusal to Register a Trade Mark in use before 13th August. 1875. In tliu matter of an Applicatiim tor rej^istration ol' an old Trade Mark, No. in Clas.s . Sir, — I, , of , the applicant in the above matter, hereby request you to furnish nie with your certificate of refusal to register the said trade mark. Dated thi.s day t>f \HH—. • 7o the Compirnller, Patent Office, 'J'rmle Marhit Jlranch, 25, Souihaiiijiion Unildinyn, London. • Sigimturo of applicant. Patents, DubigUH, iiiul Tnidt' Murksi Act, 1883. [tKADE MAIlKH.] M. Notice of Application for Alteration of Address on Register of Trade Marks. In the matter of the Trade Mark, No. , registered in Cluwt . Sin, — Notice in liereby given that I of the regiHtorod pro- prietor of tho tnido mark numbered as above, demn' that my addrcsi* on the K'-gistcr of Trudo .Minks be altcnnl to . Dated thin dav of 188—. 7'o the Ciimptrollrr, I'liUiit Offitrt, Trndr Mnrku Uranrh, 25. Siiuthumpton Jtuildingi, London, • yignaturc of proprietor. TRADE MARKS RULES. 339 Patents, Designs, and Trade Marks Act, 1883. [trade maeks.] N. Notice of Application for Alteration or Rectification of Register of Trade Marks. In the matter of the Trade Mark, No. , registered in Class in the name of . Sir, — Notice is hereby given, that by an order of the Court, made on the day of 188 — , it was directed that the entry on the Register of Trade Marks, in respect of the trade mark numbered as above, shouM be rectified in the manner therein specified. An office copy of the order of the Court is enclosed herewith. Dated this — dav of 188—. To the Comptroller, Patent Office, Trade Maries Branch, 25, Southampton Buildings, London. * To be signed by the person interested or his agent. Patents, Designs, and Trade Marks Act, 1883. [trade mark.] 0. Form of Application by Proprietor of Registered Trade Mark to Cancel Entry on Register. Trade Mark, No. Class advertised in " Trade Marks Journal," No. , page . Name of registered proprietor or firm . Place of business . I, the undersigned , of [o?- 1, the undersigned , a member of the firm of , of -, on behalf of my said firm] , apply that the entry upon the Register of the Trade Marks in Class of the Trade Mark No. may be cancelled. The day of 188—. (Signed) . This is the statement marked "0" referred to in the declaration of , made before me the ■ of , 188—. Patents, Designs, and Trade Marks Act, 1883. P. Form of Declaration in Support of Application for Cancellation of Trade Mark by Owner. I, of [or I, — , a member of the firm of of ], do hereby solemnly and sincerely declare, to the best of my knowledge and belief, as follows : — (1) The application signed by me, and dated the day of , 188 — , and marked with the letter " 0," and shown to me at the time of making this declaration, is true. (2) I am the person whose name appears on the Register of Trade Marks as the proprietor of the trade mark referred to in the said application marked with the letter " O." z2 ;U0 APPENDIX. [or My said fiiiu is tho firm whoso uarne appears ou the Register of Trade Marks as the proprietor of the trade mark referred to in the said applica- tiuu marked with tho letter " O." And I make this soknnn deehiration conscientiously believing tho same to be tnie, and bv virtue of the provisions of tho Statutory Declarations Act, 1835. (Signed) . Declared at this day of , 188—. Before me, If the declaration bo made before a commissioner to administer oaths it will require to bo stamped with a 2s. Gd. impressed inland revenue stamp. Patents, Designs, and Trade Marks Act, 1883. [trade marks.] (}. Form of Request for Correction of Clerical Error in regard to a Trade Mark. Sir, I hereby request that To the Comptroller, Patent Office, Trade Murk.t liranch, 25, tiouthftmjitoH IJuildi>i;/8, London. Patents, Designs, uud Tradu Marks Act, 1883. [trade M.,UIK8.] E. Request for Certificate of Registration of Trade Mark for use in obtaining Registration Abroad. In the mutter of tlu; Tradi- Murk, No. , registered in Class , in tho name of . Sir, I , of , tho rogistfrcd i)r()))nutor of tho above Trade Murk herebv re<|ue8t you to furnish mo with your cortilicuto of registration for UMo in oLtuining registration of tho same in* Dut«d this diiv of . IMS—. t . To the Comptrolkr, I'littnt OJIire, 'J'nidr Mmhn Jlntnch, '2'), Southnmjitou /{iii/dimjM, /.midoii. ' lliTu Htutc uiime uf country in wliicli rc^iHtratiuu in tu be ttuught. t Hignaturr*. TKADE MARKS RULES. Patents, Designs, and Trade Marks Act, 1883. [tbade mabks.] S. Bequest for Certificate of Registration of Trade Mark for use in Legal Proceedings. In tlie matter of the Trade Mark, No. , registered in Class , in the name of — . Sir I ^ of , the registered proprietor of the above Trade Mark hereby request you to f m-nish me with your certificate of registration for use in the following legal proceedings* , Dated this day of , 188 — . To the Comptroller, Patent Office, Trade Harks Branch, 25, 'Southampton Buildings, London . * Here state exact title of legal proceedings. t Signature. Patents, Designs, and Trade Marks Act, 1883. [teade marks.] T. Application for Settlement of a Special Case on application to Register a Trade Mark. In the matter of the Application of and of the Application of . Sir, ^ -r Notice is hereby given that I, , of , and 1, •— , are unable to agree upon the facts on which the opinion of the Court is to be taken, and that we request you to fix a day on which we may attend before you and obtain your finding on the matters of fact to be submitted to the Court as settled. Dated this day of , 188—. 