UNIVERSITY OF CALIFORNIA LOS ANGELES SCHOOL OF LAW LIBRARY HANDY GUIDE PATENT LAW AND PRACTICE. BY GEORGE FREDERICK EMERY, LL.M., Of the Inner Temple, Esq., Sarrister-at-Law, formerly Abbott Scholar in the University of Cambridge, and late Scholar of Trinity College. AUTHOB OF ' PEOPLE'S GUIDE TO THE PARISH COUNCILS ACT FOR BUBAL DISTUICTS/ ETC. liontJon : EFFINGHAM WILSON. ROYAL EXCHANGE. 1896. T fit, (with permission) TO THE EIGHT HONOURABLE SIR RICHARD WEBSTER, Q.C., M.P., G.C.M.G., HER MAJESTY'S ATTORNEY-GENERAL. 778797 CONTENTS. PAGE PREFACE . . . vii TABLE OP CASES ix LIST OF ABBREVIATIONS USED xx STATUTES xxi CHAP. I. INTRODUCTION 1 II. SUBJECT MATTER OF LETTERS PATENT 13 III. WHO MAY APPLY FOR A PATENT . 35 IV. HOW TO OBTAIN A PATENT ... 43 V. SPECIFICATIONS 60 VI. OPPOSITION TO THE GRANT OF A PATENT 77 VII. KEEPING UP A PATENT .... 87 VIII. RIGHTS OF PATENTEE .... 91 IX. LICENSES 99 X. AMENDMENT OF SPECIFICATIONS . 106 XI. PROCEEDINGS BEFORE LAW OFFICERS 115 XII. PROFESSIONAL ASSISTANCE IN PATENT MATTERS 121 XIII. INFRINGEMENT 125 XIV. ACTIONS FOR INFRINGEMENT . . 135 XV. REVOCATION OF LETTERS PATENT . 153 XVI. THREATS 160 ,, XVII. PARTICULARS OF OBJECTIONS . . 171 XVIII. TRIAL OF A PATENT ACTION . . 177 XIX. JUDGMENT IN INFRINGEMENT ACTION 188 Vi CONTENTS. PAGE CHAP. XX. CERTIFICATE OF VALIDITY "-. . 193 XXI. COSTS 196 XXII. EXTENSION OF TERM OF LETTERS PATENT 201 XXIII. OFFENCES 214 XXIV. REGISTER OF PATENTS . . . 216 XXV. MISCELLANEOUS 223 XXVI. INTERNATIONAL AND COLONIAL AR- RANGEMENTS 233 LIST OF FEES . . . . . 239 PATENT FORMS AND FEES . . 242 PATENT AGENTS RULES . . . 278 INDEX 289 PBEFACE. THE matters dealt with in this volume may be divided roughly under two heads, one comprising everything relating to the Patent Office, and those matters in which a solicitor is not usually employed ; and the other dealing with the various forms of legal proceedings connected with patents in which the services of a solicitor are but rarely dispensed with. In dealing with non-litigious matters my en- deavour has been not to omit anything which is of practical value, and I believe that, so far as these are concerned, this book contains suffi- cient information to enable any capable person (if he deems such a course advisable) to dispense with professional assistance. In the chapters which deal with litigation attention is confined to those points in which pro- ceedings connected with patents differ from other legal proceedings, and on these I have tried to Vlll PREFACE. give in as concise a manner as possible sufficient information to enable a solicitor, without further assistance from books, to conduct any kind of patent action. An adequate treatment of Patent Conveyancing would have unduly enlarged the book, and it has been thought better to omit any mention of it. My best thanks are due to J. H. Taylor, Esq., of Trinity College, Cambridge, and Queen's College, Oxford, for his kindness in verifying the references and correcting the proofs. I am also indebted to the kindness of the Comptroller General for information on a few points of practice not clearly provided for by the Rules. G. F. EMERY. 2, HABCOUBT BUILDINGS, TEMPLE; 1st January, 1896. TABLE OF CASES. Adie P. Clarke Re Ainsworth Allan's Patent Allen v. llawson Alliance Pure White Lead Syndicate . Maclvor's Patents, Ltd. American Braided Wire Co. v. Thomson & Co. Amos v. Chadwick Re Anderson and McEinnell Andrew & Co., Ltd. v. Crossley Brothers, Ltd. Anglo-American Brush Corpo- ration v. Crompton Re Arnold Automatic Weighing Machine Co. v. Knight Automatic Weighing v . Inter- national Hygienic Society Avery's Patent Badham v. Bird Badische Anilin Levinstein Fabrik v. PAGE 1877 2 App. Cas. 426 ; Clarke . Adie (No. 2) 144 1885 Gr. 2G9 117 1867 L.R. 1 P.C. 507 210 1845 1 C. B. 566 41 1891 8 R.P.C. 321 175 1888 C.A., 5 R.P.O. 120, C96, 7 R.P.C. 152 40, 189 1877 4 Ch. D. 869 150 1887 Gr. A. P.C. 23 115, 116 1891 C.A., 9 R.P.C. 165 114 1887 C.A., 4 R.P.C. 27 174 1887 Gr. A.P.C. 5 113 1889 C.A., 6 R.P.C. 304 20 1889 6 R.P.C. 480 194 1887 4 R.P.C. 152, C.A. 322, 36 Ch. D. 307 155,157 1888 5 R.P.C. 238 186 1885 24 Ch. D. 156 ; C.A., 2 R.P.C. 143, 29 Ch. D. 366 196 b TABLE OF CASES. Badische Anilin r. Levinstein 1887 Bailey t>. Roberton Bainbridge . Wigley AV Bairstow Bakewell's Patent Barlow r. Bnylis Barrett r. Day Beanland's Patent Beard r. Egerton Re Beck and Justice Bennett c. Lord Bury Benno Jaffe r. John Richard- son & Co., Ltd. Benno Jaffe Fabrik r. Richardson Bergmann v. Macro Ulan Belts v. De Vitre Belts r. Willmot Blakey '. Latham Bloxam v. Elsce Bodmer's Patent Bodmer's Patent Bonlton v. Bull Bovill r. Ainscough Bo v ill r. Moore Boyd v. Horrocks Boydu.TheTootal Broadhurst Lee Co., Ltd. Brandon's Patent Bray v. Gardner The British Tanning Co. c. Groth Briton, &c., Life Assurance v. Jones PAGE H.L., 4 R.P.C. 449; 12 App. Cas. 710 18, 72 1878 3 App. Cas. 1075 66, 67 1810 Parl. Rep. 197, 1 Goodeve P.C. 30 61 1888 5 R.P.C. 289 78, 116 1852 15 Moo. P.C.C. 385 210 1870 Griff. 45 30 1890 7 R.P.C. 54 166 1887 4 R.P.C. 489 209 1846 19L.J.39; 3 C.B. 123; 8 C.B. 206 63, 71, 72 1886 Gr. A.P.C. 10 107 1880 5 C.P.D. 339 151 1893 10 R.P.C. 136 150 1894 11 R.P.C. 102 176 1881 17 Ch. D. 423 94 1864 11 Jur., N.S. 9 138 1871 6 Ch. 239 133 1889 C.A., 6 R.P.C. 190 165, 196 1827 6 B. & C. 178; 3 L.J. (O.S.), Q.B. 93 61 1849 6 Moo. P.C.C. 468 212 1853 8 Moo. P.C.C. 282 202 1795 Dav. P.C. 196, 2 H.B1.P. 463 17 1867 Lawson, ' Pat. Pract.,' 2nd edit., 495 151 1816 Dav. P.C.361,Carpmael Rep: 348 62 ]889 C.A. 6 R.P.C. 159 129 11 R.P.C. 175 (Lane. Court 1894 Case) 189, 193 1884 1 R.P.C. 154 202 1887 C.A., 4 R.P.C. 40 108 236 1889 60 L.T. 637 151 TABLE OF CASES. XI Brook v. Aston Brown v. Jackson Brunton v. Hawkes Campion v. Benyon Cannington v. Nuttall Carpenter v. Smith Carr's Patent Challender v. Royle Chambers . Chrichley Re Chandler Chanter v. Dewhurst Chanter . Leese Cheavin v. Walker Cheetham v. Nuthall Cheetharn v. Oldham Chollet v. Hoffman Church's Patents Claridge's Patent Clarke v. Adie Clarke . Adie Clarke . Nichols Clark's Patent Cockling's Patent Cochraner. Smethurst .BeCodd Cole v. Saqui Colley v. Hart Colley v. Hart Combined Weighing Machine Co. v. Automatic Weighing Machine Co. Cook v. Pearce Cornish v. Keene Crampton . Patents Invest- ment Crane v. Price PAGE 1857 8 E. & B. 485 23 1895 A.C. 446 129 1821 4 B. & A. 550 76 1821 3 B. & B. 10 74 1871 L.R., 5 H.L., 216 25 1841 1 W.P.C. 534 28 1873 L.R., 4 P.C. 539 208 1887 C.A., 4 R.P.C. 363, 36 Ch. D. 425 163, 165, 169 1864 33 Beav. 374 145 1886 Gr. 270 116 1844 12 M. & W. 823 99 1839 5 M. & W. 701 103 1876 5 Ch. D. 850 214 1893 10 R.P.C. 321 . 146 1891 8 R.P.C. 168 13 1857 7 E. & B. 686 137 1886 3 R.P.C. 95 203 1851 7 Moo. P.C.C. 394 212 1875 L.R., 10 Ch. 675 129 1877 2 App. Gas. 320 24 1895 12 R.P.C. 310 140 1870 L.R., 3 P.C. 421 203 1885 2 R.P.C. 151 211 1816 1 Stark 205 62 1884 Griff. 305 110 1889 C.A., 6 R.P.C. 41 ; 40 Ch. D. 132 199 1890 7 R.P.C. 111 165 1890 7 R.P.C. 101 1G6, 168, 182 1889 6 R.P.C. 502 166 1843 8 Q.B. 1063 62 1835 1 W.P.C. 08 29,41 1888 5 R.P.C. 404 170, 193 1842 1 W.P.C. 409 xn TABLE OF CASES. Croinpton . Anglo-American Brush Corporation Cropper . Smith Cropper v. Smith Crossley . Beverley Crossley v. Dixon Crossthwaite v. Steel Dangerfield v. Jones Darby's Patent Re Dart Day v, Foster Deacon's Patents Deeley's Patent Deeley's Patent Delta Metal v. Maxim-Norden- felt Co. Derosne's Patent Re Dietz Dowson Taylor & Co. Ltd. r. The Drosophore Co., Ltd. Dowson Taylor & Co., Ltd. v. The Drosophore Co., Ltd. Dollond's Case Drake v. Muntz's Metal Co. Drummond's Patent Dudgeon v. Thompson Duncan & Wilson's Patents Duncan Steward's Patent Re Eadie Edge v. Harrison Edgeberry v. Stephens Edison Bell Phonograph r. Edison Phonograph Edison Bell Phonograph Cor- poration, Limited r. Smith Edison Bell Phonograph Cor- 1887 1884 1885 1829 1863 1889 1865 1891 1890 ]887 1894 1895 1891 C.A., 4 E.P.C. 197 j 35 Ch 283 28 Ch. D. 151 H.L., 2 B.P.C. 17 1 R. &M. 166 ., 1 W.P.C. 10 H.L.C. 293 6 R.P.C. 190 13 L.T.N.S. 142 8 R.P.C. 380 Gr. P.C. 307 7 R P.C. 54 4 R.P.C. 119 11 R.P.C. 72 C.A., 12 R.P.C. 199 8 R.P.C. 247 PAGE .D. 174 108 147 106 132, 188 101, 102, 144., 146 145 22 208, 211 50 166 207 159 157, 159 194 1844 2 W.P.C. 1 209 1889 6 R.P.C. 297 117 1894 11 R.P.C., Lane. Court Case 169 1895 C.A., 12 R.P.C. 95 169, 170 1758 2 H. Bl. 470 ; 1 W.P.C. 42 42 1886 3 R.P.C. 43 142 1889 43 Ch. D. 80, 6 R.P.C. 570, 59 L.J. Ch. 576 158 1877 3 App. Cas. 44 131 1884 1 R.P.C. 257 207 1885 3 R.P.C. 7 209 Griff. 279 79 1891 8 R.P.C. 74 158 1691 2Salk447; 1 W.P.C. 35 37 1894 11 R.P.C. 33 194 1894 C.A., 11 R.P.C. 400 170, 179, 181 1894 C.A., 11 R.P.C. 389 192 TABLE OF CASES. Xlll porntion, Ltd. . Smith and Young Edison United Phonograph Co. & The Edison Bell Phonograph Co., Ltd. . T. Lewis Young Edison and Swan Electric Light Co. v. Holland Edison and Swan United Electric Light Co. v. Wood- house & Rawson Edlin v. Pneumatic Tyre, &c. Be Edmunds Ehrlich v. Ihlee Eltnslie v. Boursier English & American v. Gare Machine English & American Machinery Co.,Ltd. v. Union Boot & Shoe Machine Co., Ltd. Fairburn v. Household Fairburn v. Household Fenner v. Wilson Fletcher's Patent Foxwell v. Bostock Franklin Hocking & Co., Ltd. v. Franklin Hocking Frearson v. Loe Frearson v. Loe Fusee Vesta v. Bryant & May Gadd v. Mayor of Manchester Galloway's Patent Gerrard v. Edge Gaulard & Gibbs' Patent Gaulard & Gibbs' Patent 1894 11 R.P.C. 489 1889 C.A., 6 R.P.C. 243 1887 C.A., 4 R.P.C. 93 1893 10 R.P.C. 311 1888 Griff. 281 1887 4 R.P.C. 115 1869 L.R., 9 Eq. 217 1894 11 R.P.C. 627 1894 C.A., 11 R.P.C. 367 1884 1885 1893 1893 1861 1887 1878 1878 1887 1892 1843 1889 1887 1888 1 R.P.C. 109 C.A., 2 R P.C. 195 C.A., 10 R.P.C. 283 10 R.P.C. 252 4 De G. J. & S. 313 C.A., 4 R.P.C. 442 PAGE 152 71 25 167 78 148 37 168 176 170 177 167 216 74 131 9 Ch. I). 58 30 9 Ch. D. 65 95, 126, 137 4 R.P.C. 71 109 9 R.P.C. 516, C.A., 67 L.T. 569 28, 30, 199 1 W.P.C. 725 202, 207 C.A., 6 R.P.C. 372 175 34 Ch. 1). 386 158 5 R.P.C. 526, C.A., 6 R.P.C. 215 157 XIV TABLE OF CASES. Gibson & Campbell 0. Brand 1841 Gibson v. Brand 18*2-4 Gibson v. Brand 1842-4 Gillett v. Wilby 1839 Gorz & Hogh's Patent 1895 Goucher's Patent 1865 Goucher v. Clayton 1864 Graham v. Fanta 1892 .BeGreufell&McEvoy's Patent 1890 Guilbert Martin v. Kerr 1887 Guyot v. Thomson 1894 Haddan's Patent 1885 Re Hall 1888 Hancock v. Soniervell 1851 Hardy's Patent 1849 Harris v, Rothwell 1887 Harrison v. The Andcrston 1876 Foundry Co. Harwood v. Great Northern Railway Co. Haslam v. Hall 1887 Haslam v. Hall 1888 Hassall . Wright, Ac. 1870 Hastings v. Brown 1853 Haydock v. Bradbury 1887 Hazeland's Patent 1894 Hcald's Application 1891 Heap r. Hartley 1889 Heath's Patent 1853 Ee Heath and Frost 1886 Heath v. Unwiii 1855 Heathfield v. Greenway 1894 Henser . Hardie 1894 Herbert's Patent 1867 Herrburger v. Squire 1888 Heugh v. Chamberlain 1877 PAGE 1 W.P.C. 628 39 Scott, N. R. 890, 4 M & G. 179 74 Scott, N.R. 844, 1 W.P.C. 631 74 1 W.P.C. 270 76 W.N. 105 158 2 Moo. P.C.C., N.S. 532 203 11 Jur., N.S. 107 145, 146 Div. Ct., 9 R.P.C. 164 122, 215 7 R.P.C. 151 56 4 R.P.C. 18 196 11 R.P.C. 541 101 Griff. 108, 54, L.J. Ch. 126 158 21 Q.B.D. 137 108 39 ' Newton's Lond. Journal,' 158 29 6 Moo. P.C.C. 441 212 C.A., 4 R.P.C. 225 32 1 App. Cas. 574 23, 75 1865 11 H.L.C. 682 23 4 R.P.C. 203 142 5 R.P.C. 27, C.A. 144 194 L.R. 10, Eq. 509 137 1 E. & B., 454 72 4 R.P.C. 74 194 11 R.P.C. 467 208 8 R.P.C. 429 41 C.A., 6 R.P.C. 495 j 42 Ch. I). 461 ; C.A., 6 R.P.C. 495 103, 137 2 W.P.C. 247 209 Griff. 285 80 H.L. 2 W.P.C. 314 128 11 R.P.C. 17 174 11 R.P.C. 421 142 L.R. 1 P.C. 399 212 5 R.P.C. 581 167 25 W.K. 742 145 TABLE OP CASES. XV Higgs v. Godwin 1858 Hill's Patent 1863 Se Hill 1888 Hills v. Evans 1861 Hill v. Thompson and Forinan 1817 Hills v. Laming 1853 Hills v. London Gas Light Co. 1860 Hinks and Son r. The Safety 1876 Lighting Co. Hocking v. Hocking 1887 Holliday v. Heppcnstall 1889 Holmes i>. L.&N.W.R.Co. 1852 Horsey's Patent 1881 Hortou v. Mabon 1852 Houghtim's Patent 1871 Househill Co. . Neilsou 1843 Howes v. Webber 1891 Incandescent Gas Light Co. c. 1895 Cantelo Johnasson v. Palgrave Johnson's Patent Johnson v. Edge Se Jones Jones' Patent Joy's Patent Jupe v. Pratt Kelly o. Batchelar Kensington Electric, &c. v. Lane Fox Electrical King, Brown & Co. v. Anglo- American Brush Co. Se Knight 1887 Kurtz . Spence 1887 Se Lake 1887 Lake's Patent 1889 PAGE E.B. & E. 529 ; 27 L.J.Q 15. 421 18 1 Moo. P.C.C. N.S. 258 209 5 R.P.C. 599 81, 116 31 L.J. N.S. Ch. 460; 4 De G. F. & J. 288 31, 179 1 W.P.C. 237 23 9 Ex. R, 2. r >6 101, 146 5 II. & N. 336 29 4 Ch. D. 607 25 C.A., 4 K.P.C. 4J2 131 C. A, 6 R.P.C. 320 175,176 12 C.B. 831 74 I R.P.C. 225 203 16 C.B. N.S. 141; 31 L.J.C.P. 255 22 L.R. 3 P.C. 461 202, 209 H.L. 1 W.P.C. 073 17 II R.P.C. 586 110 12 R.P.C. 262 93, 133 1880 Lawson, ' Pat. Pract.,' 2nd edit. 1871 1892 18 40 1893 1837 1893 1891 497 L.R., 4 P.C. 75 C.A., 9 R.P.C. 142 Griff. 313 1 W.P.C. 579 10 R.P.C. 89 1 W.P.C. 1 16 10 R.P.C. 289 8 R.P.C. 277 1889 6 R.P.C. 424 Gr. A.P.C. 35 C.A., 4 R.P.C. 427 Gr. A.P.C. 16 6 R.P.C. 550 151 208 161 109 202 208 20 134 165 27,29 117 169 52, 107 85 XVI TABLE OF CASES. Lake's Patent Re Lancaster Lane Fox's Patent Law v. Ashworth The Leather Cloth Co. v. The American Cloth Co. Lee's Patent Leonhardt 0. Kalle Lister v. Norton Livett's Patent Lowe's Patent Re Luke Ly oil's Patent Lyon v. Qoddard Lyon D. Mayor, &c., Newcastlc- upon-Tyno Re Macevoy Re Main's Patent Mallet's Patent Mandleberg v. Morluy Mandlcbcrg v. Morley Marsden v. Saville Street Foundry and Engineering Co. Mathers v. Green Middleton v. Bradley Miller's Patent Mills '. Carson Moutforts v. Marsden Moore v. Thomson Morgan Brown's Patent Morgan /. Seaward Moseley r. The Victoria Rub- ber Co. Moscr r. Margden Moser v. Marsden Myers t>. Baker 1891 8 R.P.C. 227 1884 Griff. 293 1892 9 R.P.C. 411 1890 7 R.P.C. 86 Lane. Court 18G5 11 H. L.C. 523 1805 1895 1894 1892 1895 1890 1886 1836 1887 1892 1893 1858 PAGK 208 80 209 169 214 202 72 150 208 206 79 212 206 80 235, 237 212 198 198 36, 39 L R., 1 Ch. 29 94, 100 W.N. 123(7) 198 11 R.P.C. 55 158 9 R.P.C. 338, C.A., 10 R.P.C. 1856 10 Moo. P.C.C. 226 1895 12 R.P.C 103 1885 2 R.P.C. 68 1892 9 R.P.C. 332 1852 8 Moo. P.C.C. 1 1886 Griff. 294 1894 11 R.P.C. 537 1803 C.A., 10 R.P.C. 344 1894 11 R.P.C. 218 1888 5 R.P.C. 285 1890 7 R.P.C. 13 1866 L.R. 1 P.C. 308 1894 11 R.P.C. 1 1895 12 R.P.C. 35 1878 L.R., 3 Ex.D. 203 9 102 92, 101, 124 145 213 18, 29, 71 C.A., 12 lU'.C. 270 H.L., 7 R.P.C. 325 3 R.P.C. 212 1 W.P.C. 174 4 R.P.C. 252; sec IV De Gex F. & J., p. 299 31 C.A., 9 R.P.C. 214 139 C.A., 10 R.P.C. 350 38 3 H & N. 802 214 TABLE OF CASES XV11 Muirhcad v. The Commercial Cable Co. Muntz's Patents Murray v. Clayton Napier's Patent Napier's Patent Neilson v. Harford Newsum v. Mann Newton's Patents Nobel's Explosive Co. v. Ander- son Nobel's Explosive Co. . Jones Normandy's Patent North British Rubber Co., Ltd. v. The Gorinully & Jeffry Mfg. Co. Nuttall v. Hargrcaves Otto v. Linford Otto v. Singer Otto v. Steel Otto v. Steel Parkinson v. Simon Peckover v. Rowland Peckover v. Rowland Penn v. Bibby Penn v. Bibby Penn v. Bibby Penn v. Jack Perkin's Patent Pettit Smith's Patent 1895 C.A., 12 R.P.C. 30 PAGE 102, 144 1846 1872 1861 1881 1841 1890 1884 1894 1882 1S85 18U5 1891 1881 1890 1886 1886 1891 1893 1893 1866 1866 1866 1867 1845 1880 2 W.P.C. 121 L.R., 15 Eq. 115 13 Moo. P.C.C. 543 L.R., 6 App. Cas. 174 I W.P.C. 355 7 R.P.C. 310 9 App. Cas. 592 ; 1 R.I'.C. 177 II R.P.C. 115 8 App. Cas. 1 9 Mo:>., P.C.C. 452 12 R.P.C. 17 Pickard & Co. v Prescott 1892 Plating Co. v. Farquharson 1879-83 Plhnptom v. Malcolmson 1876 Plimpton v. Spiller 1876 Post Card Automatic Supply 1889 6 R.P.C. 560 Co. v. Samuel Proctor v. Bailey 1889 C.A., 6 R.P.C. 538 C.A., 8 R.P.C. 450 C. A. 46, L.T.N.S. 35 7 R.P.C. 7 3 R.P.C. 120 C.A., 3 R.P.C. 109 C.A., 11 R.P.C. 493 C.A., 10 R.P.C. 234 10 R.P.C. 118 L.R. 1 Eq. 548 L.R. 2 Cb. 132 L.R. 3 Eq. 308 L.R. 5 Eq. 81 2 W.P.C. 17 7 Moo., PC.C. 133; 1 Goodeve P.C. 533 H.L., 9 P.R.C. 195 Griff 187 3 Ch. D. 568 Lawson, ' Pat. Pract.' 497 207 191 210 202 21 197 208 97 138 212 141 65 20, 180 100 194 32 186 130 176 175 63 190 190 208 211 32 149 70 151 100, 146 138 .XV111 TABLE OF CASES. Proctor 0. Dennis Ralston /. Smith Redges v. Mullincr Reg. v. Judge of C. Ct. of Halifax RendelPs Patent Rex v. Arkwright Richardson v. Custrey Rolls v. Isaacs Roper's Patent Rothwell v. King Russell v. Cowley He Rylands Ryland's v. Ashley's Patent Bottle Co. Saxby's Patent Semet and Solway's Patent Re Serrell Shallenberger's Application Shaw v. Jones Sheehan v. G.E.R.Co. Shone's Patent Siddell v. Vickers Siddell v. Vickers Siemens v. Taylor Simister's Patent Simpson v. Holliday Skinner . Perry Skinner v. Perry Sleight's Patent Smith v. Cropper Smith v. Lang Societe Anonymc de Glaces v. Tiljhman's Sand Blast Co. Southby's Patent Speckhart c. Campbell Stecdmau v. Marsh Steers r. Rogers PAGE 1887 36 Ch. D. 740 75, 139 1865 11 H.L.C. 223 15,23 1893 10 R.P.C. 21 102, 1 16 1891 C.A., 8 R.P.C. 338 135 1894 Lane. Ct. 11 R.P.C. 277 157 1785 1 W.P.C. 66 69 1887 4 R.P.C. 265 185 1881 19 Ch. D. 268 18 1887 4 R.P.C. 201 210 1887 4 R P.C. 397 (Lane. Ct. Case) 198 1834 1 W.P.C. 459 23 1888 5 R.P.C. 665 107 1890 C.A., 7 R.P.C. 175 150 1870 L.R., 3 P.C. 292 207, 211 1895 [1895]A.C.,7812R.P.C.10 210,211 1889 6 R.P.C. 101 107 1889 6 R.P.C. 550 236 1889 6 R.P.C. 328 190 1880 16 Ch. D. 59 136 1892 9 R.P.C. 438 211 1889 6 R.P.C. 461 191 1892 C.A., 9 R.P.C. 152 188, 191 1892 9 R.P.C. 393 103 1842 1 W.P.C. 723 210 1866 5 N.R. 340 ; L.R. 1 H. L. 315 73 1894 11 R.P.C. 406 170 1893 C.A., 10 R.P.C. 1 164 1893 10 R.P.C. 447 158 1885 10 App. Cas. 249 115 1890 C.A., 7 R.P.C. 148 175 1883 C. A., 25 Ch. D. 1 93, 133 1891 8 R.P.C. 433 210 1891 C.A., " Times," March 13th 136 1856 2 Jur. N.S. 391 i.8 1893 ILL. 10 R.P.C. 245 93 TABLE OF CASES. XIX Stewart v. Casey Stoney's Patent Stuart's Application Taylor v. Hare Thomas's Patents Thompson .Ainerican Braided Wire Co. Thompson v. Macdouald & Co. Turner v. Winter Tweedale v. Ashworth Uugar v. Sugg Union Electrical Power Co. v. Electrical Power Storage United Horse Nail Co. . Stewart and Co. United Telephone Co. v. Dale United Telephone Co. v. Dono- hoe United Telephone Co. v. Mot- tishead United Telephone Co. o. Pat- terson United Telephone Co. v. Walker Vaisey's Patent Van Gelder's Patent Van Gelder v. Sowerhy Bridge Flour Co. Vickers . Siddell De Vitre v. Betts Von Heydeu v. Neustadt Vorwerk & Sou v. Evans & Co. Walton v. Lavater Walton v. Potter Washburn and Moen Mfg. Co. r.Q. PAGE 1892 C.A., 9 R.P.C. 9 217 1888 5 R.P.C. 518 210 1892 9 R.P.C. 452 85 1805 1 W.P.C. 292 101 1892 9 R.P.C. 367 207 1889 H.L. 6 R.P.C. 528 26 1891 8 R.P.C. 9 173 1787 1 W.P.C. 80 71 1892 H.L., 9 R.P.C. 121. 197 1891 8 R.P.C. 385; C.A., 9 R.P.C. 114 164, 170 1888 C.A., 5 R.P.C. 329; i !8 Ch. D. 325 168, 169 1887 4 R.P.C. 130; 13 App , Cus. 401 189 1884 25 Ch. D. 778 132 188S 31 Ch. D. 399 143 1886 3 R.P.C. 213 185 1889 G R.P.C. 140 194 1887 4 R.P.C. 63 189, 190, 192 1894 11 R.P.C. 592 154 1889 6 R.P.C. 28 115 1890 C.A., 7 R.P.C. 41 137 1890 H.L. 7 R.P.C. 303; XV App. Cas. 496 23, 65, 74 1873 L.R., 6 H.L. 319; 21 W.R. 705 188 1880 50 L.J. Ch. 128; 14 Ch. D. 230 33, 40, 133 1890 7 R.P.C. 174 184 1860 8 C.B., N.S. 162 133, 145 1841 1 W.P.C. 586 131 1889 6 R.P.C. 398 138 TABLE OF CASES. Watling v. Stevens Watsou . Holliday Wegmann . Corcoran Wenhain Co. P. Champion Co. Westinghoase v. Lancashire Rail. Co. Wirth's Patent Wright's Patent Wright v. Hitchcock Wood v. Zimvner Woodcroft's Patent Woodward v. Sansum & Co. Yates & Kellett's Patent PAGE 1886 C.A., 3 R.P C. 147 66 1882 20 Ch. D. 780 192 1879 13 Ch. D. 65 72 1891 8 R.P.C. 22 143 1884 1 R.P.C. 253 192 1879 12 Ch. D. 303 38 1839 1 W.P.C. 576 210 1870 L.R. 5, Ex. 37 133 1815 1 W.P.C. 82 n; Holt N.P., 60 29 1846 2 W.P.C. 31 209 1887 C.A., 4 R.P.C. 166 64,66 1887 4 R.P.C. 150 208 ABBREVIATIONS USED IN TABLE OF CASES. A.C.