341 To the Comptroller, Pateiit Office, Trade Marks Branch, 25, Southampton Buildings, London. * To be signed by both parties. Patents, Designs, and Trade Marks Act, 1883. [trade marks.] TJ. General Certificate of Comptroller-General as to Application for or Registration of a Trade Mark. Patent Office, Trade Marks Branch, London, 188—. - 1, , Comptroller-General of Patents, Designs, and Trade Marks, hereby certify 342 APPENDIX. Patents, Designs, and Trade Marks Act, 1883. [tUAIiK >rAKKS.1 V. Request for Copy of Official Notification of Registration of Trade Mark. In the matter o£ the Trade Mark, No. , registered in Chiss . SiK, — 1, , of . the registered proprietor of the trade mark above named hereby request that you -n'ill furnish mo with a copy of the official notification of the registration of the same. Dated this day of 188—. To the Comptroller, Patent Office, Trade Marks Branch, 25, Southampton Buildings, London. * Signature. Patents, Designs, and Trade Marks Act, 1883. [trade' MARKS.] W. Form of Appeal from Cutlers' Company at Sheffield to Comptroller. [To bo accouii)aniod by an unstamped duplicate.] Sir, — I hereby give notice of appeal against llie decision of the Cutlers' Company, of Sheffield, in regard to my application for registration of a Trade Mark, Xo. in Chiss for , and I beg to submit my ca.so • for your decision accordingly. t . Dated this day of ISS— . To the Comptroller, Patent Office, Trade Marls Branch, 25, Southampton liuildimjs, London. • The Htatomont of tlio caso to ho -wTitton iipon foolscap paper (on one iddo only), with a margin of two inches on the left-hand aide thereof, t Signature. THIPD SCHEDTTT.E. Okxeual Notk. Any wares made of mixed materials (for exami)lc, of botli cotton and silk) shall bo included in 8U<-h one of the clas.sos appropriated to thoso muterialM an the registrar nniy desire. CLASSIFICATION OF GOODS. Ilhtstnitions. Nott. — Goods are mentioned in this column bj' way of illustration, and not as an cxlmustivo list of the contents of a class. Class 1. Chemical substances UHod in nianu- Such as — .\ and 20. Carriages. Class 22. Class 2.'J. Cotton yam and thread. niiisfrafions. Such as— Knives ; forks; scissors; shears ; files ; saws. Such as — Anvils ; keys ; basins (metal) ; needles ; hoes ; shovels ; corkscrews. Such as — Plato ; clock cases and pencil cases of such metals ; Slieflield and other plated goods ; gilt and oimolu work. Such as — Window and plate glass ; painted glass ; glass mosaic ; glass beads. Such as — China ; stoneware ; ten-a cotta ; statuary porcelain ; tiles ; bricks. Such as — Comout ; plaster ; imita- tion marble ; asphalt. and Such as — Diving apparatus; warm- ing apparatus ; ventilating appa- ratus ; filtering apparatus; light- ing contrivances : drainage con- trivances ; electric and pneumatic bells. Such as — Cannon ; small-arms ; fowling pieces ; swords; shot and other projectiles; "camp equipage ; equipments. Such as — Gunpowder; gun-cotton ; dynamite ; fog-signals ; percus- sion caps ; fireworks ; cartridges. Such as — HoatH ; anchors cables ; rigging. chain Such as — Railway carriages ; wag- tfons ; railway t nicks; bicj-cles ; )ath chairs. Such as— Sowing cotton on spools or reels ; sewing cotton not on spools or reels; dyed cotton yams. TRADE MARKS RULES. 345 Class 24. Cotton piece goods of all kinds. Class 25. Cotton goods not included in Classes 23, 24, or 38. Class 26. Linen and hemp j-arn and thi-ead. Class 27. Linen and hemp piece goods. Class 28. Linen and hemp goods not included in Classes 26, 27, and 50. Class 29. Jute yarns and tissues, and other articles made of jute not included in Class 50. Class 30. Silk, spun, thrown, or sewing. Class 31. Silk piece goods. Class 32. Other silk goods not included in Classes 30 and 31. Illustrations. Such as — Cotton shirtings; long cloth. Such as — Cotton lace ; cotton braids ; cotton tajjes. Class 33. Yams of wool, worsted, or hair. Class 34. Cloths and stuffs of wool, worsted, or hail'. Class 35. Woollen and worsted and hair goods not included in Classes 33 and 34. Class 36. Carpets, floor-cloth, and oil-cloth. Class 37. Leather, skins unwi'ought and wrought, and articles made of leather not included in other classes. Class 38. Articles of clothing. Such as — Drugget ; mats and mat- ting; rugs. Such as — Saddlery; harness; whips; portmanteaus; furs. Such as — Hats of all kinds ; caps and bonnets ; hosiery ; gloves ; boots and shoes ; other ready- made clothing. 346 APPENDIX. Class 39. Paper (except paper-hangings), etationcrv', and book-bimliug. Tlhtatrations. Such as — Envelopes ; sealing-wax ; pens (except gold pens) ; ink ; playing cards ; blotting cases ; copying presses. Class 40. Goods manufactured from india- rubber and gutta-percha not in- cluded in other classes. Class 41. Furniture and upholsteiy. Class 42. Substances used as food, or as in- gredients in food. Class 43. Fermented liquors and spirits. Class 44. Mineral and aerated waters, natural and artificial, including ginger- beer. Cl^VSS 45. Tobacco, -whether manufactured or unmanufactured. Class 46. Seopli(ant for the registration of tt design and the comptroller or llie Hoard of Trade, as the case may l)e, may ))0 nuide by or through an ageni duly authorized to tl>o satisfaction of the comptroller. 7. An ap])licati, Southampton Buildings, ( 'hancery L.ane, L«)ndon. 8iz« of papcm. 8. An apjdication for tho registration of a design, and all draw- ings, skotches, pliotogrnphs, or tracings of a design, and all other dcHruments sent to <»r loft at tho I'atent Olfico, Desij^nH Branch, or otherwise furnisliod to ther'omptntller or to the Board of Trade, shall bo written, printed, copied, or drawn tipon strrtng wide-ruled fools- CloMiflcatiou of goods. Agent" AcIdn'M of comptroller DESIGNS RULES. 349 cap paper (on one side only), of the size of 13 inches by 8 inches, leaving a margin of not less than one inch and a-half on the left- hand part thereof, and the signature of the applicants or agents thereto mnst be written in a large and legible hand. The comptroller may in any particular case vary the requirements of this Rule as he may think fit. 9. An application for the registration of a design shall be accom- Sketches and panied by a sketch or drawing, or by three exactly similar drawings, 'drawings, photographs, or tracings of the design, or by three specimens of the ^^^ture of design, and shall, in describing the nature of the design, state ^^^' whether it is applicable for the pattern or for the shape or configura- tion of the design, and the means by which it is applicable. When sketches, drawings, or tracings are furnished, they must be fixed. When the articles to which designs are applied are not of a kind which can be pasted into books, drawings, photographs, or tracings of such designs shall be furnished. 10. On receipt of an application for registration the comptroller Acknowledg- shall send to the applicant an acknowledgment thereof. ^^^y *° , 1 1 . If the comptroller determines to register a design, he shall Notice of as soon as may be send to the applicant a certificate of such regis- registration. tration in the prescribed form, sealed with the seal of the Patent Office. 12. Any application, notice, or other document authorised or Applications required to be left, made, or given at the Patent Office, or to the may be sent comptroller, or to any other person under these Rules, may be sent by a prepaid letter thi'ough the post, and if so sent shall be deemed to have been left, made, or given respectively at the time when the letter containing the same woidd be delivered in the ordinary course of post. In proving such service or sending it shall be sufficient to prove that the letter was properly addressed and put into the post. 13. Before exercising any discretionary power given to the Hearing by comptroller by the said Act adversely to an applicant for registra- comptroller, tion of a design the comptroller shall give him ten days notice of the time when he may be heard personally or by his agent before the comptroller. 14. Within five days from the date when such notice would be Hearing by delivered in the ordinary course of post, the applicant shall notify comptroller. to the comj)troller whether or not he intends to be heard upon the matter. 15. The decision or determination of the comptroller in the Notification of exercise of any such discretionary power as aforesaid shall be comptroller's notified to the applicant. Appeal to the Board of Trade. 16. Where the comptroller refuses to register a design, and the Notice of applicant intends to appeal to the Board of Trade from such refusal, ?,PP^,^^ *° he shall, within one month from the date of the decision appealed Xrade ° against, leave at the Patent Office, Designs Branch, a notice of such his intention. 350 APPENDIX. Statement on appeal. Notice to secretary of Board of Trade. Directions by Board of Trade. Notice of time of hearing. 17. Such notice shall be accompanied by a statement of the grounds of appeal, and of the applicant's case in suppoi-t thereof. 18. The ai)plicaut shall forthwith on leaving such notice send a copy thereof to tlie secretary of the Board of Trade, No. 7, "Whitehall Gardens, London. 19. The Board of Trade may thereupon give such directions (if any) as they may think fit for the purpose of the hearing of the appeal for the Board of Trade. 20. Seven days notice, or such shorter notice as the Board of Trade may in any ptu-ticular case direct, of the time and place appointed for the hearing of the appeal shall be given to the comptroller and the applicant. Registering design. Subsequent proprietors. Signature to rwjuest. I'urticulam in n-, })y some one or more members of such firm or partnershi]), or, in either case, by his or their agent rcKju'ctively duly authorised to the salisfacfion of the com]»tn)lIer, and, in tlw case of a body corporate, by their agent autlmrised in like manner. ^■i. Every such re request ifl made, so as to sliow tlie manner in whieli and llw ])erson or persons to whom the design has lieen assigned or transniitfi'd, or tlie person uT persons who has or have acquired su