& App. Cas. B. & A. B. & B. B. &C. Beav. C.B. C.B. N.S. Ch. or L.R. Ch. Ch. D. C.P.D. Dav. P.C. De G. F. & J. De G. J. & S. E. & B. E.B. & E. Ex. R. Cr. or Griff. Gr. A.P.C. H. Bl. H.L.C. H. & N. Law Reports, Appeal Cases. Barnewall and Alderson's Reports. Broderip and Biugham's Reports. Barnewall and Cresswell's Reports. Beavan's Reports. Common Bench Reports. Common Bench Reports, New Series. Law Reports, Chancery Appeal Cases. Law Reports, Chancery Division. Law Reports, Common Pleas Division. Davis's Reports. l)e Gex, Fisher, and Jones's Reports. De Gex, Jones, and Smith's Reports. Ellis and Blackburn's Reports. Ellis, Blackburn, and Ellin's Reports. Welsby, Hurlstoue, and Gordon's Reports. Griffin's Patent Cases. Griffin's Additional Patent Cases. Henry Blackstone's Reports. ClarkS H. of L. Reports. Hurlstoue and Norman's Reports. Holt N.P. Holt's Nisi Prius Reports. Jur. N.S. Jurist, New Series. L. J. Law Journal. L.R. Ch. Law Reports, Chancery Appeals. L.R. C.P. Law Reports, Common Pleas. L.R. ll.L. Law Reports. House of Lords, English. L.R. P.C. Law Reports, Privy Council. L.R. Ex.D. Law Reports, Exchequer Division. L.R. Eq. Law Reports, Equity Cases. L.T. Law Times Reports. L.T. N.S. Law Times Reports, New Series. M. & G. Manning and Granger's Reports. Moo. P.C.C. Moore's Privy Council Cases. M. &W. Meesou and Welsby's Reports. N.R. New Reports, Bosanquet and Pullen. Q.B. Queen's Bench Reports. Q.B.D. Law Reports, Queen's Bench Division. R. & M. Russell and Mylne's Reports. U.l'.C. Reports of Patent Cases or Patent Office Reports. Salk. Salkeld's Reports. Scott N.R. Scott's New Reports. Stark. Staikie's Reports. W.N. Weekly Notes. W.P.C. Webster's Patent Cases. W.R. Weekly Reporter. STATUTES. PAGE STATUTE OF MONOPOLIES, 21 Jas. I, c. 3 . . 2 STATUTE OF .LIMITATIONS . . . 201 5 & 6 Will. II, c. 83 (1835), Letters Patent . 204 PATENTS, DESIGNS, AND TRADE MARKS ACT, 1883 [46 & 47 Viet. c. 57] 2 Sect. 4 -. . . 12,35,77 ,,5 ... 35,68,73 5 (3) . . . . 46, 63 5(4) . . . 46,65 5(5) . . 46,60 ,,6 ... 11, 50 7(1) . . . 50 ,,7(5) , . . . 53 ,,8 . . .54 ,,9 . . .56 9(3) . . . . 117 9 (5), 10 . . .57 ,,11 ... 11,77 11(3) . ' . .- . 117 11 (4) . . . . 118 ,,12 ... 11,58,59 12(36) . . -. - .59 ,,13 . . 50, 52, 58, 136 14 . .- . . 53 15 . . . . 58 ,,16 . . . .91 17(1) (2) . . . .87 XX11 LAW OF PATENTS. PAGE PATENTS, DESIGNS, AND TRADE MARKS ACT, 1883 [46 & 47 Viet. c. 57] continued Sect. 17 (3) (4) . . . .89 17(4) . . 89 18 (1) . . . . 107 18 (2) . " . . 110 ,,18(3) . . . . . Ill 18 (4) . , . 112, 117 18(5) . . . . . 112 18(6) . . . 113 18 (7) . .. . 113, 117 ,,18(8) . .. . . 107 18 (9) . . . . 113 19 . . . 108,159 ,,20 .... 114 22 . 104 23 . 216 ,,24 . . . .88 25(1) . . . . 202 ,, 25(2)-(4) . . .206 25(5) . . . . 212 25(6) . . . 203 25(7) . . . 213 26(1) . . . . 153 26 (3) (4) . . . 154 26 (5) (6) . . . .157 26(7) . . . 158 26(8) . . . . 155 ,,27 . . . .96 28 (1) (3) . . . . 182 28 (2) (3) . . 212 29(1) . . . 141 29 (2) (3) . . . . 147 29 (4) (5) . . 148 29(6) . . . 197 30 139 STATUTES. XXH1 PAGE PATENTS, DESIGNS, AND TRADE MARKS ACT, 1883 [46 & 47 Viet. c. 57] continued Sect. 31 . . . .194 32 . '.. . . 163 33 . . -, . . 76 34 .... 3, 36 ,,35 226 36 . 91 ,,37 . . . 58 ,,38 . . : . 118120 ,,39 . . . . .33 ,,40 . . . 6 42 . 228 ,,43 , . . 98 44 . 223 44(9) . -. .153 ,,45 . . . 225 ,,46 . . 2, 87 ,,82 ' . . . . 3 83(2) ; . .182 ,,84 4 ,,85 .... 217 ,,86 . 11,43 ,,87 ..... 217 ,,88 . . . . 219 ,,89 ... - 220 ,,90 . . . .221 93 ..-. 214,222 ,,94 . , . 112,227 ,,95 . . . 227 ,,96 . .. . .220 97 . 49, 88, 225 ,,98 . ../ . 55,88,226 ,,99 . . . . 226 ,,100 . . 228 , 101 4 XXIV LAW OP PATENTS. PAGE PATENTS, DESIGNS, AND TRADE MARKS ACT, 1883 [46 & 47 Viet. c. 57] continued Sect. 102 . . . . 227 103,104 . . . .233 104 (1) . . . . 233 105 . . . . 214 107 . . . . 183 108 . . . 215 ,,109 .... . 153 110 . . . 227 111(1) .. . . .135 111(2) . . ,, .219 112 (a) . . . .227 112 (ft) (c) . . . .215 ,,116 . . .10 ,,117 . . . 215,233 Sched. I . . . 7,92 PATENTS, DESIGNS, AND TRADE MARKS ACT, 1885 [48 & 49 Viet. c. 63] .... 2 Sect. 3 . . .. 56, 58 ,,4 . .31 PATENTS, DESIGNS, AND TRADE MARKS ACT, 1886 [49 & 50 Viet. c. 37] . . . .2 Sect. 2 . " . .46 3 .34 PATENTS, DESIGNS, AND TRADE MARKS ACT, 1888 [51 & 52 Viet. c. 50] .... 2 1 (1) . . . 122, 214 1 (4) . . . 122, 215 2(2)-(5) . . .52 ,,4 . . .77 ,,5 . . . .108 26 135 CHAPTER I. INTRODUCTION. FKOM an early period in history the Crown Monopolies 17 in ancieut appears to have possessed the power or granting tiui es. to the inventor or introducer of a new industry the sole right or monopoly of carrying on that industry for a limited time. In this way the inventor hud an opportunity of obtaining the reward of his labour by being enabled to prevent for some years the competition of those who had merely to copy his processes ; at the same time the monopoly might not be for an unlimited time, for then those who had learned the new trade would have been restrained from earning a liveli- hood by its practice. The grant of a monopoly for a new industry Grant of a , . , P ., ,. ,, monopoly was entirely an act of grace on the part or the was mi act Crown, and it was usually made a condition of the grant that full information as to the mode of carrying on the trade should be given at any rate to those engaged in it ; so that they might after the expiration of the monopoly period continue to carry on the industry on their own account. The powerful Queen Elizabeth greatly abused Aimge<>r , . . ,' , . ,. , . monopolies. this right of granting monopolies ; and, to prevent 1 LAW OF PATENTS. statute of statute of a recurrence of such abuses, Parliament passed, in the reign of her feebler successor, the famous Statute of Monopolies,* which clearly defines the power of the Crown in this respect, and upon which our present Law of Patents for inventions is based. The most important section of this Act is the sixth, which declares and enacts that the previous declaration as to the illegality of monopolies " shall not extend to any letters patent and grants of privilege f r ^ ie term of fourteen years or under, hereafter to he made for the sole working or making of any manner of new manu- factures within this realm, to the true and first inventor or inventors of such manufactures, which others at the time of making such letters patent and grants shall not use, so as they shall not he contrary to law, nor mischievous to the state, hy raising prices of commodities at home, or hurt of trade, or generally inconvenient. The said fourteen years to be ac- coinpted from the date of the first letters patent or grant of such privilege hereafter 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." Act less, invention The grant of letters patent for inventions is now regulated by the Patents, Designs, and Trade Marks Acts, 1883,t amended by Acts passed in 1885,} 1886, and 1888. || The Act of 1883 defines an invention, for which alone a patent can be granted, to mean any manner of new manufacture the subject of letters patent, and grant of privilege within the above section * 21 Jac. I, c. 3. J 48 & 49 Viet., c. G3. || 51 & 52 Viet., c. 50. f 46 & 47 Viet., c. 57. 49 & 50 Viet,, c. 37. INTRODUCTION. 3 of the Statute of Monopolies, and to include an alleged invention. The interpretation of this important section interpreta- has frequently been the subject of "judicial deci- statute of 1 ,,/.,. , , , . Monopolies. sion, so that it is now pretty accurately deter- mined. In the course of time its scope has been somewhat enlarged by the decisions of judges ; manufactures have been held to include processes, Manufacture and inventors have been held to include importers, process, so that the first importer of an invention known ?"\"'i l r J. I11V I II II I h only abroad is entitled to apply for letters in| P rter - patent for the same, and to describe himself as the first and true inventor. The Statute of Monopolies provided for the grant of letters patent to the first and true inventor only ; and, until 1883, if he died without applying wiu-n for a patent, his successors could not obtain a valid before taking patent for his invention. It is now provided that patent e " the legal representatives, that is the executors or f e 'g"i repre- administrators of a deceased inventor, may within A"I is'sa, 8 ' six months of his death apply for letters patent sect 3 *' for any invention of which he died possessed ; and if he should die after applying, but before the patent is sealed, it may be granted to his legal representatives, and so not be lost to his estate. Patent Office. The Act provided for the establishment of aActi883, Patent Office ; this is situated in Southampton Buildings, Chancery Lane, W.C., and is under the immediate control of an officer, called the Comp- e Comptroller. troller-General of Patents, Designs, and Trade 4 LAW OF PATENTS. Marks, who acts under the superintendence and direction of the Board of Trade. This official will be frequently referred to hereafter as the Comp- Comptroiier troller. T fle Act a l so provided that any act or isabseut. thing directed to be done by or to the Comp- troller might, in his absence, be done by or to any officer for the time being in that behalf authorised by the Board of Trade. Seal or The Act also provides for a seal for the Patent Patent Office. . . " Sect. 84. Office, with which letters patent are sealed, and this takes the place of the Great Seal formerly used for that purpose. The Act of 1883 also provides that Sect 101. "(1) The Board of Trade may from time to time make Board of such general rules and do such things as they think expedient, make* general subject to the provisions of this Act rules for ^ " (c.) For making or requiring duplicates of specifications, business of amendment, drawings, and other documents : Office* " (d.) For securing and regulating the publishing and selling of copies, at such prices and in such manner as the Board of Trade think fit, of specifications, drawings, amend- ments, and other documents : " (e.) For securing and regulating the making, printing, publishing, and selling of indexes to, and abridgments of, specifications and other documents in the Patent Office ; and providing for the inspection of indexes and abridgments and other documents : " (f.) For regulating (with the approval of the Treasury) the presentation of copies of Patent Office publications to patentees and to public authorities, bodies, and institu- tions at home and abroad : " (g-) Generally for regulating the business of the Patent Office, and all things by this Act placed under the direc- tion or control of the Comptroller, or of the Board of Trade. INTRODUCTION. 5 " (2) Any of the forms in the first schedule to this Act may be Altering altered or amended by rules made by the Board as aforesaid. " (3) General rules may be made under this section at any time Effect of after the passing of this Act, but not so as to take effect before ru e8 ' the commencement of this Act, and shall (subject as hereinafter mentioned) be of the same effect as if they were contained in this Act, and shall be judicially noticed. " (4) Any rules made in pursuance of this section shall be laid J^J''^,^ before both Houses of Parliament, if Parliament be in session Parliament, at the time of making thereof, or if not, then as soon as practi- cable after the beginning of the then next session of Parliament, and they shall also be advertised twice in the official journal to be issued by the Comptroller. " (5) If either House of Parliament, within the next forty Rules maybe days after any niles have been so laid before such House, p^"," 1 , 1 ^,,'^ resolve that such rules or any of them ought to be annulled, the same shall after the date of such resolution be of no effect, without prejudice to the validity of anything done in the mean- time under such rules or rule, or to the making of any new rules or rule." The Board of Trade have issued several sets of rules under this section, nnd the rules at present in force are those of 1890 and a few added in 1892. These will be referred to as Patent Rules, and may be treated as if contained in the Act itself. The Patent Office is open to the public every when Patent J Otticeisopen. week-day between the hours of ten and four, ex- Patent Rules cept on the days and times following : Christmas Day. Good Friday. The day observed as Her Majesty's birthday. The days observed as public fast or thanks- giving or ns holidays at the Bank of England. There is at the Patent Office an excellent ?<=> office library. Public Free Library, which is open daily from 10 a.m. to 10 p.m., except on Sundays, Christmas 6 LAW OF PATENTS. Day, Good Friday, and Bank Holidays ; and except also on Christmas Eve, Easter Eve, and the day observed as Her Majesty's birthday, when the library closes at 4 p.m. The library contains all the printed Specifi- cations, Indexes, and other publications of the Patent Office, and also a collection of the leading British and foreign scientific journals, Trans- actions of the learned societies, and text-books of science and art. The Act also provided that " (1) The Comptroller shall cause to be issued periodically an ptiiciiii illustrated journal of patented inventions, as well as reports of patent cases decided by courts of law, and any other informa- tion that the Comptroller may deem generally useful or impor- tant. Sale branch. " (2) Provisions shall be made by the Comptroller for keeping on sale copies of such journal, and also of all complete specifi- cations of patents for the time being in force, with their accompanying drawings (if any). Publications. (3) The Comptroller shall continue, in such form as he may deem expedient, the indexes and abridgments of specifications hitherto published, and shall from time to time prepare and publish such other indexes, abridgments of specifications, cata- logues, and other works relating to inventions, as he may see fit." Several volumes of these have been published, and with current specifications .may be obtained at the sale office of the Patent Office. Applicant for Before a patent can be granted the inventor ike fait or applicant for the patent must disclose to ins invention tlie public full information as to the mode of carrying out his invention, so that at the ex- piration of the term for which the patent is INTRODUCTION. / granted the trade may be open to all. This disclosure is made by means of the complete fajkkeo*. . , -iii i p'ete specie- specification, which, will be described later, and cation. which must be filed at the Patent Office, and be open to public inspection before the patent can be granted. Form of Grant of Letters Patent. The following form of a grant of Letters Patent to a single inventor will hereinafter be the subject of frequent reference. VICTORIA, by the grace of God of the United Kingdom Act 1883, of Great Britain and Ireland Queen, Defender of the Faith : To all to whom these presents shall come greeting : Whereas John Smith, of 29, Perry Street, Birmingham, in Recitals, the county of Warwick, engineer, hath represented unto us that he is in possession of an. invention for " Improvements in Sewing Machines," that he is the true and first inventor thereof, and that the same is not in use by any other person to the best of his knowledge and belief : And whereas the said inventor hath humbly prayed that we would be graciously pleased to grant unto him (hereinafter together with his executors, administrators, and assigns, or any of them, referred to as the said patentee) our Royal Letters Patent for the sole use and advantage of his said invention : And whereas the said inventor hath by and in his complete specification particularly described the nature of his invention : And whereas we, being willing to encourage all inventions which may be for the public good, are graciously pleased to condescend to his request: KNOW YE, therefore, that we, of our especial grace, certain Grant, knowledge, and mere motion do by these presents, for us, our heirs and successors, give and grant unto the said patentee our especial license, full power, sole privilege, and authority, that the said patentee by himself, his agents, or licensees, and no others, may at all times hereafter during the terms of years 8 LAW OF PATENTS. herein mentioned, make, use, exercise, and vend the said in- vention within our United Kingdom of Great Britain and Ireland, and Isle of Man, in such manner as to him or them may seem meet, and that the said patentee shall have and enjoy the whole profit and advantage from time to time accruing hy reason of the said invention, during the term of fourteen years from the date herennder written of these presents : And to the end that the said patentee may have and enjoy the sole use and exercise and the full henefit of the Prohibition said invention, We do by these presents for us our heirs and successors, strictly command all our subjects whatsoever within our United Kingdom of Great Britain and Ireland, and the Isle of Man, that they do not at any time during the con- tinuance of the said term of fourteen years either directly or indirectly make use of or put in practice the said invention, or any part of the same, nor in anywise imitate the same, nor make or cause to be made any addition thereto or subtraction therefrom, whereby to pretend themselves the inventors thereof, without the consent, license, or agreement of the said patentee in writing under his hand and seal, on pain of incur- ring such penalties as may be justly inflicted on such offenders for the contempt of this our Royal command, and of being answerable to the patentee recording to law for his dam- How grant ages thereby occasioned : Provided that these our letters void.'' 6 6 P a tent are on this condition, that if at any time during the said term it be made to appear to us, our heirs, or successors, or any six or more of our Privy Council, that this our grant is con- trary to law, or prejudicial or inconvenient to our subjects in general, or that the said invention is not a new invention as to the public use and exercise thereof within o\\r United Kingdom of Great Britain and Ireland, and Isle of Man, or that the said patentee is not the first and true inventor thereof within this realm as aforesaid, these our letters patent shall forthwith determine, and be void to all intents and purposes, notwithstanding anything hereinbefore contained : Patentee io Provided also, that if the said patentee shall not pay all fees by law required to be paid in respect of the grant of these letters patent, or in respect of any matter relating thereto at the time or times, and in manner for the time being by law INTRODUCTION. 9 provided; and also if the said patentee shall not supply or 1 ' s"P !l| . v ' "omls lor llif cause to be supplied for our service all such articles of the service of tin said invention as may be required by the officers or com- Crow "- missioners administering any department of our service in such manner, at such times, and at and upon such reasonable prices and terms as shall be settled in manner for the time being by law provided, then and in any of the said cases, these our letters patent, and all privileges and advantages whatever hereby granted shall determine and become void, notwithstanding anything hereinbefore contained : Provided also that nothing herein contained shall prevent the granting of licenses in such manner and for such considerations sis they maj' by law be granted : 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 beneficial sense for the advantage of the said patentee. In witness whereof we have caused these our letters to bo made patent this One thousand eight hundred and and to be sealed as of the One thousand eisrht hundred and Discussion of Grant of Letters Patent. In this form of grant of letters patent to a Rir" 8 '' 11 ' 1 - . , t'ons of single inventor they are expressed to be granted ni>ii<"int to ,. . ,, . (lie Crown on the request or application or the inventor made in the prescribed form, in which lie re- presents to the Crown that he is possessed of an invention, of which he gives the title, that he is the true and first inventor thereof, and that the same is not in use by any other person or persons to the best of his knowledge and belief; and that 10 LAW OP PATENTS. being the case, bo humbly prays that a patent may be granted to him for the said invention, are recited j^ ^\\ \) Q noticed that in the grant all these in the grant. representations are recited. This recital has tho recital f effect of making the applicant warrant the truth of all his representations ; and the grant is made simply on the strength of these representa- crown takes tions being supposed to be true. The Crown on no responsi- irufhoT * ts P at 'k kakes no responsibility for the truth or recitals. otherwise of any of the representations, and it is provided that if the invention is not new, or if tho patentee is not the first and true inventor, the letters patent shall determine, and bo entirely void. vo'iun'tary on ^ ue g ran * ' s stated to be made " of our especial CroH-n ftl ' e g race > certain knowledge, and mere motion," and it is recited that " we, being willing to encourage all inventions which may be for the public good, are graciously pleased to condescend to his re- quest." This affirms the principle that there is no right on tho part of the inventor to demand the grant of the letters patent, but that the grant is a voluntary act of favour on the part of the Crown. cnnot be There are no means for compelling the Crown 3 t '.' l lcdto to grant letters patent for any invention; the parent. ac j- g ant | ru ] e s only govern the forms which must be complied with in making the grant ; and tho Act of 1883 specially provides that Sect. no. "nothing in this Act shall take away, abridge, or prejudi- cially affect the prerogative of the Crown in relation to the granting of any letters patent, or to the withholding of a grant thereof." INTRODUCTION. 11 There is, therefore, no doubt that the Crown might step in and prevent the grant of a patent on any application: but this power is rather a But is ,. , 1-1 T unlikely to matter or historic interest, and in the ordinary interfere, course if an application for a patent be made in pr-oper form, and the examiner to whom it is referred report that "the nature of the invention has been fairly described, and Act 1883, the application, specification, and drawings (iE any) have been prepared in the prescribed manner, and that the title suffi- ciently indicates the subject-matter of the invention," the Act provides that "if there is no opposition, or, in case of opposition, if the Actl8&5, determination is in favour of the grant of a patent, the A c 8 c a ' ^fig Comptroller shall cause a patent to be sealed with the seal of patent will ,, , , f^fn ue granted. the Patent Office. The Comptroller has the power of refusing to Act t 1 |g Sf grant a patent for any invention of 'which the use Except for . . . illegal or would, in his opinion, be contrary to law or immoral purpose, morality : but with this exception he does not Comptroller * ' has no appear to have any power of refusing the grant discretion as . r r . . to grant in if the examiner gives a favourable report on ordinary cases, the formal points which alone are referred to him, unless an opposition be decided in favour of the opponent. Now the grant of a patent can be opposed only on one of three grounds, namely : " (i) That the applicant had obtained the invention within Act 1883, sect 11 the United Kingdom from the opponent, or from a Grounds on person of whom he is the legal representative ; or "m'ile |mtc " 1 " (ii) That the invention has been patented in this country opposed, on an application of prior date ; or 12 LAW OP PATENTS. Act 1888, " (Hi) That the complete specification describes or claims an invention other than that described in the provisional specification, and that such other invention forms the subject of an application made by the opponent in the interval between the leaving of the provisional specifi- cation and the leaving of the complete specification." Unless Unless, therefore, the patent applied for can putt-mi's be brought within the ran ere of one of these granted. . . ... objections there is nothing to prevent any person obtaining a patent for anything he pleases, even though the patent when obtained will be clearly bad. Patentee win As soon as a person has obtained a patent he bring actions . . . . is, as we shall see later, in a position to bring actions against any persons who may infringe his and tin-eaten, patent, and also to threaten to bring such actions against infringers ; and even though he utterly fail to establish the validity of his patent, he may still be enabled by such means to injure the business of his rivals in trade, and to reap consi- derable profits. Rail patent If a patent is of doubtful validity, but not oflcn i valuable, clearly bad, it may, nevertheless, be a very valuable property, since those desiring to use the invention will often prefer to accept a license and pay royalties under such a patent rather than incur the cost and risk of a patent action. AH action The value of such a patent will be greatly enhances r . J value .f enhanced if it be made the subject of an action for infringement, and a certificate be obtained that its validity has been called in question, since in that case any subsequent infringer may be compelled, if unsuccessful in an action for in- INTRODUCTION. 13 fringement, to pay tlie patentee's costs as between solicitor and client, a risk which few are willing to incur. The certificate is only that the validity was Certificate of called in question, and not that it was established, so that even when the patent is held bad a cer- tificate of validity may be obtained. A certifi- cate may be given even when the action is settled upon terms arranged between the parties, so that the certificate may be obtained without there being any actual decision on the question of validity. Even if at the trial the patent is held bad, the Judgment patentee need not alwa}'s lose hope, for he may be patent may - , i- i ' )e reversed successful on an appeal; or, it lie can arrange on appeal, ii- i ri even liy matters with his opponent?, lie can in the Court arrangement. of Appeal get the judgment against his patent reversed, and an injunction granted upon the terms which he has arranged without his being obliged to disclose those terms.* It need hardly be said that in order to make a Skilful . . management bad patent valuable it is necessary to have very required to r .... "' k liad skilful management ; and, to avoid running risks, patent. an intimate knowledge of the law of threats is also needful ; but with these conditions a bad patent backed up by sufficient capital may sometimes be worked so as to give the patentee a monopoly nearly as perfect as if the patent were good. It must always be remembered that the profit si's"' " . . . . invention arising from an invention is not proportionate to often .... valuable. the difficulty of making it ; many patents of great value protect only very slight improvements on existing machines or processes. Provided an in- * Cheethain v. Oldham, 1891, 8 R.P.C. 168. 14 LAW OF PATENTS. vention is useful and shows some ingenuity, the amount of ingenuity is of little consequence, and as a general rule it may be said that the smaller the scope of a patent the less is the chance of its Cost of pa- being upset. The cost of obtaining 1 a patent is lent is small. , , ,, , . c .-, . V 'A- now so low that it the inventor be in a position to get the invention worked at all, a very small royalty will soon repay his outlay and yield him a profit, which may be out of all proportion to the amount of time and thought which he has bestowed on the invention. Difficulty of On the other hand, it very often happens that a Belting au invention useful invention of great ingenuity, which the iu- taken up. * ' venter is not in a position to get taken up, never repays him the fees expended in applying for a patent. There can be no doubt that it is often far easier to make an invention than to make it a com- mercial success ; and au inventor who cannot work his own patent will, as a rule, be wise if he be con- tent to accept a small profit for himself, and leave the rest to those who undertake the more difficult and risky task of introducing it to the public. CHAPTER II. SUBJECT-MATTER OF LETTERS PATENT. LETTERS patent can be granted only for an invention that is for " a new manufacture within this realm which others, at the time of making such letters patent and grants, shall not use ; " it must, therefore, in every case be determined whether the subject-matter of a proposed patent is a manufacture, and if so whether it be a new manufacture within this realm. What is a Manufacture ? The first question, What is a manufacture ? is one comparatively simple to answer ; it is a matter of law, and the whole law of the subject was summed up in 1865 by Lord Westbury in the House of Lords ; he said : " Your Lordships are well aware that by the large interpreta- tion given to the word ' manufacture,' it not only comprehends productions, but it also comprehends the means of producing them. Therefore, in addition to the thing produced, it will comprehend a new machine or a new combination of machinery ; it will comprehend a new process or an improvement of an old process."* * Ralston v. Smith, 1865, 11 H.L.C. 223. 10 LAW OF PATENTS. A suigcct fur The term manufacture does not extend to those copyright is . . ... . . not an things which are the proper sumects or copyright. invention, iii l 5 such as books, pictures, carvings, and designs, where what are protected are really only new forms produced by the exercise of a known art or manufacture, and cannot be looked upon as being themselves new manufactures. For instance, a new design of lace made by a novel arrangement of well-known machinery would not be the subject of a patent ; while a patent might be granted for a new combination of machinery for producing an old design of lace. A discovery It is not enough that a person should make a may not be an invention, discovery. A man may discover a law of nature which has never before been suspected, and yet he cannot take out a patent, so as to prevent others from using the result of his discovery. Kifectof He may discover that a known drug can produce drag IlUt III! Till 1 1 1 iuveniiun. new and valuable effects, but this is not subject- matter for a patent, because it is merely a new application of an old substance which anyone might make, not in any sense a new manufacture ; while the discovery that a new mixture of drugs is useful will entitle the discoverer to a patent for the manufacture of such a mixture. NO patent for The law of nature or the effect of a driiijf are a principle. . what may be termed principles, and a patent cannot be granted for a principle. This was very clearly stated by Justice Butler, who said : " The very statement of what a principle is proves it not to be ground for a patent. It is a first ground and rule for arts and sciences, or, in other words, the elements and rudi- SUBJECT-MATTER OF LETTERS PATENT. 17 incnts of them. A patent must be for some new production from those elements, and not for the elements themselves."* It has, however, been laid down that " A patent will be good, though the subject of the patent consists in the discovery of a just, general, and most comprehen- sive principle in evidence or law of nature if that principle is by the specification applied to any special purpose, so as thereby to effectuate a practical result and benefit not previously attained."f In some cases a patent may go very near to Patent mny covering a principle, and it may be difficult to tell principle, whether it is really for a principle or only for the product obtained by applying a principle. It is also necessary that the subject of a patent invention should be useful, since, if it were not, the explana- uefui. tion of how to carry it into effect would be of no value, and the patent would fail because the consideration on which it was granted had failed. The question as to how much utility is neces- HOW much sary is a somewhat difficult one to answer, but thereto* it is certain that a very small amount is sufficient : this seems reasonable, since, if there is the smallest utility in the invention, the consideration for the grant cannot be said to have wholly failed, and as long as there is any consideration it is sufficient to support the grant. In one case Baron Alderson, in addressing the jury, said : " A question in this case will be whether you think the steam- engine was a useful invention ; if it was of any use. I think * Boulton v. Bull, 1795, Dav. P.C. 196. f Househill Co. v. Neilson, 1843, 1 W.P.C. 673. 2 18 LAW OF PATENTS. if it was (if different construction from any other steam-engine, and of any use to the public, then that is sufficient."* It has been judicially stated that " the inten- tion to produce a profitable matter is of the essence of a patent ;"t and with this no fault can be found. But the question, Has the patent proved profitable or not ? is quite another matter. The House of Lords have clearly laid down that Commercial " The element of commercial pecuniary success has no rela- no relation to tion to the question of utility in patent law generally, though of course, where the question is of improvement by reason of cheaper production, such a consideration is of the very essence of the patent itself, and the thing claimed lias not really been invented unless that condition is fulfilled." J Thus in only one class of case can the question of commercial success or failure be properly taken into account, utility is The question of utility is one purely of fact, question of , . f c *- and must, like other questions of fact, be treated entirely by itself without reference to other cases. What is a " New Manufacture " ? To entitle it to the protection of a patent a manufacture must be new within this realm that is, within the United Kingdom and the Isle of Man. It is no objection to an invention that it has been used in a foreign country, or even within a British colony. * Morgan v. Seaward, 1835, 1 W.P.C. 176. f Higgs v. Godwin, 1858, E.B. & E. 529; 27 L.J.Q.B. 421. J The Badische Anilin v. Levinstein, 1887, 4 R.P.C. 462. Rolls v. Isaacs, 1881, 19 Ch. 1). 268. SUBJECT-MATTER OP LETTERS PATENT. 19 It will perhaps assist us in considering what is a new manufacture, or, to put it more shortly, what is an invention, if we consider all inventions as divided into two classes : 1. Master or pioneer inventions that is, in- ventions which open up new industries. 2. Improvement inventions. Master Inventions. A man makes a master invention when he does something of a new kind which nobody else has ever done. In such a case it is very probable that when once the result has been obtained it becomes easy to invent ways in which that result may be attained, and to improve on the method of attaining it, and very possibly on the result itself; the real invention consists of the idea of doing a certain thing, and not so much in the means for doing it. A patent for such an invention is usually spoken of as a master patent. The specification of a master patent needs to be ciaimof very carefully drawn, so as to make it claim as m'ustTe much as possible without claiming too much, so a * as to run the risk of being held bad for claiming a principle. An inventor may be rightly entitled to a master patent, yet through the bad drafting of his specification he may find himself only entitled to an amount of protection so small as to be practically valueless, since it only enables him to prevent the use of a few out of many ways of attaining the same result. An invention of this 20 LAW OF PATENTS. Master kind certaiuly seems to deserve the most COn- patent i liberally siderate treatment, though the following state- construed. ment or Baron Anderson, made in 1837, has been considered to be rather strong : " You cannot take out a patent for a principle. You may take out a patent for a principle coupled with a mode of carrying the principle into effect, provided you have not only discovered the principle, but invented some mode of carrying it into effect. But then you must start with having invented some mode of carrying the principle into effect ; if you have done that, then you are entitled to protect yourself from all other modes of carrying the same principle into effect, that being treated by the jury as a piracy of your original invention."* This mustbe somewhat modified, and the Court of Appeal have laid down that where a patent has been granted for a method of applying a new principle "you can prevent anyone from using the same method of carrying that principle into effect, and you can prevent anyone from using only the same thing with a colourable difference."f Patent must The great point to remember is that the patent poetical cannot be granted for the principle, but only for application. _ * . the practical npplication or the principle, the carry- ing of it into practice. Thus it has been said that " If you have a new principle or a new idea as regards any art or manufacture, and then show a mode of carrying that into practice, you may patent that, though you could not patent the idea alone, and very likely could not patent the machine alone, because the machine alone would not be new."J * Jupe v. Pratt, 1837, 1 W.P.C. 146. f Automatic Weighing Machine Co. v. Knight, C.A., 1889, 6 R.P.C. 304. J Otto v. Linford, C.A., 1881, 46 L.T.N.S. 35. SCBJECT-MATTEfi OF LETTERS PATENT. 21 In the case of a master patent we may put ifc Every shortly that though every method of carrying out cannot be an invention cannot be claimed, for that would be c< claiming a principle,* still the claim can be made in such a \vay that any method used for carrying out the invention infringes it ; and, even though the method itself may be new in all its more im- portant details, and may be rightly the subject of another patent, such patent will be in reality only for an improvement on the invention of the Patent tor . . , . , .., . .. . . improvement original inventor, and will be tributary to his tributary to master master patent. patent. If this were not the case it would be almost impossible, when introducing a new industry, to prevent others from imitating it with small differ- ences, so as to appear not to infringe the rights of the original inventor. Improvement Inventions. Naturally the number of master patents is very limited, and by far the greater number of appli- cations are for patents for improvements in established industries. In the case of a master patent the fact that in- There m be some genuityhas been displayed is hardly open to doubt, '"ventio but in the case of other inventions there must be proof that some inventive genius has been dis- played. This question of whether there is any invention in the subject-matter of a patent is very closely connected with the question of whether there is * NeilHon v. Harford, 1841, 1 W.P.C. 355. 22 LAW OF PATENTS. There may be novelty without invention. Public knowledge must be considered. Substitution of equivalent not inven- tion, but discovery of equivalent in.iv be. New applica- tion or a general principle may be invention. sufficient novelty in an invention to support a patent. There is, of course, novelty in doing anything which has never been done before, but the means of doing it, though novel, may be so obvious to anyone skilled in the subject, that the discovery of it cannot be said to require any such exercise of inventive genius as could rightly entitle the man who first happened to do it to a patent for prevent- ing others pursuing a like course. Before deciding whether anything is really an invention or not, regard must be had to what is called the state of public knowledge at the time. It is not a question of what the inventor himself actually knew about the subject, but of what an ordinary skilled person would be expected to know. Thus if one thing is known to be the mechanical or chemical equivalent of another, the mere substitution of one for the other, even if it gives the same result in a cheaper way, is not an invention for which a patent can be granted ; but the discovery that they are equivalents and the substitution of one for the other in the manu- facture, provided such substitution is useful, may well be the subject of a patent.