  • s to make or do, the coniptroller may, on a request in writing and on payment of the prescribed fee, give such certificate, whicli shall also specify on the face of it tlie purpose for which it has been requested as aforesaid. Se^uiciies ox Production of Sketch of Design. 35. The comptroller may, on receipt of the prescribed fee, make searches among the designs registered at the Tatent Office after the commencement of the Act. and inform any person reqtiesting him 60 to do whether a ])articular design produced by such person, and to bo apphed to goods in any particular class, is or is not identical with or an obvious imitation of any design applied to such goods and registered since the commencement of the Act. Industrial and International Exhibitions. 30. Any person desirous of exhibiting a design, or any article to whicli a design has been applied, at an industrial or international exhibition, or of ]>ublishing a description of a disign during the ])eriod of the holding of the exhibition, shall, after having obtained from the Board of Trade a certificate that tlu- exhil)itioii is an indus- trial or international one, give to the comptroller seven days notice in writing of his intention to exhibit the design or article, or to publish a description of the design, as the case may be. For the purpose of identifying the design in the event of an application to register the same being subsequently made, the applicant shall furnish to the comptroller a brief description of the nature of the design, accompanied by a sketcli or drawing thereof, and such other information as the comptroller may in each case require. Repeal. 37. All g<'neral rules and regulations made by any authority under the Acts relating to the ('o}>yrig]it of Designs, and in force on the 3l8t December, 1883, shall 1)0, and they are lioreby repealed as from that date without j)rejudico nevertheless to any ai)plication then pending. J. C11.\M1'.KKLAIN, Prusideut of tlu! Board of Trade. 2lBt December, 1883. DESIGNS RULES. SCHEDULES. 353 FIEST SCHEDULE. Eees. 1. On application to register one design to be applied to single articles in each class except classes 13 and 14 - 2. On application to register one design to be applied to single articles in classes 13 and 14 - 3. On application to register one design to be applied to a set of articles for each class of registration - 4. On notice of appeal to Board of Trade against refusal of comptroller to register _ _ _ - - 5. Copy of certificate of registration, each, copy 6. On I'equest for certificate of comptroller for legal proceedings or other special purpose - - - - 10 d. 1 -10 - i same as 7. On request to enter name of subsequent proprietor | registra- ( tion fee. 3. On notice to comptroller of intended exhibition of an un- registered design - - - - -050 9. Inspection of design of which the copyright has expired, for -010 cost accord- each quarter of an hour - 10. Copy of one such design < ing to agree- ( ment. - 5 - 5 - 5 - 4 (but never less than Is.) - 1 11. On request to correct clerical error - 12. On request for search under section 53 13. On request to enter new address 14. For office copy, every 100 words 15. For certifying office copies, MSS. or printed Note. — The term " set " to include any number of articles ordinarily on sale together irrespective of the varieties of size and arrangement in which the particular design may be shown on each separate article. J. CHAMBEELAIN, President of the Board of Trade. Approved, CHARLES C. COTES, HEEBEET J. GLADSTONE, Lords Commissioners of Her Majesty's Treasury. 4th December, 1883. T. A A 354 APPENDIX. SECOND SCHEDULE. F0E3I3. Tage Form of Applicatiou to Register 354 ,, Appeal to Board of Trade 354 „ Certificate of Ropristration 355 ,, Applicatiou for Copy of Certificate of Registration 355 ,, Request for Certificate for use in Legal Proceedings 355 ,, Certificate for use in Legal Proceedings , 356 ,, Request to enter Name of Subsequent Proprietor 366 ,, Notice of intending Exliibition of Unregistered Design 357 ,, Request for CoiTection of Clerical Error or for entry of New Address 357 Patents, Designs, and Trade Marks Act, 1883. [designs.] E. Application for Registration of Design in Classes— ToF are hereby requested to register the accompanying design in Class , in the name of (a) , of , who claims to bo the proprietor thereof, and to return tlio same to . Statement of nature of design {b) (f) (Signed) Dated the day of , 188—. To the Coinptroller, Patent OJfice, Deaiyna Branch, 25, Southampton Buihlhu/s, Chancery Lane, Loudon, IV.C. (a) Here insert legibly the name, address, and description of the individual or firm. (b) Such as whether it is applicable for the pattern or for the shape. (c) To bo signed by the applicant. Patents, Designs, and Trade Marks Act, 1883. fDESirixs.] F. Appeal to Board of Trade on Refusal of Comptroller to Register a Design. [7'o he accoui])(ini\(l by an ruistiuiipnl coy*//.] SlU, — I hereby 'ai)])oal agiiinnt your duciHion upon my application to regiHtor , an(l l)i«g to submit my case («) for the