* " If with a particular purpose in view you take the general principles of mechanics, and apply one or other of them to a manufacture to which it lias never before been applied, that is suffi- cient ground for taking out a patent." t There must, however, be some novelty in the applica- * Horton v. Mabon, 1862, 16 O.B.N.S. 141 ; 31 L.J.C.P. 255. t Dangcrfield t). Jones, 1865, 13 L.T.N.S. 142. SUBJECT-MATTER OF LETTERS PATENT. 23 tion ;* " you cannot have a patent for a well-known But appiica- meclmnical contrivance merely when it is applied in m>ti>e .... . , !in.ilogous to a manner or to a purpose which is not quite the same, old, but is analogous to the manner or purpose in or to which it has been hitherto notoriously applied. "t " A patent cannot be granted merely for a new nor new use n i JJJ. ofold use ot an old machine/! machine. The invention may consist in a new process for New proems * tor old result obtaining a known result, as for the manufacture of a well-known substance ; and it may none the less be a good invention because it consists only in the omission of a step in the old process of Omis . sion of step in manufacture, since this may effect a considerable process, saving in the cost of the process. Again, an invention may consist in a new com- c .mimmtion . .-"'.' ot ' ol<1 i >art8 binatiou of old materials previously in use for the maybe 1 t invention. same purpose, or for a new method of applying such materials ;|| or in a new combination of old parts to produce a new result, or to produce a known result in a more useful and beneficial way,^[ or in a combination which may consist not entirely c.-mimiatioii J J of old ami of old parts, but may contain some parts which new parts, are entirely novel : and in such a case the patent Subordinate * . integers inny may be made to protect not only the whole cornbi- be protected, nation, but also these novel parts, or subordinate integers, as they are called. * Brook v. Aston, 1857, 8 E. & B. 485. t Harwood v. Great Northern Railway Co., 1865, 11 H.L.C. 082. I Ralston v. Smith, 1865, 11 H.L.C. 223. Russell v. Cowley, 1834, 1 W.P.C. 459. || Hill v. Thompson & Forrnan, 1817, 1 W.P.C. 237. ^[ Harrison v. The Anderston Foundry Co., 1876, 1 App. Cas. 577. 24 LAW OF PATENTS. The law on the subject of subordinate integers was stated by Lord Cairns in the House of Lords in the following language : e w hl e invention there may be tliat which itself is a minor invention, and which does not extend to the whole, but forms only a subordinate part or integer of the whole. Now, again, that subordinate integer may be a step or a number of steps in the whole, which is or are perfectly new, or the subordinate integer may not consist of new steps, but may consist of a certain number of steps so arranged as to form a new combina- tion within the meaning which is attached by the Patent Law to the term ' combination.' Suppose that in a patent you have a patentee claiming protection for an invention consisting of parts which I will designate as A, 13, C, and D ; lie may at the same time claim that as to one of those parts, D, it is in itself anew thing, and that as to another of those parts. C, it is itself a combination of things which were possibly old in themselves, but which, put together and used as he puts them together and uses them, produce a result so new that he is entitled to protection for it as a new invention. In a patent of that kind the monopoly would or might be held to be granted not only for the whole and complete thing described, but to those sub- ordinate integers entering into the whole which I have described. But then the invention must be described in that way ; it must be made plain to ordinary apprehension, upon the ordinary rules of construction, that the patentee has had in his mind and has intended to claim protection for those subordinate in- tegers."* W|i " In the case of a combination consisting entirely invention 18 ... only romiii- o f old parts, so that the whole invention consisted nation of old r parts. in combining well-known things, the House of Lords pointed out how the novelty and incidentally the invention could be tested iu the following language : * Clark v. Adie, 1877, 2 App. Cas. 320. SUBJECT-MATTER OF LETTEKS PATENT. 25 " The test of novelty is this : Is the product which is the result of the apparatus for which an inventor claims letters patent effectively obtained by means of your new apparatus, whereas it had never been effectively obtained by any of the separate portions of the apparatus which you have now com- bined into one valuable whole for the purpose of effecting the object you have in view ?"* The new combination may differ only to a very Small 11 i- 11 i i addition rriiiy small extent from an old one, it may be merely a ie invention, slight addition or modification in one part of a machine, which when made looks as if it ought to Lave been obvious ; but, as Jessel, Master of the Rolls, said " Where a slight alteration in a combination turns that which was practically useless before into that which is very useful and very important, judges have considered that, though the invention was small, yet the result was so great as fairly to be a subject of a patent ; and, as far as a rough test goes, I know of no better."f Even " the introduction into an old combination of a new shape of one of the old elements of that combination, which involves a law of nature otherwise left on one side, may be good subject- matter for a patent."J And in dealing with the case of a combination patent, Chief Justice Tindal in 1840, in giving judgment, said : " We are of opinion that if the result produced by such acorn- New or * better * Cannington v. Nuttall, 1871, L.R., 5 ILL. 216. f Hinks and Son v. The Safety Lighting Co., 1876, 4 Ch. D. 607. J Edison and Swan United Electric Light Co. v. Woodhouse and Kawson, 1887, C.A., 4 R.P.C. 93. 26 LAW OF PATENTS. New or bination is either a new article, or a better article, or a cheaper article. article to the public than that produced before by the old method, such combination is an invention or manufacture in- tended by the statute, and may well become the subject of a patent."* This judgment has been frequently followed, f and in a well-known case on wire bustles where the fact of invention was hotly disputed, as bustles were well-known articles, and the materials used by the patentee were also well known, the House of Lords held that the patent was good on the following ground : Complete " The result is a complete article, light, effective, not likely to get out of order, and capable of being manufactured, and therefore sold cheaply, and I am unable to say that to produce a new thing combining those qualities required no invention. "J Although decided cases are of considerable value in helping us to deal with the questions of novelty and invention, it must always be One case no remembered that the question of invention is one authority in . . . , A .. ... , .mother. or tact in each case depending on the circum- stances, and a decision in another case is no authority." Anticipation. Hitherto we have treated the question of novelty from the point of view of general public * Crane v. Price, 1842, 1 W.P.C. 409. f Vickers v. Siddell, 1890, H.L., 7 R.P.C. 306; Lyon v. Goddard, 1893, 10 R.P.C. 338. J Thompson v. American Braided Wire Co., 1889, H.L., 6 R.P.C. 528. Lyon v. Goddard, 1893, C.A., 10 R.P.C. 344; H.L., 11 R.P.C. 353. SUBJECT-MATTER OF LETTERS PATENT. 27 knowledge, and it has been assumed that the thing claimed by the patent was in the widest sense of the word novel, that is, the actual thing had never before been done, or if done it had only been done in some way different from that pointed out in the specification of the patent. The question which we have now to deal with is one of less difficulty. A patent may be bad Patent may because what is claimed in it has been anticipated pte* by something done, or proposed to be done, before the date of the patent. Letters patent must be for a manufacture which others at the time of making such letters patent and grant do not use. And this has been extended to mean by prior not only that the invention must not be in use at the date of the patent, but it must not have been in use at any time before the date of the patent,* unless such use was merely experi- mental and was not published. Again, the By prior invention must not have been published within the realm, since the knowledge of how to use the invention is equivalent to the actual user; and people must not be prevented from doing that which they are assumed to have known how to do before the grant of the patent. Thus the invention may have been anticipated by prior user or by prior publication. We have now to see what ought to be reckoned as sufficient prior user or publication to invalidate a patent. Perhaps the simplest kind of anticipation is wimt, is prior by prior public user of the invention. * King, Brown, and Co. v. Anglo-American Brush Co., 1889 6 R P.C. 421. LAW OK PATENTS. The user must be public, that is, known to others besides the inventor, andkuownto them with- out their being bound to secrecy,* so that they might be at liberty to use it themselves. Again, it is not enough that the invention has been put in use by some person other than the inventor Prior user w ho applies for a patent, if such use was only bv must be rr J J commercial. \vny of trial or experiment, and was not of a com- mercial character or openly practised. As Lord Abiuger has said : " The meaning of ' public use ' is this : that a man shall not by his own private invention, which he keeps locked up in his own breast, or in his own desk, and never communicates it, take away the right that another man has to a patent for the same invention. 1 !" Putilic use "The public use and exercise of an invention means a use niciins use in . . ... . ,1,1 , i. ,. public, not by Mid exercise in public, and not by the public, the public. And in the same case Baron Alderson explained that " Public use means a use in public so as to come to the knowledge of others than the inventor, as contradistinguished from the use of it by himself in his chamber."J In a case in which the defendants to an action for infringement pleaded that they had used the invention before the date of the patent, Chief Justice Tindal, in instructing the jury, said : " If it was generally known and practised, and not merely as a matter of experiment, and that kept secret by the party, and thrown away as the result of that which was of no use to the * Gadd v. Mayor of Manchester, 1892, C.A. 9 E.P.C. 516. t Carpenter v. Smith, 1841, 1 W.P.C. 534. J Ibid., p. 5-12. SUBJECT-MATTER OF LETTERS PATENT. 29 public, the patent is gone ; or if the defendants have shown that they practised it and produced the same result in their factory before the time the patent was obtained, they cannot be prevented by the subsequent patent from going on with that which they have done."* A patent may probably be anticipated by thereof public sale of a finished article or exposing for sale article may ^ -t -11 i (. anticipate of a finished article produced by the use of the process, patented invention, even though a mere examina- tion of such product would not disclose the details of the invention, or enable others to use the inven- tion ; for it has been laid down that " The public sale of that which is afterwards made the sub- ject of a patent, though sold by the inventor only, makes the patent void."f But the cases en this question are not quite User need consistent. Again, such prior public user need udnteor not extend to the date of the patent ; it has been p " held that " If it is proved distinctly that a machine of the same kind was in existence, and was in public use, that is, if use or if trials had been made of it in the eye and in the presence of the public, it is not necessary that it should come down to the time when the patent was granted."]; In a case of prior user it is necessary that the The actual * invention user should have been a user of the actual in von- ;sthave IM-I-II used. * Cornish and Sieven v. Keene, 1835, 1 W.P.C. 510. t Wood v. Zimmer, 1815, 1 W.P.C. 82n ; Holt, N.P., 60; cf. Hancock v. Somervell, 1851, 39 Newton's Lond. Journ. 158 ; Morgan v. Seaward, 1837, 1 W.P.C. 195 ; Hills v. London Gas Light Co., 1860, 5 H. & N. 336. J King, Brown, and Co. v. Anglo-American Brush Co., 1889, 6 R.P.C. 424. 30 LAW OF PATENTS. tion which is the subject of the patent : it is not enough that a machine somewhat resembling the patented machine, but inferior to it, should have been used even though it produced a similar result, for it has been clearly laid down that " A machine which would do the work of the patent machine more or less badly is not an anticipation of the patent."* Even if such a machine contains some of the parts which the inventor believed to be new, his patent may still be good for an improvement on such prior machine ; for, as Jessel, Master of the 11611s, stated "Ut does not follow that because an inventor thinks he has invented more than lie has in fact, and describes the advantages of hisMnveution^and some of these advantages arise from an old portion of the invention, it may not still be a good patent, provided that the invention as claimed is so limited as to fail to cover the actual thing in use, while it covers some of the advantages mentioned ; in such a case it may still, no doubt, be a good patent, "f wimt is prior Lastly, an invention may be anticipated by publication. . i , rpi i T , -ii prior publication. Ihis means publication with- out any reservation, for the communication of an invention to a person who is aware that it is not intended to be published does not amount to a pub- lication. J " The antecedent statement must be such that a person of ordinary knowledge on the subject would be able practically to * Barlow v. Baylis, 1870, 45 Griff, f Frearson v. Loe, 1878, 9 Ch. D. 58. I Gadd and Mason v. Mayor, &c., of Manchester, C.A., 1892, 9 R.P.C. 516 : 67 L.T. 569. SUBJECT-MATTER OF LETTERS PATENT. 31 apply the discovery without the necessity of making further experiments and gaining further information before the inven- tion can be made useful. The information as to the alleged invention given by the prior publication must, for the purposes of practical utility, be equal to that given by the subsequent patent."* The law on the question of prior public user and prior public knowledge was in 1861 summed com P lete - up by Lord Chancellor Eldon in these words : " Whatever is essential to the invention must be read out of the prior publication. If specific details are necessary for the practical working and real utility of the alleged invention, they must be found substantially in the prior publication. Apparent generality, or a proposition not true to its full extent, will not prejudice a subsequent statement which is limited, accurate, and gives a specific rule of practical applica- tion. The reason is manifest, because much further informa- tion, and therefore much further discovery, are required before the full truth can be extricated and embodied in a form to serve the uses of mankind. It is the difference between the ore and the refined and pure metal which is extracted from it. .... Upon principle, therefore, I conclude that the prior knowledge of an invention to avoid a patent must be a know- ledge equal to that required to be given by a patent, viz. such a knowledge as will enable the public to perceive the very discovery, and to carry the invention into public use."f The most usual way in which an invention gets Publication published is in the specification of a patent specification, (provisional specifications were all published prior to 1885, but now a provisional specification is not Actisss, published unless it is followed up by a complete specification) or in some book or periodical. * Moseley v. The Victoria Rubber Co., 1887, 4 R.P.C. 252 ; see 4 De Gex F. & J., p. 299. f Hills v. Evans, 1861, 31 L.J. Ch. 463. LAW OF PATENTS. or by book or periodical, whether published in England or abroad. Book in public library. In tlie case of a book or periodical published in England it is not necessary to prove anything beyond the date of publication, but an invention may be published in any well-known foreign language, such as French or German, and in the case of a foreign publication it is necessary to show that at least one copy was published in England. It is not necessary to prove that anyone in this country read the account of the invention ; ifc is enough that they were in the position of being able to do so. Thus the deposition of a German specification in the library at the Patent Office,* or pre- sumably the deposition of the anticipation at any public library, where it would be notified in the catalogue and open to inspection without an} T record being kept of such inspection, or the sale in this country of a foreign periodical containing a description of the patented article,t before the date of the patent, is a prior publication of the invention. But, on the other hand, the mere fact that a foreign book containing a description of the in- vention is in an inner room of the British Museum is not of itself evidence of publication ; it would bo necessary to show that some one had looked into it. | Publication The prior publication must be complete in 'mpietein itself, it is not enough for an anticipation to be itself, and * Harris v. Rothwell, C.A., 1887, 4 R.P.C. 225. t Pickavd and Co. v. Presoott, H.L., 1892, 9 R.P.C. 195. J Otto v. Steel, C.A., 1886, 3 R.P.C. 109. SUBJECT-MATTER OP LETTERS PATENT. 33 contained in several independent documents; this it must not is evidence of public knowledge, and may be fronidifferent used to show that there is no sufficient subject- 1 " matter for invention ; but the fact that by com- paring a number of documents it is possible to get sufficient information to enable one to do that which is described in the specification is not an anticipation of the patent.* Publication at an Exhibition before Application for Patent. Before leaving the consideration of what prior user or publication will defeat a patent, one case must be mentioned in which the exhibition of the invention before application for a patent is made will not affect the subsequent application, provided all the necessary for-malities are complied with. It is provided that " The exhibition of an invention at an industrial or interna- Art 1883, tional exhibition, certified as such by the Board of Trade, or tecUon 9 ^ the publication of any description of the invention during patents the period of the holding of the exhibition, or the use of the industrial invention for the purpose of the exhibition in the place where exllljlt " ms - the exhibition is held, or the use of the invention during the period of the holding of the exhibition by any person elsewhere, without the privity or consent of the inventor, shall not pre- judice the right of the inventor or his legal personal represen- tative to apply for and obtain provisional protection and a patent in respect of the invention, or the validity of any patent granted on the application, provided that both the following conditions are complied with, namely : " (a) The exhibitor must, before exhibiting the invention, give * Von Heyden v. Neustadt, 1880, 50 L.J. Ch. 128. 3 34 LAW OF PATENTS. the Comptroller the prescribed notice of his intention to do so ; and " (6) The application for a patent must be made before or within six months from the date of the opening of the exhibition. Act 1886, " Whereas it is expedient to provide for the extension of this section to industrial and international exhibitions held out of the United Kingdom, be it therefore enacted as follows : Protection of "It shall be lawful for Her Majesty, by Order in Council, from exhibited at time to time to declare that sections thirty-nine and fifty-seven international O f t ] ie p a t en ts, Designs, and Trade Marks Act, 1883, or either r\ hi ni' 1011S of those sections, shall apply to any exhibitions mentioned in the Order in like manner as if it were an industrial or inter- national exhibition certified by the Board of Trade, and to pro- vide that the exhibitor shall be relieved from the conditions, ' specified in such sections, of giving notice to the Comptroller of his intention to exhibit, and shall be so relieved either abso- lutely, or upon such terms and conditions as to Her Majesty in Council may seem fit." For these cases the Patent Rules, 1890, provide that- Patent " Any person desirous of exhibiting an invention at an NoUce 5 fo industrial or international exhibition, or of publishing any Comptroller description of the invention during the period of the holding ofintendcd , ,, l . .. ... , . ,. ...... e exhibition, of the exhibition or ot using the invention ror the purpose or the exhibition in the place where the exhibition is held, shall, sifter the Board of Trade have issued a certificate that the exhibition is an industrial or international one, give to the Comptroller notice of his intention to exhibit, publish, or use the invention, as the case may be. " For the purpose of identifying the invention in the event of an application for a patent being subsequently made, the applicant shall furnish to the Comptroller a brief description of his invention, accompanied, if necessary, by drawings, and such other information as the Comptroller may in each case require." p. 284. This notice to the Comptroller must be given on Patent Form O, which must bear a stamp for 10*. CHAPTER III. WHO MAY APPLY FOR A PATENT. UNDER the Statute of Monopolies a patent could be granted to the true and first inventor or in- ventors of a manufacture ; and this has been but slightly modified by later statutes. It is still true that a valid patent can only be granted to the true and first inventor or inventors (if living), either alone or in conjunction with others who are not inventors, but the words have been fre- quently subject to judicial consideration, and their scope has been materially widened from what they at first sight might seem to include. Later statutes have also affected the class to whom patents may be granted by making pro- vision for cases in which, by the untimely death of an inventor, his estate would have formerly been deprived of the benefit of his invention. It is now provided that " (1) Any pereon, whether a British subject or not, may who may make an application for a patent. apply fora patent, " (2) Two or more persons may make a joint application for a Act 1883, patent, and a patent may be granted to them jointly." The Act of 1885 declares that " Whereas doubts have arisen whether under the principal Sect. 5. Act a patent may lawfully be gran ted to several persons jointly, some or one of whom only are or is the true and first inventors or 36 LAW OP PATENTS. inventor ; be it therefore enacted and declared that it has been and is lawful, under the principal Act, to grant such a patent." Thus a patent may be applied for by any person or group of persons, whether British subjects or aliens ; and since person includes corporation, Corporation there is nothing to prevent a patent being applied for by a joint-stock company, either alone or in conjunction with other corporations or persons. It is obvious that a corporation cannot invent Corporation anything, but, as we shall see later, the inventor may l>e true ana first may b e only an importer: so that a corporation inventor. ' however, absolutely necessary that the from abroad. R& Wirth . g patent> Ig79j 12 Ch D 303 t Moser v. Marsden, C.A., 1893, 10 R.P.C. 350. J Steedman v. Marsh, 1856, 2 Jur. N.S. 391. WHO MAY APPLY FOR A PATENT. 39 communication (except iii the case of an applica- tion by the personal representatives of a deceased inventor) should be received from some person not in the United Kingdom. It has been held that " The communication made in England by one British subject to another does not make the latter a first and true inventor to whom a valid patent can be granted." * Except in the case of an importer the first and Applicant , , , . iii- nmst l>e re true inventor must be the actual inventor, that is, inventor. he must himself have exercised inventive genius in discovering the invention ; as Chief Justice Tindal said : "A man may publish to the world that which is perfectly new in all its uses, and has not before been enjoyed, and yet he may not be the first and true inventor ; he may have borrowed it from some other person, he may have taken it from a book, he may have learned it from a specification, and then the Legislature never intended that a person who had taken all his knowledge from the act of another, from the labours and assiduity and ingenuity of another, should be the man who was to receive the benefit of another's skill." f In the same case, however, he also stated : " It would not be sufficient to destroy this patent -to show that learned persons in their studies had foreseen or had found out this discovery that is afterwards made public, or that a man in his private warehouse had by various experiments endeavoured to discover it and failed, and had given it up." This inventive genius may, however, be exer- invention cised in developing the suggestions of others. Itntnn another. * Marsden . Saville Street Foundry and Engineering Co., 1878, L.R., 3 Ex. D. 203. t Gibson and Campbell v. Brand, 1841, 1 W.P.C. f>28. 40 LAW OF PATENTS. was held in the Court of Appeal, in the well- known bustle case, that " If a mere suggestion is made upon which the rnind of the inventor has to work, and out of which the mind of the inventor produces something that is different from, an improvement upon, and a distinct variation from the suggestion, I apprehend the fact that it has been suggested by the reading of a specification, or by looking at the drawings of a specification, will not prevent his having a right to patent his invention." * invention The iiiveution itself may consist entirely in the application of application of knowledge gained from the works of others ; as Lord Justice James has said : " Even if it could be shown that a patentee had made his dis- covery of a consecutive process by studying, collating, and applying a number of facts discriminated in the pages of such works, his diligent study of such works would as much entitle him to the character of an inventor as the diligent study of the works of nature would. "f inventor I n the process of invention the inventor may may have > .* * assistants, receive assistance and even important suggestions from others, and yet he may be entitled to describe himself as the true and first inventor ; he may employ servants to carry out experiments for him, and even to work on their own account on com- paratively slight suggestions from him, and yet he may be entitled to a patent for the result of their labours. In an old case the law on this subject was stated by Justice Erie with great clearness as follows : " I take the law to be that if a person has discovered an im- proved principle, and employs engineers, agents, or other * American Braided Wire Co. v. Thompson and Co., C.A., 1888, 5 R.P.C. 120. f Von Hoyden v. Neustadt, 1880, 50 L.J. Ch. 128. WHO MAY APPLY FOR A PATENT. 41 persons to assist him in carrying out that principle, and they, in the course of the experiments arising from that employment, make valuable discoveries accessory to the main principle, and tending to carry that out in a hetter manner, such improvements are the property of the inventor of the original improved prin- ciple, and may he embodied in his patent."* The employer, however, must have some claim Applicant ,. , , must exercis to be described as the inventor: he must have some inven- ... , lion- exercised some inventive genius, even though it may not have been much : if the servant alone by his own ingenuity makes the invention, the fact that in working it out he was using his master's property and time is not enough to deprive him of the right to a patent, or to entitle his master to obtain a patent for the invention of his servant. t There is, lastly, the very important case of Rival rival inventors. If two persons, wholly uncon- nected with one another, at different times, make the same invention, which of them is entitled to call himself the true and first inventor ? The law on this subject is quite clear: the First to person entitled to a patent for an invention is the entitled to person who first goes to the Crown and applies Pd for ft patent. This law was declared by Chief Justice Tindal in the following terms : " There may be many discoverers starting at the same time, many rivals that may be running on the same road at the same time, and the first who comes to the Crown and takes out a patent, it not being generally known to the public, is the man who has a right to clothe himself with the authority of the patent, and to enjoy its benefits." J * Allen v. Rawson.Tsis, 1 C.B. 5667" f Heald's application, 1891, 8 R.P.C. 429. I Cornish v. Keene, 1835, 1 W.P.C. 508. 42 LAW OF PATENTS. Since patents are dated as of tlie date and in the order of application, this now may be taken sis equivalent to stating that the man whose application for a patent first reaches the Patent Office is the true and first inventor, and is entitled to the patent. Re-discovery Provided an earlier inventor has not published may be L invention, his invention, the fact that the applicant for a patent has only re-discovered what had been first discovered by auotlier does not in any way affect his right to a patent. This question arose in a vei-y early case which was afterwards referred to in the House of Lords in tlie following terms : " Dollond was patentee of a new method of making object- glasses, but it was objected that one Dr. Hall had made the same discovery before him. "Dr. Hall, however, had confined it to his closet, and the public were not acquainted with it. Dollond was held to be the true and first inventor."* * Dollond's case, 1758, 2 H. Bl. 470. CHAPTER IV. HOW TO OBTAIN A PATENT. THK next matter for consideration is, what must a duly qualified party iu possession of a patent- able invention do in order to obtain a patent ? The grant of a patent in this country is almost Grant a entirely a formal matter ; it is true that every matter. application is referred to an examiner whose duty it is to report to the Comptroller, but this exa- mination is confined to seeing whether the appli- cation is in proper form, and the invention fairly described by the applicant. The Comptroller also has power to refuse toActisss, grant a patent for an invention of which the use immoral i . i . . . 1 i patent may would, in his opinion, be contrary to law or be refused, morality ; and this power has been exercised in the case of an application for a patent for a lottery machine.* In some cases the grant may be opposed by Grant may persons whose rights would be affected by the grant of the patent as applied for ; and if their opposition be upheld the grant may be refused, or certain conditions may be imposed on the ap- plicant. In any case before exercising any discretionary Comptroller power adversely to the applicant the Comptroller applicant. must, if required so to do, hear the applicant, * Griff. 20. 44 I-AW OF PATENTS. and his decision is subject to appeal to tlie law officer. Usual With these exceptions the rule is that an application made in due form is accepted, and when a complete specification has been filed a NO cxamina- patent is sealed in due course. No examination validity. as to whether the invention is novel, or as to whether it is proper subject-matter for a patent, is made by the Patent Office, the whole responsibility of this being thrown on the applicant. wiiom;ikes An application for a patent may be made by tion. the applicant or applicants to the Patent Office direct, or through an agent ; in the latter case the agent is entitled to sign all the necessary papers with the exception of the application form, which must in every case be signed by the appli- cant or applicants. Forms of Three forms are provided, on one of which an application for a patent must be made. Seep. 243. Patent Form A is for an application by the true aud first inventor or inventors, or their personal representatives, either alone or in conjunction with others. Seep.245. Patent Form A 1 is for an application made in respect of an invention communicated from abroad by an agent on behalf of his foreign correspondent. Seep. 217. Patent Form A 2 is to be used in making an application under the foreign and colonial arrange- ments. [For obtaining these forms see page 272.] HOW to fin Whichever form is used, it must bear an im- tionform. pressed stamp for 1, must be filled in with the HOW TO OBTAIN A PATENT. 45 names and addresses of the applicants and the title of the invention, and must be signed by the appli- cant, or if there be more than one, by each of the applicants ; if the application be on behalf of a firm, every member of the firm must sign, and if on behalf of a corporation or company, the secre- tary, or some officer of the company should sign the form, adding the words " for the company."* Under the " Patents Rules, 1890 " " An application for a patent must be signed by the appli- Patent Rule cant ; but all other communications between the applicant and the Comptroller, and all attendances by the applicant upon the Comptroller, may be made by or through an agent duly autho- rised to the satisfaction of the Comptroller, and, if he so re- quire, resident in the United Kingdom." " The application shall be accompanied by a statement of an Patent Rule address to which all notices, requisitions, and communications of 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 substituted statement of address shall be furnished by him to the Comptroller. He may in any particular case require that the address mentioned in this rule be in the United Kingdom." On the backs of Forms A and A 1 will be found Address to two forms of statement as to the address to which notices may notices are to be forwarded : the first is for use when application is made through an agent, and contains an authority to the agent to act in the matter ; the second is for use when the application is made direct. In every case one of these forms must be filled in and signed by the applicant or each of the applicants as the case may be. Any change of the address to which notices are change of address. * Patent Office Circular. 46 LAW OF PATENTS. p.267. to be sent must be notified to the Comptroller on Patent Form R, which must bear a stamp for 5*. HOW the The form of application when duly filled up application is may be left by hand at the Patent Office or sent with! e ' by post addressed to the Comptroller, Patent Office, Southampton Buildings, Chancery Lane, London, W.C. For full It must be accompanied by two copies of either details see ..,..,. cimp. v, a provisional specification or a complete speci- (*). fication ; in the latter case one copy must bear an impressed stamp for 3. Act 1883, "A provisional specification must describe the nature of the invention, and be accompanied by drawings if required." "A complete specification, whether left on application or subsequently, must particularly describe and ascertain the nature of the invention, and in what manner it is to be per- formed, and must be accompanied by drawings if required." (5). " A specification, whether provisional or complete, must commence with the title, and in the case of a complete speci- fication must end with a distinct statement of the invention claimed." with""* 8 "^ * s n k usua ^ f r drawings to accompany a provisional provisional specification, but if any are sent, others specification, r f - m Act 1886, iik e them need not be sent a second time with the scct - {> complete specification, and in it they may be re- Patentuuie f erre( j o as ^he drawings left with the provisional specification. Preparing Specifications for Fiiing. A provisional specification must be commenced p.249. on Patent Form B, and n complete specification p.260. must be commenced on Patent Form C ; the rest of the specification in each case must be on strong HOW TO OBTAIN A PATENT. 47 wide-ruled paper of size 13 inches by 8 inches, with a margin of 2 inches on the left-hand side. All specifications must be in English, and must be written or printed in large and legible characters. Patent Forms B and C are issued in duplicate with Application Forms A, Al, and A2. Form B does not require any stamp, but one copy of Form C must bear an impressed stamp for 3. Piiper properly ruled for the continuation of Paper for specifications may be obtained from any laWtintT stationer under the name of " patent paper." Each copy of the specification must be signed Each copy by the agent through whom the application is signed. made, or if made without nn agent by the applicant or applicants. Hizes and Methods of preparing Drawings accom- panying Provisional or Complete Specifications. (Patent Rules, 1890, 30 to 33.) " 30. The provisional or complete specification need not be Drawings for accompanied by drawings if the specification sufficiently de- jT ec 'fi ca - scribes the invention without them ; but if drawings are fur- nished they should accompany the provisional or complete specification to which they refer, except in the case provided for by Rule 33. No drawing or sketch, such as requires a special engraving for letterpress, should appear in the specification itself. " 31. Drawings (if any) must be delivered at the Patent Office either in a flat state or on rollers, so as to be free from folds, breaks, or creases. " They must be made on pure white, hot-pressed, rolled, or R C quire- calendered drawing-paper of smooth surface and good quality, mc " ts " 8 . to * * pHptr iiiul and, where possible, without colour or Indian ink washes. " They must be on sheets of one of the two following sizes size of drawings. 48 LAW OP PATENTS. (the smaller being preferable) : 13 inches at the sides by 8 inches at the top and bottom, or 13 inches at the sides by 16 inches at the top and bottom, including margin, which must be ^ an inch wide. " If there are more figures than can be shown on one of the smaller sized sheets, two or more of these sheets should be used in preference to employing the larger size. When an excep- tionally large drawing is required, it should be continued on subsequent sheets. There is no limit to the number of sheets that may be sent in. Quality of " To ensure their satisfactory reproduction, the drawings must be executed with absolutely black Indian ink ; the same strength and colour of fine and shade lines to be maintained throughout. Section lines and lines for effect, or shading lines, must not be closely drawn. A specimen drawing is inserted in illustration of this requirement. Reference "Reference figures and letters must be bold, distinct, not letters 8 "" 11 ^ ess ^ nan one eighth of an inch in height ; and the same letters should be used in different views of the same parts. In ca?es of complicated drawings the reference letters must be shown outside the figure, and connected with the part referred to by a fine line. Scale of " The scale adopted should be large enough to show clearly drawings. ^herein the invention consists, and only so much of the apparatus, machine, &c., need be shown as effects this purpose. When the scale is shown on the drawing it should be denoted, not by words, but by a drawn scale, as illustrated in the specimen. Drawings to " Drawings must bear the name of the applicant (and in the nanie'of case ^ drawings left with a complete specification after a pro- applicant, visional specification, the number and year of the application) in the left-hand top corner ; the number of sheets of drawings sent and the number of each sheet in the rigid-hand top corner ; and the signature of the applicant or his agent in the right-hand bottom corner. " No written description of the invention should appear on the drawings. Restrictions " Wood engravings, or representations of the invention, other enravhTi *han the drawings prepared as above described, will not be Specimen drawing for Specifications. t /i inch. &-om, *<*&. of paper. - INS. i . i . i . i , i . i . i . i . i . I . I . I HOW TO OBTAIN A PATENT. 