decision of tho tho lioard of Trade. I am, Sir, your obcdionl Sorvant, Tht Comptroller, Patent Office, Desii/ns llrnncit, 25, Sintthamjiton Uttililint/A, Chancery Lane, London, If'.C. fa) TIk' Htatfnifrit of tbc cunt; to be written iijif)n foolscap paper (on one side only), with n margin of two inches on tho loft-hand wide thereof. DESIGNS RULES. Patents, Designs, and Trade Marks Act, 1883. [seal of patent office.] G. Certificate of Registration of Design. (RD No. .) Patent Office, Designs Branch, 25, Soutliampton Buildings, Chancery Lane, London, "W.O. This is to certify that the design of which this is a copy was registered this day of 188 — , in j^ursuance of the Patents, Designs, and Trade Marks Act, 1883, in respect of the application of such design to articles in Class , for which a copyright of five years is granted. 355 Patents, Designs, and Trade Marks Act, 1883. [designs.] H. Application for Copy of Certificate of Registration of Design. Sir, — I hereby request you to furnish me with a Copy Certificate of Registration of Design No. in Class . Dated the day of 188— To the Comptroller, Patent Office, Designs Branch, 25, Southampton Buildings, ■ Chancery Lane, London, W.O. (Signed) Patents, Designs, and Trade Marks Act, 1883. [designs.] I. Request for Certificate for use in Legal Proceedings. Sir, — I hereby request you to send me for the i^urposes of use in the suit of (o) a certificate that the design, of which a copy is herein enclosed, was (ft) . (Signed) day of 188—. To the Comptroller, Patent Office, Designs Branch, 25, Southampton Buildings, Chancery Lane, London, W.C. (a) Here state the title of the legal proceeding or the other purpose for which the certificate is required. (i) Here state the entry, matter, or thing which the writer wishes certified. A a2 356 APPENDIX. Patents, Designs, and Trade Marks Act, 1883. J. Certificate for use in Legal Proceedings. In tho matter of . Xo. . I, , ComptroUcr-Goneral of Patents, Designs, and Trade Marks, hereby certify that . Witness my hand and seal this day of 1S8 — . (Seal.) Patent Office^ Designa Branch, 25, Southamj'ton Build iiiya, London. Comptroller. Patents, Designs, and Trade Marks Act, 1883. [designs.] K. Request to enter Name of Subsequent Proprietor of Design, with Declaration in support thereof. I, [a] hereby request that you will outer [i] name [c] in tho Register of Designs as proprietor of tho Design No. in Class [d] entitled as to tho said Design [e] . [/ ] And I do solemnly and Hincerely dedaro that tho above several statements are true, and tho particulars above set out comprise every material fact and document affecting tho proprietorship of the said desif^n a.s above claimed. And I make tliis solemn declaration conscientiously believing tho same to be true, and by virtue of tho provisions of tho .Statutory Declarations Act, 1835. ^ , 1^^^ • Declared at this day of 188 — . lioforo mo, [A]. To the ComjitroUer, Patent Office, Designs Branch, 26, Southampton linildingB, Chancery Lane, London, W'.C. fa] Or Wo. ilcrc iiiNcrt nnmc, full udilrc«j«, iiiul dowription. ifj] My or our. <•] (Jr nuni(>«i. , ninrriaffo, Imnkniptny, or other o|>cnition uf law, iitirl if entitlt>(l by (utni^niout Htato tho niirtiimlnrs thi-HHif, iM f. fi., "by (IimhI ilatotl tlio doy of , 188 — , iiiado between ■O-niid-mi of thi' Olio nart." [/] Ttiin |>nraf(Tapn iji not nxiuirvd when tho doclarotion w made out of the Unit*-*! Kititfdoin. [y] To !.<• iii^nic and title uf llio authority bcforu wliom the dccluratiuu la inode. DESIGNS RULES. 357 Patents, Designs, and Trade Marks Act, 1883. [designs.] L. Notice of Intended Exhibition of an Unregistered Design. (rt) hereby give notice of my intention to exhibit a of at the Exhibition, which {b) of 188 — , under the provisions of the Patents, Designs, and Trade Marks Act of 1883 (o) herewith enclose a . (Signed) . Dated the day of 188—. To the Comptroller, Patent Office, Designs Branch, 25, Southampton Buildings, Chancery Lane, London, W.C. {a) Here state name and address of applicant. {b) State " opened " or " is to open." \c) Insert brief description of design, with drawing. Patents, Designs, and Trade Marks Act, 1883. [designs.] M. Request for Correction of Clerical Error or for Entry of New Address. Sir, — I hereby request that Dated the day of 188—. To the Comjjtroller, Patent Office, Designs Branch, 25, Southampton Buildings, Chancery Lane, London, W. C. (Signed) THIED SCHEDULE. Classitication of AnTiciiEs OF Manttfactuee and Substances. Classes. 1. Articles composed wholly or partly of metal, not included in Class 2. 2. Jewellery. 3. Articles composed wholly or partly of wood, bone, ivory, papier mache, or other solid substances not included in other classes. 4. Articles composed wholly or partly of glass, earthenware or porce- lain, bricks, tiles, or cement. 5. Articles composed wholly or partly of paper (except hangings). 6. Articles composed wholly or partly of leather, including book- binding, of all materials. 7. Paper hangings. 8. Carpets and rugs in all materials, floorcloths, and oilcloths. 9. Lace, hosiery. 10. !Millinery and wearing apparel, including boots and shoes. 11. Ornamental needlework on muslin or other textile fabrics. 