49 received unless of such a character as to be suitable for repro- duction by the process of photo-lithography. " 32. A fac-simile of the original drawings, but without Copies of colour or Indian-ink washes, and prepared strictly in accord- ance with the regulations prescribed in Kule 31, must accom- pany the originals, and be marked ' true copy.' " 33. If an applicant desires to adopt the drawings lodged Provisional with his provisional specification as the drawings for his u^-a"^ 8 complete specification, he should refer to them as those ' left complete ... ,, . . , .,, ,. , specification, with the provisional specification. Procedure after Application is sent. " Applications for patents sent by prepaid letter through the p a t eu t post shall, as far as may be practicable, be opened and ? ul ?. 18 ;. i . i i i i i . Applications, numbered in the order in which the letters containing the how same have been respectively delivered in the ordinary course uu of post. " Applications left at the Patent Office otherwise than through the post shall be in like manner numbered in the order of their receipt at the Patent Office." It is, however, provided that a letter sent ACMSSS, through the post shall be deemed to have been pSuTia. left at the Patent Office at the time when it SeeS^ 11 would be delivered in the ordinary course of celved< post ; so that if for any reason the delivery were delayed beyond the time when it should have taken place in the ordinary course of post, it is submitted that the applicant might claim to have his application dated and treated as having been received at the time at which, but for the delay in transmission, it would have reached the Patent Office. Even if the application never reached the Application Patent Office at all, and the loss was afterwards lost '" 1?06t - made good by leaving fresh copies of the appli- 50 LAW OF PATENTS. cation aud specifications, it is submitted that the applicant would be entitled not to suffer by the default of the post office. There is no discrimination made between inland and foreign post. It is provided that Application " The Comptroller shall refer every application to an exa- to an e miner, who shall ascertain and report to the Comptroller Abuses' whether the nature of the invention has been fairly described, sect. 6. and the application, specification, and drawings (if any) have been prepared in the prescribed manner, and the title suffi- ciently indicates the subject-matter of the invention. When report " (1) If the examiner reports that the nature of the invention isunsatis- 1 ls t fairly described, or that the application, specification, or factory. drawings has not or have not been prepared in the prescribed manner, or that the title does not sufficiently indicate the subject-matter of the invention, the Comptroller may refuse to accept the application, or may require that the application or specification or drawings be amended before he proceeds with the application ; and in the latter case the application shall, if the Comptroller so directs, bear date as from the time when the requirement is complied with." No fee for When the Comptroller exercises this power to amendment before require an amendment before acceptance, no fee can be charged for making the amendment.* The provisional specification aud application may be amended in this way ; and it is doubtful whether the title can be amended in any other way. sect. is. The Act of 1883 provides that a patent shall Patent to be ^ e g ran ted for one invention only, though it may contain more than one claim ; but that if a patent * Re Dart, Gr. P.C. 307. HOW TO OBTAIN A PATENT. 51 has beeii granted which comprises more than one invention, that fact shall not affect its validity. The fact that an application comprises more win- than one invention is a ground on which the i-ompViscs" Comptroller might refuse to accept the applica- "n'ohneii 1 - tion ; and it is provided that in such a case "Where a person making application for a patent includes Patent therein bj mistake, inadvertence, or otherwise, more than one Rule 19 - invention, he may, after the refusal of the Comptroller to accept such application, amend the same so as to apply to one invention only, and may make application for separate patents Separate for each such invention accordingly. patents may be {(Mated " Every such application shall, if the applicant notify his tor them. desire to that effect to the Comptroller, bear the date of the first application, and shall, together therewith, be proceeded with in the manner prescribed by the said Act and by these rules as if every such application had been originally made on that date." " Before exercising any discretionary power given to the Exercise of Comptroller by the said Acts adversely to the applicant for a power by"*" patent, the Comptroller shall give ten da3"s' notice, or sucb longer p"!", 1 ''/!! 11 ^' notice as he may think fit, to the applicant of the time when 11. he may be heard personally or by his agent before the Comp- troller." " Within five days from the date when such notice would be Notice of delivered in the ordinary course of post, or such longer time as patcn'uiuie the Comptroller may appoint in such notice, the applicant shall 12 - notify to the Comptroller whether or not he intends to be heard upon the matter." This notification to the Comptroller need not be in any particular form. " Whether the applicant desires to be heard or not, the Comp- Patent Rule troller may at any time require him to submit a statement in j^ j a nt - writing within a time to be notified by the Comptroller, or to by applicant. 52 LAW OF PATENTS. I'.it cut Rule 14. Decision to be notified. Act 1888, sect. 2 (2). Appeal to law officer. Act 1888, sect. 2 (3). Costs of appeal. Sect. 2 (4) ; Patent Kule 21. Acceptance, now advertised. attend before him and make oral explanations with respect to such matters as the Comptroller may require. " The decision or determination of the Comptroller in the exercise of any such discretionary power as aforesaid shall be notified by him to the applicant, and any other person affected thereby." " Where the Comptroller refuses to accept an application or requires an amendment, the applicant may appeal from his decision to the law officer." " The law officer shall, if required, hear the applicant and the Comptroller, and may make an order determining whether and subject to what conditions, if any, the application shall be accepted." " The Comptroller neither gives nor receives costs of an appeal to the law officer."* " The Comptroller shall, when an application has been accepted, give notice thereof to the applicant, and shall advertise such acceptance in the official journal of the Patent Office." It may happen that more than one application is made in respect of the same invention, and for some reason a patent on a later application may be sealed before the first application is complete, so that when a patent would naturally be sealed on the first application the invention is already patented on a later one. To meet such a case it is provided Act 1883, " that in case of more than one application for a patent for the sect. 13. . ,. , ,. , - 1 . .. same invention, the sealing of a patent on one of those applica- tions shall not prevent the sealing of a patent on an earlier application." But in order to allow the later applicant to avoid the expense of litigation with the earlier applicant, it is also provided that * Re Lake, 1887, Gr. A.P.C. 16. Mor one applica- same invention. HOW TO OBTAIN A PATENT. 53 " If after an application has been made, but before a patent Later has been sealed, another application for a patent is made, may'wiUi- accompanied by a specification bearing the same or a similar ^ raw y 88 o title, the Comptroller, if he thinks fit, on the request of the sect. 7 (5*), second applicant, or of his legal representative, may, within Act isS?,' two months of the grant of a patent on the first application, sect - 2 ( 5 )- either decline to proceed with the second application or allow the surrender of the patent, if any, granted thereon." This last provision enables the second applicant to avoid the expense either of opposition, when his patent has not been sealed, or of a Petition of Revocation when his patent has been sealed. Provisional Protection. " Where an application for a patent in respect of an invention Act 1883, has been accepted, the invention may, during the period between 8CC ' the date of the application 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 effect of such provisional protection varies Effector . . , , provisional somewhat according as a provisional or complete protection. specification has accompanied the application. It is only where a provisional specification is filed Protection that the protection is what is generally spoken of am* of 1 J.' J.1 1 1 J.1 V i. P rov ' 8ional as provisional protection ; this enables the applicant specification, (or his legal representatives), at any time within nine months (or on payment of a fine of 2 within ten months) of the date on which his application was received at the Patent Office, to leave a complete specification and obtain a patent 54 LAW OF PATENTS. for his invention, and the patent so granted will bear the date of his first application. Complete In this complete specification lie can embody specificntion . _ *. .... . i i may embody any improvement ot Ins original invention which nicnismade can be brought within the terms of the provisional specification, and during all the nine months he invention can use his invention in public, and make any in public, experiments and trials which may be deemed advisable, without thereby affecting his patent. Article may At the same time he cannot describe his invention patent. as patented, and cannot prevent others from using it, until a complete specification has been accepted, so that if the patent is for an article which is in immediate demand, he is not in such an advan- tageous position as if he had filed his complete specification at first, and obtained full protection for his invention. Protection by When an application accompanied by a com- or complete plete specification is accepted the protection is precisely similar to that which is afforded by the acceptance of a complete specification filed after a provisional, and is practically equal to the protec- tion of an actual patent for every purpose except the taking of legal proceedings ; it is as though both the specifications had been accepted on the same day, and does not require any separate con- sideration. Completion of Application l>y Complete Specification. ect. s. ' After the application accompanied by a provi- ^cmit!on sional specification has been accepted, the appli- HOW TO OBTAIN A PATENT. 55 cant can complete bis application by banding in at may be left the Patent Office, or by sending by post to the application. Comptroller, at any time witbin nine calendar montbs of the date of his application (or on pay- ment of a fine of 2, for which Patent Form U See p. 270. must be used, within ten months of his application) two copies of a complete specification. These must be handed in. or posted in due time HOW and where to be received in the ordinary course of post, at complete ,* specification the Patent Office before midnight on tbe same day must be left. & J Sect. 98. of tbe ninth or tenth month, as the case may be, from the date of application. If tins day should fall on Christmas Day or Good Friday, or on a Saturday or Sunday, or any day observed as a holiday at the Bank of England, or any day observed as a day of public fast or thanksgiving, which are called excluded days, tbe complete specification need not reach the Patent Office until the day next following such excluded day, or days if two or more of them occur consecu- tively. If the office is closed, tbe policeman in charge will take documents up till midnight. The complete specification must be prepared in Preparation ,, , -, ., , ,. . .~ of complete the manner above described tor preparing speciti- specification cations, using Form C for the first sheet, and must see p. 46.' be sent to the Patent Office in duplicate, one copy bearing an impressed stamp for 3 ; each copy must be dated and signed by the applicant or applicants, or, where application is made through an agent, by the agent. A patent is not, however, invalid because the Patent not . . . , , , f invalid if all complete specification is signed only by some ot applicants do 56 LAW OF PATENTS. not sign the the applicants; but the patent in that case will specification, apparently be granted only to those who sign, and the others will be taken to have retired from the application.* Act 1883, " (1) Where a complete specification is left after a provisional Specifics- specification, the Comptroller shall refer both specifications to tions, &c., an examiner for the purpose of ascertaining whether the corn- referred to an L l . c examiner. plete specification has been prepared m the prescribed manner, and whether the invention particularly described in the com- plete specification is substantially the same as that which is described in the provisional specification." [N.B. The fact of an examiner not having found any difference in the inventions described in the two specifications is no evidence that no such difference exists.] " (2) If the examiner reports that the conditions hereinbefore contained have not been complied with, the Comptroller may refuse to accept the complete specification iinless and until the Anneal to same shall have been amended to his satisfaction ; but any such law officer, refusal shall be subject to appeal to the law officer. " (3) The law officer shall, if required, hear the applicant and the Comptroller, and may make an order determining whether and subject to what conditions (if any) the complete specifica- tion shall be accepted. Time for " W Unless a complete specification is accepted within twelve acceptance is months from the date of application, then (save in the case of an appeal having been lodged against the refusal to accept) the application shall (subject to an extension of time being obtained) at the expiration of those twelve months become void." Act 1885, The applicant may get the time for acceptance enlarged for three months by making application Enlargement ** -IT of time for to the Comptroller on Patent Form V, properly acceptance. , 2 _j stamped. The stamp required is 2, 4, or G * Jlc Grenfell and McEvoy's patent, 1890, 7 R.P.C. 151. HOW TO OBTAIN A PATKNT. 57 respectively, according as the extension sought does not exceed one, two, or three months. " Reports of examiners shall not in any case be published or Act 1883, be open to public inspection, and shall not be liable to produc- Reports of tion or inspection in any legal proceeding other than an appeal S* 1 *** 1 to the law officer under this Act, unless the Court or officer published, 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." On the acceptance of the complete specification ^"of 86 " the Comptroller advertises the acceptance in the "J c c e p ^"" e official -journal : and upon the publication of such s i )e(;i fi c! >t'"n- ' ,. . , . . Sect. 10. acceptance, the application and specification or Patent Rule specifications with the drawings (if any) may be specification inspected at the Patent Office upon payment of a "nspccted fee Of One shilling. acceptance. The specifications and drawings are printed Printing and three weeks after the complete specification has ficntious. been accepted,* and may be purchased at the sale branch of the Patent Office at the uniform price of 8d. This includes the cost of inland postage, and, in case of an application by post, the cost of the postage stamp required on the application. A postal application for a specification should iiowto be made on Patent Form C 1 , which may be specification obtained at any money order office, but is kept seVp'W in stock only at certain principal offices. Within two months from the date of the adver- Grantor tisement of the acceptance of a complete specifi- ' opposed . * r within two cation the grant or the patent may be opposed months of , . a Ye if 1-1 f acceptance. upon certain grounds (hill particulars of opposition arc given in Chap. VII). * Patent Office Circular, 58 LAW OP PATENTS. How patent " (1) If there is no opposition, or, in case of opposition, if the Act 1883 j determination is in favour of the grant of a patent, the Comp- sect. 12. troller shall cause a patent to be sealed with the seal of the Patent Office. " (2) A patent so sealed shall have the same effect as if it were sealed with the Great Seal of the United Kingdom. Sealing must " (3) A patent shall he scaled as soon as may be, and not after fixed time the expiration of fifteen months from the date of application, km' applicil " except in the cases hereinafter mentioned, that is to say : " (a) Where the sealing is delayed by an appeal to the law office, or by opposition to the grant of the patent, the patent may be sealed at such time as the law officer may direct." Act 1885, sect. 3. Extension of time for sealing. Date of patent. Act 1883, sect. 13. No legal proceedings can be commenced before sealing. Act 1883, sect. 15. Lost patent may be replaced. Act 1683. sect. 37. If the time for leaving the complete specifica- tion or for the acceptance of the complete speci- fication has been extended, a further extension of four months after the expiration of the fifteen months is allowed for the sealing of the patent. If there is no opposition the patent is usually sealed about ten weeks after the date of the acceptance of the complete specification.* " Every patent shall be dated and sealed as of the diiy of application, provided that no proceedings shall be taken in respect of an infringement committed before the publication of the complete specification." corn- Proceedings for infringement can be menced only after the patent is sealed, but may refer back to the date of publication of the com- plete specification. " If a patent is lost or destroyed, or its non-production is accounted for to the satisfaction of the Comptroller, the Comp- troller may at any time cause a duplicate thereof to be sealed." Application for a duplicate to be sealed must * Patent Office Circular. HOW TO OBTAIN A PATENT. 59 be made on Patent Form N, and the application See p.sas. must bear an impressed stamp for 2. "If the person making the application die before the ex- vpiiere piration of the fifteen months aforesaid, the patent may be applicant granted to his legal representative, and sealed at any time scaling, within twelve months after the death of the applicant." sect i f?3 10 In the case of the applicant dying before the complete specification has been left at the Patent Office, the legal representatives should produce the Probate or Letters of Administration to the Comptroller, who will allow the subsequent stages of the application to be carried out in their names. They are then entitled to send the complete spe- cification in due course, but there is no special provision as to the time within which this must be done. It will be seen that if the death takes place early in the fifteen months, the time within which the patent must be sealed may be mate- rially shortened ; if, therefore, an applicant dies before his complete specification has been left, the legal representatives if they wish to continue the application should not delay too long, and so risk having their application defeated by lapse of time. Where the application has been made through an agent, a further authorisation is needed before he can proceed with the application. If the complete specification has been filed and nothing is done, the patent will be sealed in the name of the deceased applicant ; but if the legal representatives produce the Probate or Letters of Administration to the Comptroller, the patent will be granted to them instead, CHAPTER Y. SPECIFICATIONS. IN the preceding chapter we have considered only the form in which specifications must be prepared for accompanying or following an appli- cation for a patent to the Patent Office, and it T-O kinds of was noticed that there are two kinds of specifica- sperification, tion, either of which may accompany the applica- i tion. It was also seen that if only a provisional specification accompanies the application it is necessary, in order to obtain a patent, to supple- ment it by sending to the Patent Office within nine months, or at most within ten months after and com- the date of the application, a complete specifica- tion of the invention for which the protection of a patent is sought. In the present chapter we have to deal with the substance of the specifications, and only in very small degree with their form ; we are dealing with the draft, and not with the finished copies that are sent to the Patent Office. The Title of a Specif cation. specification The Act of 1883 provides that a specification, must com- tTe'tJtie' 11 ' wne ^ ier provisional or complete, must commence 8t. s (6). w jth the title; so that the first thing to be SPECIFICATIONS. 61 decided upon iu drafting u specification is the title. It will be seen that in the form of grant it is See p. 7. recited that the inventor has represented that he is in possession of an invention for (here follows the title of the invention). Now if this title is not Title must be suitubly one which ought to be applied to the invention chosen, for which protection is sought, the applicant has made a misrepresentation, or, as it is sometimes called, " a false suggestion ;" and the effect of this will be that the patent, when granted, will be or patent . . . . will be void. of no effect. Therefore it is very important that the specification should commence with a suitable title. There have been cases in which (he title has Title may be t0 o 1 '!!"" 1 '- been considered to be more general than the in- vention warranted, and it has been made clear that if the title embraces more than the actual invention, so as to make the invention seem greater than it really is, then the patent will be invalid. Thus, in one case where the title conveyed the intelligence that by the invention an instrument gave " new notes " which had never before been produced, while as a matter of fact the instru- ment only produced "one new note," the patent was held bad for a false suggestion in the title.* In another case, the accuracy of the judgment in which was afterwards questioned by a higher court, a patent for " an improved mode of lighting cities, towns, and villages," which contained only * Bainbridge v. Wigley, 1810, Parl. Rep. 197 ; cf. also Bloxarn v. Elsee, 1827, 6 B. & C. 178 ; 3 L. J. (O.S.), Q.B. 93. 62 LAW OF PATENTS. a description of an improved street lamp, was held to be invalid on the same ground.* what may be It is sometimes rather difficult to know what called a machine. ought to be made the title of an invention ; for instance, in the case of a machine it is dangerous to call it a " machine," since that may make the invention appear wider than it really is. Chief Justice Gibbs gave the following instruction to the jury as to the effect of describing an invention as " a machine for the manufacture of bobbin lace or twist lace :" " If you think that he has invented an engine which consists of a perfectly new conformation of parts, though all the parts were used before, yet he will be entitled to support his patent for a new machine. If a combination of a certain number of parts up to a given point existed before, and Mr. Brown's in- vention sprung from that point, and added other combinations to it, then I think his specification stating the whole machine as his invention is bad."f "Machine" We thus see that the title " machine " by broad? J itself is only applicable to what is an entirely new machine, and that in most cases it should be de- scribed in rather narrower terms ; for instance, as " an improved machine," or " improvements in machines." Newer The judgment of Justice Cresswell, in a case method or where an invention had been described as " a new machine is a . -, ii i 55 i iij. iafe descry- or improved method, seems to apply as well to a machine as to a method, and gives us a very * Cochrane v. Smethurst, 1816, 1 Stark 205 ; questioned in Cook v. Pearce, 1843, 8 Q.B. 1063. f Bovill v. Moore, 1815, Dav. P.C. 361. tiun. SPECIFICATIONS. 63 safe title for use where any doubt exists as to bow aii invention ought to be described. He said : " If a part of the method be new, so as to produce a result that, as a whole, is new, surely it may be called a new or im- proved method. If the method be altogether new, surely it may be called an improved method. They seem to be convert- ible terms."* This gives us good reason, to use the words " new or improved " when in doubt as to wliich an invention really is, and should always be borne iu uiiud in deciding upon the title for a patent. Provisional Specification. " A provisional specification must describe the nature of the Act 1883, invention, and be accompanied by drawings if required." It is, as has been already pointed out. unusual Drawings are f -. . . , unusual. tor drawings to accompany a provisional specifi- cation. In speaking of the office of a provisional speci- The office of fication in 1866, Lord Chancellor Cheltnsford said : specification. " It seems clear that the office of the provisional specification is to describe the nature of the invention, not with minute par- ticularity, but with sufficient precision and accuracy to inform the law officer what is to be the subject-matter of the patent. It is not at all necessary that the provisional specification should describe the mode or modes in which the invention is to be worked or carried out. That is left to the complete specifi- cation.'^ It is not, however, any objection to a patent Provisional ,. ,-] . . , .,, . may describe it the provisional specification does describe a amodeof carrying out * Beard v. Egerton, 1846, 3 C.B. 123. f Penn v. Bibby, 1866, L.R. 2 Cli. 132. 64 LAW OF PATENTS. theiuven- mode of carrying out the invention, even though the mode shown in the complete specification should be a different and a better one. Tins point was decided by the Court of Appeal in 1887 in the following words : " A patentee putting in a provisional specification showing the nature of his invention is not bound to describe a way in Complete which that can be carried into effect and operation ; but if he may describe \ '. different does describe a way of doing it, and, before he files his complete "MaVin m specification, he either finds out improvements in that way, or a provisional, different way of carrying into effect that which is described as his invention in the provisional specification, he is bound to give the public the benefit of what he has discovered as regards the mode of carrying the invention, the nature of which must be described in the provisional specification, into effect, even although there may be improvement and even invention, which was not known to him at the time."* Details Thus the inventor may please himself about should be . . . avoided in giving details in his provisional specification: as, provisional, * . r however, details are not required, it would seem better not to give them, but in the provisional and general specification to use general terms sufficiently wide usc^mstead. to cover any improvements which are likely to occur during the time of provisional protection, and just sufficiently definite to enable the inventor to point out what part of the provisional specification de- scribes the invention detailed in the complete specification. If this rule be followed there will not be much fear of the patent being upset upon the ground of disconformity, and this is all that really needs to be guarded against in framing a provisional specification. * Woodward v. Sansum, 1887, C.A., 4 R.P.C. 175. SPECIFICATIONS. 65 The Complete Specification. Although it is very important to have the pro- should be as visional specification well drawn, it is of supreme possible? 3 importance to have the complete specification as perfect as possible, since it is to the complete specification that reference must be made to see what the invention really consists in, and what the patentee claims as his monopoly. " A complete specification, whether left on application or sub- Act 1883, sequently, must particularly describe and ascertain the nature sec ' *' of the invention, and in what manner it is to be performed, and must be accompanied by drawings if required." If a provisional specification has been left with Mustde- , \. . . . . , . scribe same the application, it is necessary that the complete invention as specification should describe the same invention as is described in the provisional specification.* The patent is granted on the application, and is for the invention which is described in the pro- visional specification, although the patent is not sealed until the complete specification, giving a more perfect description of the invention, has been filed ; and if anything is not within the provisional Nothing specification the patent cannot protect it. This provisional was clearly laid down by Lord Blackburn in the can be House of Lords ; he said : " Look at the nature of the invention described in the pro- visional specification, and say whether this which you have been doing, and which you say was a part of the patent, is fairly within the nature of the invention you have described. * Vickers v. Siddell, 1890, H.L., 7 K.P.C. 303 ; Nuttall v. Hargreaves, 1891, C.A., 8 K.P.C. 450. 5 66 LAW OF PATENTS. In that case you are protected ; but if it is a new and separate invention and a different one, then you are not protected."* Mode of " The provisional and complete specifications may describe carrying out ,._. , , . . ,. , , .. , . .. invention different modes or carrying out an invention ; but if both are "pccifica" m rea ^J within the same invention described not minutely, but in tious. general terms in the provisional specification, this will not render the patent bad, even though the complete may contain an improvement on what is described in the pro visional. "f ^though the complete specification may complete contain an improvement on what is described in specification. r t the provisional specification, the improvement must not be anything in the nature of an indepen- dent invention.! The law on this point was very clearly stated by Lord Blackburn in the House of Lords. He said : " I cannot but think that ...... when the nature of an invention has been described in the provisional specification in the way which has been mentioned, if something were found out during the six months to make the invention work better, or with respect to the mode in which the operation is to be per- formed a thing which is very likely to happen, still the nature of the invention remains the same, and it is no objection that in the complete specification which comes afterwards the invention or application is described more par- ticularly and in more detail, or even if it be shown that there has been more discovery made, and so as to make the invention which is described in the provisional specification really work- able. " If nothing more is done than that, I think it is good ; but as soon as it comes to be more than that, and the patentee says in the provisional specification I describe my invention * Bailey v. Roberton, 1878, 3 App. Cas. 1075. f Woodward v. Sansum and Co., 1887, C.A., 4 R.P.C. 166. J Watling v. Stevens, 1886, C.A., 3 R.P.C. 147. SPECIFICATIONS. 67 as A, and in the complete specification he says, I describe A and also B, then, as far as regards B, it is void because the letters patent were granted for the invention that was described in the provisional specification, and do not cover the invention that is described in the other." * If, however, the complete specification de- Complete ., , . . . "..,., specification sci'ibes something not in the provisional simply may deserve . ' , T c UT t ' 'i J J r "I what it could tor the sake or publishing it, and does not sot data M , . . , . as to publish attempt to claim it as part or the invention pro- it. tected by the patent, it is no objection to the patent; indeed, it is sometimes advisable to take This is often this course in order to prevent others from taking out a patent for some minor detail which the original applicant does not wish to make the subject of a separate application. Since the complete specification must contain details of the invention described in the pro- complete visional specification, it acts as a definer of what pmUtouA, the provisional specification had stated to be the subject-matter of the application ; and it is no ob- and may jection to a complete specification that the inveu- "cope* ' tion described in it is smaller than what appeared from the provisional specification to be in prospect, provided the invention be not so narrowed as to make the title too general, and so render the patent void for a false suggestion in the title. Thus far the complete specification has been dealt with so far as necessary with reference to the provisional specification, and of course the above applies only to cases in which a provisional specification has accompanied the application ; what follows applies to any complete speci- Bailey v. Roberton, 1878, 3 App. Cas. 1075. 68 LAW OF PATENTS. fication, whether it accompanies the application or follows it. Act 1883, A complete specification Require- (a) Must commence with the title ; complete (I) Must particularly describe and ascertain the specification. r . . J nature of the invention, and in what manner the same is to be performed ; (c) Must be accompanied by drawings (or must refer to drawings already sent with the pi'ovisional specification) if required ; and (d) Must end with a distinct statement of the invention claimed. Nothing further need be said about (a), since what has been already said applies equally to all specifications, whether provisional or complete. Drawings (M and (c) may be considered together : the supplement V '. -,,-, letterpress drawings and the letterpress together form the specification, any deficiency in the one being supplemented by the other; and their relative im- portance varies according to the class of invention which it is sought to protect. In some cases drawings may be not only unnecessary, but quite out of the question, and in such cases the wording of the specification is all-important ; while in others the drawings by themselves would be suf- ficient to show what the invention is, and the letterpress is merely a brief description of the drawings. No rule can be given as to how far the appli- cant should rely on the letterpress, and how far on drawings ; but, as a rule, where drawings are of any use, the more they are used the better. The letters patent contain a recital that " the protected. SPECIFICATIONS. 69 inventor hath by his complete specification par- ticularly described the nature of his invention," and the letters patent are granted only for the invention so described. This is a recital of very great importance, since considera- it is a recital of what the applicant has done in grant.' order to entitle himself to the grant of a patent ; it is a recital of the consideration for the grant, and if it be not true, the consideration has failed, and the patent is of no effect. The applicant must give the public the full Applicant benefit of his invention ; he must not attempt tokeepback keep back anything which he knows to be of value formation in working the invention, in the hope' of combin- tiuHnven-" ing the advantages of a patent with those of a trade secret. It was stated by Justice Buller, in 1785, that "It is clearly settled as law, that a man, to entitle himself To whom a to the benefit of a patent for a monopoly, must disclose his ^addressed, secret, and specify his invention in such a way that others may be taught by it to do the thing for which the patent is granted ; for the end and meaning of the specification is to teach the public, after the term for which the patent is granted, what the art is, and it must put the public in possession of the secret in as ample and beneficial a way as the patentee uses it." * It is thus very important to know how much it is necessary for the applicant to go into details of his invention, and to ascertain this it is well to see to what class of persons a specification is supposed to be addressed. The following state- ment of the law on this subject was given by Jessel, late Master of the Rolls, in 1875. * Jlex v. Arkwright, 1785, 1 W.P.C. 66, 70 LAW OP PATENTS. Specification " It is plain that the specification of a patent is not addressed ^"ordinary ' to people who are ignorant of the subject-matter. If it is a skilled work- mechanical invention you have, first of all, scientific inechani- man can . ._- i understand, cians of the first class, eminent engineers ; then you have scientific mechanicians of the second class, managers of great manufactories, great employers of labour, persons who have studied mechanics ; . . . and in this class I should include foremen, being men of superior intelligence, who, like their masters, would be capable of invention, and like the scientific engineers would be able to find out what was meant even from slight hints and still more imperfect descriptions, and would be able to supplement so as to succeed even from a defective description, and even more than that, would be able to correct an erroneous description. That is what I would say of the first two 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 of him not a careless man, but a careful man, though not possessing that great scientific knowledge or power of invention which would enable him by himself, unaided, to supplement a defective description, or correct an erroneous description. . . . " It will be a bad specification if the first two classes only understand it, and if the third class do not." * This statement of the law is practically iden- tical with that laid down in 1836 by Baron Alderson. He said : Specificaiion " The specification ought to be framed so as not to call upon matters"? 6 a P erson to have recourse to more than those ordinary means of common knowledge (not invention) which a workman of competent skill in his art and trade may be presumed to have. You may call upon him to exercise all the existing knowledge common to the trade, but you cannot call upon him to exercise anything more. You have no right to call upon him to tax his ingenuity or invention. Specification " The specification of a patent must not merely suggest some- leave room thing that will set the mind of an ingenious man at work, but ment.. * Plimpton v. Maleolmson, 1876, 3 Ch. P, 568. SPECIFICATIONS. 71 it must actually and plainly set forth what the invention is, and how it is to be carried into effect, so as to save a party the trouble of making experiments and trials." * The specification must not be misleading or Must not be , . ., , , - ,. Hmbiguousor ambiguous ; it must not lead a person attempting misleading, to put the invention in practice into a course of experiments. This was stated as law as far back as 1787 in the following language : " It is incumbent on the patentee to give a specification of the invention in the clearest and most unequivocal terms of which the subject is capable. And if it appear that there is any unnecessary ambiguity affectedly introduced into the specification, or anything which tends to mislead the public, in that case the patent is void. ... If the process as directed Process by the specification does not produce that which the patent n^st produce professes to do, the patent itself is void. It is certainly of con- r 'g ht result, sequence that the terms of a specification should express the invention in the clearest and most specific manner, so that a man of science may be able to produce the thing intended without the necessity of trying experiments." f The rule that no experiments may be required does not, however, apply to every case ; the Court of Appeal in 1889 laid down the rule that "The specification must be sufficiently clear to enable a in some cases person conversant in the subject without invention to carry n^edeTto be out the invention ; but not necessarily to enable him to do the carry out work without any trial or experiment, which, when it is new or especially delicate, may frequently be necessary, however clear the description may be." J But, although experiment may be still needed bu 'it must * Morgan v. Seaward, 1836, 1 W.P.C. 174. equivocal, f Turner v. Winter, 1787, 1 W.P.C. 80, 81. j Edison and Swan Electric Light Co. v. Holland, 1889, C.A., 6 R.P.C. 243 ; see also Beard v. Egerton, 1840, 8 C.B. 206. 