12. Goods not included in other classes. 13. Printed or woven designs on textile piece goods. 14. Printed or woven designs on handkerchiefs and shawls. J. CHAMBERLAIN, President of the Board of Trade. 2l8t December, 1883. APPENDIX. 1 1 r L I'. S to be observed in Proceedings before the ^ubiriiil (Tommittcf of tljf jJiiDn Council Under the Act of the dth ami (jfh Will. IV., intituled " An Act to ' amend the Law touching Leiters rAiENT fou Inventions " {cap. 83). Rule I. A party intondinp to npply by petition, under sect. 2 of tlio snid act, shall K^ivo public uotico by advertising: in the London Gazette tlireo times, and in three Ixjudon papers, and three times in some country paper published in the town where or near to wliicli he carries on any manufac- turo of anything made according to his specification, or near to or in ^rhich ho resides, in case ho carries on no such manufacture, or publishc' in the county where he carries on sudi manufacture, or wlicre he lives, ii ca«o there shall not bo any paper pul)lislit'd in such town, that he intends to petition his Majesty under the said secti< notice of the day on which he intends to apply for a time to ' > fixed for hearing the matter of his ]K-tition which day shall not be less than four weeks from the dato ' of thf puljlication of the la.st of the advertisements to bo inserted in the I»ndon Ga/ette , and that on or before such day, notice must be given of any op|H>Hition int«'nded to be made to the petition ; and any person intending to oppose the siiid application, shall lodge notice to that elTect at tho (Vjuncil Otfice, on or before such day so nanu>d in the said advertise- ments, and luiving lodge date of the piibliciition of tlic last of the advertise- m*-ntH to b« inMfrtitl in tho I/oint4.Hl for tho Itearing. UvuY. 111. IVtttjnni under soctn. 2 and 1 of tho naid act must bo presontod within one a tho iuMertion of the last of tho advortisomonts required to l>o J : in the I/indon (ia/.etto. RULES. 359 Etjle rv. All petitions must be accompanied with affidavits of advertisements aving been inserted according to the provisions of sect. 4 of the said act, nd the 1st and 2nd of these rules, and the matters in such affidavits may I e disputed by the parties opposing upon the hearing of the petitions. Etjle Y. All persons entering caveats under sect. 4 of the said act, and all parties to any former suit or action touching letters patent, in respect of which petitions shall have been presented under sect. 2 of the said act, and all Dersons lodging notices of opposition under the 1st of these rules, shall •espectively be entitled to be served with copies of petitions presented ander the said sections, and no application to fix a time for hearing shall je made without affidavit of such service. EULE VI. All parties served with petitions shall lodge at the Council Office, within a fortnight after such service, notice of the groimds of their objections to the granting of the prayers of such petitions. Etjle VII. Parties may have copies of all papers lodged in respect of any appli- cation under the said act, at their own expense. Etjle VIII. The registrar of the Privy Council, or other officer to whom it may be referred to tax the costs incurred in the matter of any petition presented under the said act, shall allow or disallow in his discretion all payments made to persons of science or skill examined as witnesses to matters of opinion chiefl}'. EuLE IX. A party apphdng for an extension of a patent, imder sect. 4 of the said act, must lodge at the Council Office six printed copies of the specification, and also four copies of the balance sheet of expenditure and receipts relating to the patent in question, which accoimts are to be proved on oath before the lords of the committee at the hearing. In the event of the applicant's specification not having been printed, and if the expense of making six copies of any di-awing therein contained or referred to would be considerable, the lodging of two copies only of such specification and drawing will be deemed sufficient. All copies mentioned in this rule must be lodged not less than one week before the day fixed for hearing the application. The Judicial Committee will hear the Attorney-General, or other counsel, on behalf of the Crown, against granting any application made under either the 2nd or 4th section of the said act, in case it shall be thought fit to oppose the same on such behalf. INDEX. Abandoned, application for'patent, 270. Acceptance of complete specification, 99. Accidental discovery sufficient to support patent, 50. Accounts, filing of, on application for extension of patent, 129. must be reasonable and j^recise, ih., 132. when dispensed with, 131. of sales and profits, when allowed, 167, 179. not allowed when no profit made, 180. injunction granted on tenns of keej^ing, 170. plaintiff must elect between damages and, 177, 187. of profits lost by competition, not allowed when license has been granted, 178. Action for infringement. See Infringement. Addition to known machine producing new result may be patented, 27. Address, of letters patent, 102, 103. form of notice for alteration of, in register, 323. Administrators. See Executors. Advantages, claiming, 51. Advertisement, of amended specification, 93, 274, 308. of acceptance of specification, 99, 271. Affidavit, not required on petition for revocation, 184. on motion for injunction, 191. what it must state, 192. after trial, 213. generally, 304. Agent, infringement by, 157. to sell, cannot maintain action for infringement, 189. discovery of name of, infringing after judgment, 213. application for patent by, 303. Agreement, fraudulent, will be set aside, 118. 362 INDEX. may obtain patent, 5, liable for infringement, 144. Alteration, memorandum of, 92. Ambiguity, in specification, whether a question for jury, query, 71. latent, how explained, 120. AmE-VDMEXT. See Specification. of specitication, 90, 273, 308. compulsory or voluntary, 90. report of examiner as to, necessar}', ih. comptroller may require, ih. appeal to law officer, ib. power of, prior to Act, 92. duties of examiner as to, 91. compulsoiy, limited to matters of form, ih. by applicant or patentee, ih. now made at peril of inventor, 93. statutory declarations respecting, ih. must not enlarge the claim, 94, 9G. disallowed in case of fraud, ih. when allowed after action brought, ih. must bf by disclaimer, correction or explanation, 95. part of original specification, 97. reasons must l)o given for, 98. of particulars, 19o, 190. upon tonns, 200. generally, 304. form of, in case of clerical cn-or, 323. Anticipation, 36, 148, 202. See Prior User and rublication. ArrAiiENT possession, doctrine of, does not affect patent right, 113. AlTKALS, to law officers, rules regulating, 312. fonu of, 324. Application, for patent, o, 209, 302. considorod ubandoncd if 8i>ocification not left within specified timo, 270. what it must rontjiin, .'». by infiintM and inaiTi<'r process, 152. by e->6 actual sale, an, 165, 226. ' sale of patented article made abroad, an, 164. re-sale of article sold by patentee, no, 165. neglect to restrain, reason for not granting extension 133 injunction, remedy by, 167, 190. See Injunction. damages for, 177. See Damages. by tacit permission, 179. defences to action for, 199, 203, 204. costs of abandoned defences, 200. defendant's particulars of objections, 201. - form of, 260. trial of action for, 221. See Trial. before -whom, 221, 223. grounds of postponement, 223, 224. forms in action for, 251. Injunction, remedy for infringement by, 167. interloctitory or perpetual, ih. when granted, 168, 169, 190, 191. usually upon terms, 170, 171, 190. against threats of action for infringement, 249, 277. alleged infringement to be strictly proved, 173. evidence of intention to infringe will support, 175. must be no delay in moving for, il). falls with expiry of patent, 176. but not as to pro\'iously made articles, ih. mandatory, when granted, il). master of Q. B. D. cannot grant, 191. dissolved if claim disagree with affidavits, 192. affidavits on motion for, ih. form of notice _of_ motion for interlocutory, 253. of affidavit in support, ih. of refusal on terms, 255. Inspection, power of Court to grant, 216, 277. object of Court in granting, 217. fitrong prima facie necessary for, ih. more similarity insufficient, 226. granted if essential, 218. samples may be ordered for, 219. mutual, when ordered, ih. application for, on motion or by summons, ih. form of notice of motion for, 255. of inspection of process, and to take samples, 256. of order for mspcction of process by experts, 257. on acceptance of comj^lete specification, 305. of register, 121. at what hours, 311. ^' B B 370 INDEX. IXTELLIOIBILITY, of specification, 67. to skilled person, 72. IxTEXTiox of party infringing iuimateiial, 140, 147. INTERLOCUTORY IXJUXCTIOX, 167. forms of, 254. See Injunction. I^'TERXATiox^VL arrangements as to patents, 13j. IXTERROGATORIES. may be administered, 19G. must be relevant, 210. how far defendant must disclose secret jirocess in, ib. some evidence of infringement necessary for delivery of, 211, differ from particulars, ib, fishing disallowed, 212. must be answered fully, ib., 213. when permitted after trial, 213. by plaintiff and defendant differ, 214, 21 J, 247. costs of, 215. form of, 202. INTRODUCER, first, 19. Invalid patent, no infringement of, 145. Invention, defined by Act, 3. what is an, 9. when already public projjerty, 15. u new and useful, 22. of new article, ib. of new i)rocoss, ib. novelty of, 34. u question of fact, 38. secret prior u.ser of an, 30, 40. public i)ri(ir user of an, il>., 39. oxjierinieiit, whether, 37. ]tnf»r i>ul)li(ation of an, 41. the whole must be new, 47. utility f)f, 4K. <4aim of an, a (|uc.slivo Jnfrinycmvnt. impoi-tuncc of, how cstiumted, TJs. luKLAND, proccedingH for revocation in, 184. Joint OWNKU.-^, on- oi, m.iy >w, 1 IJ. JoUltNAI,, oflicial ndvertiHcmcntii in, 308. illustrative of invention, 300. INDEX. 371 Judgment, final, for plaintiff, forms of order of, 264 — 268. for defendant, 2G8. Jury, questions for, 234, 235. infringement, 14.5. novelty, 37, 38. utility, 49. grounds of application for, 223. Kxowx, material, ai^plication of, to new purpose, 28. instrument to ditto, I'h. Law Opficer, powers of, 270, 271. appeal to, 90. See Appeals. determines when specification may be amended, 94. cannot order applicant for disclaimer to pay costs, 98. Legal personal representative, grant of patent to, 8. See Executor. License, to use patent, should be under seal, 113. bow far valid if not, ib., 114. is not a deed, 114. a verbal, 117. differs from assignment, 118. compulsory, ■ib,, 274, 309. by whom granted, 118, 119. must be registered, 120. not assignable, 119. measui'e of damages after grant of, 178. an exclusive, 143. entry of, on register of patents, 311. form of application for comj^ulsory grant of, 319. of opposition thereto, 320. of request to enter notification of license on register, 322. Licensee, profits of, when considered, 131. whether extension granted to, query, 137. action for infringement not maintainable by ordinary, 142, 188. exclusive, may use patentee's name in action, 143. not exclusive user of patent in mere, 143. secm-ity for costs by exclusive, ib. Lost patent, how supplied, 278. Making, infringement by, 157. secret, by inventor before patent, 45. M^iLA FIDES in specification, 83. See Specification. Mandatory orders only granted after trial, 17G. bb2 372 INDEX. MANL'FACTI'EE, what is a new, 22, 34. a new article, 22. a new process, ib. a principle not a, ib. construction of tomi a question of law, 37. MLv^'■^FACTI^RER, (listinguishcil from inventor, 9. profits of, distinguished from patentee's, 1 29. when considered in action for infringement, 177. Maeeied women may obtain patent, 6. ALiSTER liable for infringement by servant, 143. Memoraxdum of alteration, 92. Merit, not necessary in importer, 20. part of consideration, 49. MlSRErRESENTATIOX, in specification fatal, 77. particulars of, 202. MlST.VKE, in specification, 90. by including several inventions, 305. See Amendment. MoxoroLiES, Statute of, 2. provi'jions of, 3. Motion for inspection, 219. Museum, Patent, 279. NON-U.SER, of patent, 127. ground for refusing extension, 133. Novelty, want of, vitiates patent, 101. within the kingdom necessary, 109. whothcT this is so now, query, 109, 110. I'rivy Omiicil will not iu(iuire into, 127. 0DJECTI0N8, particulars of, 201. See Partictthirs, Official rffcroo, 222. jounml, advertisement in, 305. Old. See Know. Opposition, to grant of patnul, 10. I'ROVI.SIONAL, protection, 10. proviwionH of Act ns lo, 17, 272. Bpeciilcation, 50, O-l. 270. Sec Spcci/icndon. Public ubo. 30. INDEX. 375 Publication, prior, 41. in specification, book or newspaper, 44. book need not be sold, if exhibited for sale or open to inspection, ih. must contain sufficient description, ih, objections on ground of prior, 207. PUECHASE, mere, of patented article no infringement, 163. Rebutting evidence by j^laintiff, 230, 231. Eecitals, must be four in number, 103. Eeduction, action of, in Scotland, 183. Referee, official or special, 222. Eeference, /or??i of order for, 262. Register, of patents, 120, 274, 309 et seq. prima facia eyidence of matters therein, 121. no notice of trust receivable on, ih. inspection of, ih. comptroller may correct errors of, ih. fraudulent entry on, 122. entries of grant on, 309. orders affecting jiatents, to be entered, 310. mcluding payment or non-payment of fees and licenses, ih., 311. form of reqiiest to enter License on, 322. Eexewax of English after expiry of foreign patent, 128. Eepresextative case, form of order for trial of, 263. Eestraixt of trade, covenant not to manufacture without patented invention not in, 120. Eevocatiox, provisions for, 100, 27<5. must be registered, 120. by petition, under the Act, 181. by whom presented, ih. proceedings for, resemble scire facias, 223. ■who may present j^etition for, 246. particulars of objection on, ih. See Particulars. form of petition for, 252. EiYAL applicants, 16. Eules, by whom made, 101, 124. Patent, 1883 .. . 302 et seq. under 5 & 6 Will. 4, c. 83 . . . 358 et seq. S-VLE, infringement by, 163. See Infringement. by patentee carries right of free disposition, 165. 376 INDEX. Samples, of infringiug article, when ordered to be delivered, 218. form of notice of motion to take, 256. of order for delivery of, ih. Scire Faclvs, proceedings by, abolished, 97, ISl— 183. ScoTLA^'D, action of reduction in, 183, 184. Seal, when affixed to patent, 101, 102, 271. of Patent Office, 102, 272. Secret, of trade, 107. no means of enforcing agreement to keep a trade, ih. if subject of intended patent, sccus, ih. use, antieii^ation by, 30. Serv.iVNT infringing, 1-13, 107. Suirs, use of invention by foreign, lUI, 1G2. by British, abroad, 102. Special referee, 222. Specific performance of agreement to as.-?igu, 118. Specificatiox, provisions of Act as to, b'l. title of, i)o. requisites for, ih. title in old patents must contain claims, ih. must not bo too general, ih. must corresi»oud with invention, oO. vagueness of, fatal, 57. variance from, o.S. must bo consistent with invention, //'. Provisioiiul, must describe nature of invention, 5!). and agree with comi)lete, GO, 01. its object, ih., 01, (J2. (li«tingui.shod from iinul, 03, 01. form of, .'Jl'i. Compldv, wluit it ih, 01, 00, 270. u portion of the patent, 05. hhouM imiku luir di.sclosun', 00, 77. must bo intelligiblo and Hiillicient, 01, 07, 228. und hoiid Ji