72 LAW OF PATENTS. in order to put the invention in practice, there must be nothing to put the public on a wrong track. " If the specification upon a fair interpretation be equivocal it is insufficient." * specification The applicant is not bound to describe every only one way known to him of carrying out his invention ; it is sufficient if he shows one useful way, even though it may turn out not to be the most bene- ficial way. but may give He may give several ways, but must be careful vMed^hey only to give ways that will give the required will all work. result . for _ " If you describe in a specification two ways of doing a tiling, and by one way it cannot be done, the specification is bad." f Generic term " It is not sufficient to describe a material by a generic term sufficient 5 * comprising many species, the majority of which would be un- suitable ; " J but if a patent be for a process which may be applied to a large class of substances, it is no objection to prove that it is only some of these substances which will give a useful result. Nature of In a chemical patent it is not necessary to state product" need what is the exact chemical nature of the product not be given. , , , . . , . . produced by a process ; it is the commercial, not the chemical value of the product that is the subject of the patent. || * Hastings v. Brown, 1853, 1 E. & B., p. 454. f Beard v. Egerton, 1846, 19 L.J. 39. J Wegmann v. Corcoran, 1879, 13 Ch. D. 65. Badische Anilin v. Levinstein, 1887, H.L., 4 R.P.C. 449. i| Leonhardt v. Kalle, 1895, 12 R.P.C. 103. SPECIFICATIONS. 73 The applicant should be careful to avoid Mistakes mistakes in his directions or drawings ; but a avoided. mistake will not necessarily render the patent bad unless it is likely to mislead the public, or what mis- amounts to a false suggestion. Lord Chancellor vender TTT- i ' i n / i i i i cn i patent biid. West bury in lobo laid down the following rule on this question : " The statement that an error in a specification which any workman of ordinary skill and experience would perceive and correct will not vitiate a patent is true only of such errors as appear on the face of the specification or the drawings it refers to, or which would be at once discovered and corrected in following out the instructions given for any process or manu- facture. The reason is because such errors cannot possibly mislead ; but it is not true of errors which are discoverable only by experiment and further inquiry, nor of an erroneous statement amounting to a false suggestion, even though the error would be at once observed by a workman possessed of ordinary knowledge of the subject." * Claims. A complete specification must end with a Act isss, distinct statement of the invention claimed. After the invention has been described at length in the specification, and by means of references to the drawings accompanying it, the applicant must state shortly what it is that he claims to have invented. This is done by means Claiming of a claiming clause containing one or more claims which must define clearly what it is that the patent is meant to protect. These claims are warning the means for warning the public what they must publlc> * Simpson v. Holliday, 1866, 15 N.R. 340; L.R. 1 H.L. 315. 74 LAW OP PATENTS. Form of clause. avoid doing if they do not wish to incur the risk of an action for infringement.* A usual form of preface to the claims is " Having now particularly described the nature of my in- vention, and in what manner the same is to be performed, I declare that what I claim is ... ." patent bad. New and old Although the Act of 1883 requires a complete specification to end with a distinct statement of the invention claimed, and it would be the duty of the Comptroller to refuse to accept, or at any rate to require the amendment of a specification that did not comply with this requirement, it has Absence of hnppened that a complete specification without claims does -.. ..., * . any distinct claiming clause has been accepted: * 1-1 i and a patent having been granted, it was held that the omission of a claiming clause did not of itself render the patent invalid. t In a patent for an improvement on an existing machine or process the specification must distin- guish what is new from what is old.J The claims themselves are usually sufficient for this purpose, but where this is not the case it may often be conveniently done by means of Disclaiming what is called a disclaiming clause, which either precedes the claiming clause or is made to form a part of it. A disclaiming clause usually commences by * Campion v. Benyon, 1821, 3 B. & B. 10 ; Gibson v. Brand and Scott, 1821, N.R. 890. t Vickers v. Siddell, 1890, H.L., 7 R.P.C. 306. J Foxwell v. Bostock, 1861, 4 De G.J. & S. 313 ; Holmes v, L. & N.W.R. Co., 1852, 12 C.B. 831. clauses. SPECIFICATIONS. 75 stating that the applicant knows that certain things have been either done, or proposed to be done, and that he does not claim them, and then he proceeds to state what he does claim. If the applicant knows of any machine or pro- often cess which might be put forward as an anticipa- to avoid an ,. <> -i . 3-ee i Tijir anticipation. tion, or if his invention differs but slightly from what is described in some earlier specification or book, he should always insert a disclaimer in his specification; he will thus avoid, or at least con- siderably lessen, any chance of opposition, and also the danger of getting his patent upset on the ground of its being anticipated. It is only neces- New and old sary to distinguish what is new from what is old distinguished i .-, . . . in an im- wlien the invention consists in an improvement on provement, , , . . but not in a an old machine or process; where the invention new combu consists of a combination, and where the claim is clearly only for a combination, it is not necessary to distinguish what part of the combination (if any) is new from what is old ;* so that where the claim is for a combination, even though every part be old, there will be no need for a disclaimer. It may, as a rule, be said that what is aimed object to be ,, , , . . . aimed at in at in training the claims is to make the patent framing . ., , . , -if claim and cover as much as possible consistently with safety, disclaimer. and in framing a disclaimer to make it include everything that would but for it anticipate the patent, and no more. The proper wording of both is of the greatest importance, and should receive the most careful attention ; and it is this part of a specification claims often * Harrison v. The Anderston Foundry Co., 1876, 1 App. Gas. counsel. 574 ; see also Proctor v, Bennis, 1887, 36 Ch. D, 740. 76 LAW OP PATENTS. wliicli is most frequently left to be settled by counsel. Act 1883, Although a patent can only be granted for one More than invention, it may contain more than one claim. allowed', 1 " Now it is one feature of an P]nglish patent that if any part of it is bad, the whole patent fails ; it but every- therefore follows that if one out of a large number InusfbeTcw. of claims can be shown to be bad, all the other claims are of no effect. Claims for Since a patent for a new combination may also fnteserB'in 6 be made to cover any new parts or subordinate integers which form part of the whole combina- tion claimed, a single patent may be made to cover several distinct improvements in a machine, each of these improvements being made the subject of a separate claim ; but the inventor should be very careful to claim only those parts which are really novel, for if it should turn out that one or more of these supposed improvements were not new, the whole patent would be invalidated,* and before the patentee could do anything to prevent infringe- ments of what were really his inventions lie would be put to the expense and delay of amending his specification by striking out claims which ought never to have been made. * Brnnton v. Hawkes, 1821, 4 B. & A. 550; Gillett v. Wilby, 1839, 1 W.P.C. 270. CHAPTER VI. OPPOSITION TO THE GKANT OF A PATENT. " (1) ANY person may, at any time within two months from Act 1883, the date of the advertisement of the acceptance of a complete sec ' ' specification, give notice at the Patent Office of opposition to Notice of the grant of the patent on the ground of the applicant having opposition! obtained the invention from him, or from a person of whom he is the legal representative ; or on the ground that the invention has been patented in this country on an application of prior date ; or on the ground that the complete specification describes or claims an invention other than that described in the provi- Act 1888, sional specification, and that such other invention forms the sectl * subject of an application made by the opponent in the interval between the leaving of the provisional specification and the leaving of the complete specification ; but on no other ground. " (2) Where such notice is given the Comptroller shall give Act 1883, notice of the opposition to the applicant, and shall, on the iJotit^to expiration of those two months, after hearing the applicant and applicant, 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 Appeal to any person so giving notice and being, in the opinion of the aw officer - law 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 assist- Law officer ance of an expert, who shall be paid such remuneration as the "x'peft" 1 ' 1 '^ law officer, with the consent of the Treasury, shall appoint." "A notice of opposition to the grant of a patent shall be Patent Rule on Form D, and shall state the ground or grounds on which p 4 ' 82 _ the person giving such notice (hereinafter in Rules 37, 38, 41, and 43 called the opponent) intends to oppose the grant, and must be signed by him. Such notice shall state his address 78 LAW OF PATENTS. for service in the United Kingdom, and shall he accompanied by an unstamped copy. Pateut Hule < Q Q rece jpt of such notice a copy thereof shall he trans- mitted by the Comptroller to the applicant." Viret ground r phe first ground of opposition is that the of opposition. > . applicant is not the true and first inventor, but obtained the invention from the opponent, and for this to succeed the obtaining must have been within the United Kingdom. There need not be any fraud in the obtaining of the invention from the opponent, but of course in some cases there may have been fraud, and in such cases evidence of the fraud should be given before the Comp- troller, since, if no evidence of fraud is given be- fore the Comptroller, it will not be be possible to introduce the subject before the law officer.* who may r phe opponent on this ground must be the oppose. actual person from whom the applicant obtained the invention or his legal representative. f This latter term appears to apply only to the legal personal representative of a deceased person, who, as we have seen, has much the same rights, so far as the inventions of such person are concerned, as the inventor himself would have kad if he had lived. Thus this ground is practically confined to persons who could themselves have properly ap- plied for the patent which they are opposing. Patent Rule " Where the ground of opposition is that the applicant has Evidence as obtained the invention from the opponent, or from a person of to the whom such opponent is the legal representative, unless evidence niust b" in support of such allegation be left at the Patent Office given. * Re Bairstow, 1888, 5 R.P.C. 286. t Re Edmunds, 1888, Griff. 281. OPPOSITION TO THE GKANT OP A PATENT. 79 within the time prescribed by these rules the opposition shall See p. 82. be deemed to be abandoned, and a patent shall be sealed forthwith." Where tlie opponent proves that the .applicant obtained a substantial part of his invention from him, but the applicant has also made improve- ments of merit, the patent may be sealed subject to an agreement being filed at the Patent Office for securing to the opponent the full rights of a joint patentee ;* or the patent may be sealed to the applicant and opponent as joint inventors. t The second ground of opposition is " that the second invention has been patented in this country on opposition. an application of prior date/' " Where the ground or one of the grounds of opposition is Patent Rule that the invention has been patented in this country on an Dumber and application of prior date, the number and date of such prior date of prior application shall be specified in the notice." required. The prior patent need not have been actually prior patent sealed, but the complete specification must have actually been accepted ; and it does not matter whether the 8e prior patent is an existing or an expired patent. The words of the Act that any person may oppose who may on this ground appear to be of the most general ec P oiid n nature possible, and no doubt many would suppose groun ' that it was intended to allow any person who could point out that the invention claimed was clearly old, because it had been already the subject of a patent, to oppose he grant of what would thus clearly be an illegal monopoly. According to the Act it seems clear that any * Be Luke, 1886, Griff. 294. f Re Eadie, Griff. 279. 80 LAW OF PATENTS. person may give notice of opposition, and also that the Comptroller must hear such person if he is desirous of being heard ; but on appeal the law officer is required to hear such person only if he is, in the opinion of the law officer, entitled to be heard in opposition to the grant. Law officers have used this power of refusing to hear an opponent to greatly restrict the class of persons who are able practically to oppose the grant, and from the decision of the law officer there is no appeal. In a leading case on this question Sir Edward Clarke, Solicitor-General, said : Opponent " The only class of persons who are entitled to be heard in in7ercted in opposition before the law officer are persons who are interested prior patent, with a legitimate and real interest in the prior patent upon which an application is opposed, or persons who, while they have not patented the invention, have yet been the originators of it, from whom the person seeking the patent has ob- tained it."* Prior patent It has been clearly held that the fact that the prior patent has expired does not affect the validity of the opposition,t and it is certainly rather difficult to see how anyone can be in- terested with a legitimate and real interest in an expired patent except as one of the public who are in free possession of the invention disclosed in that patent, especially as the same law officer has held that the fact of manufacturing under the prior patent was not sufficient interest to entitle a person to be heard. J In the above case he did not * Re Heath and Frost, 1886, Griff. 290. f Re Lancaster, 1884, Griff. 293. J Re Macevoy, 1880, 5 K.P.C. 285. Re Heath and Frost, 1880, Griff. 285. OPPOSITION TO THE GRANT OP A PATENT. 81 disapprove of the decision in the leading case of re Glossop, where Lord Herschell, then Solicitor- General, said : " I shall hesitate very much before I say that any member of the public can come in and oppose a patent and raise an inquiry and cause an appeal of this sort who has no interest in it, and who simply says, ' Do not ask me what my interest is, because I have none, except that I am going to show you that this patent is the same as that,' because that system might be used so as to cause a vast amount of annoyance and expense of a most objectionable character to patentees. I know that it was intended to prevent that. In the present case the opponent purchased a prior patent, which he says has anticipated the present invention, and he has been working under it, and he is a manufacturer who has been making machines in accordance with that patent. Although that patent has now become public property, I do not think that I ought to hold that he is not a person entitled to be heard." It thus appears that it is useless for any person to oppose under the second ground unless he is interested in the prior patent either as patentee or as licensee,* or as an applicant whose complete specification has been accepted. Although, the law officers are not absolutely Effect of bound by previous decisions, these decisions as to law offi"ls. the locus standi of an opponent having been followed, there is but little chance of their being now departed from, and there being no appeal from the law officer's decision, the correctness of this rule cannot be reviewed by any higher authority. The last ground of opposition was introduced Third ground in 1888 to meet the danger of an earlier applicant stealing his invention from a later applicant, who * Re Hill, 1888, 5 E.P.C. 599. 6 82 LAW OP PATENTS. had either filed a complete specification or other- wise published his invention during the term of the earlier applicant's provisional protection. Except under the first ground of opposition it is not necessary to produce any evidence before the Comptroller. In that case, as we have seen, evidence is required, and in other cases evidence may be used. Evidence The Comptroller cannot take evidence viva voce, Comptroller, and all evidence used before him must be given by way of statutory declarations, which must be in the same form as is used in the High Court of FatentRuie Justice. They must be headed in the matter or i/A. matters to which they relate, and they must be divided into paragraphs, consecutively num- bered, each paragraph so far as possible being confined to one subject. Patent Rule " The statutory declarations required by the Acts and Rules Statutory 01 use( * * n an ^ P rocee ^i n S s thereunder shall be made and sub- Declarations, scribed as follows : made. " ( a ) I n the United Kingdom, before any justice of the peace, or any commissioner or other officer authorised bylaw in any part of the United Kingdom to administer an oath for the purpose of any legal proceeding ; and " (Z/) In any other part of Her Majesty's dominions, before any court, judge, justice of the peace, or any officer authorised by law to administer an oath there for the purpose of a legal proceeding ; and ** (c) If made out of Her Majesty's dominions, before a British minister, or person exercising the functions of a British minister, or a Consul, Vice-Consul, or other person exercising the functions of a British Consul, or a notary public, or before a judge or magistrate/' Patent Rule Within fourteen days after the expiration of two months from the date of the advertisement of the acceptance of a OPPOSITION TO THE GRANT OP A PATENT. 83 complete specification, the opponent may leave at the Patent Opponent's Office statutory declarations in support of his opposition, and on so leaving shall deliver to the applicant a list thereof." " Within fourteen days from the delivery of such list the Patent Rule applicant may leave at the Patent Office statutory declarations Evidence in in answer, and on so leaving shall deliver to the opponent a answer and list thereof, and within fourteen days from such delivery the opponent may leave at the Patent Office his statutory declara- tions in reply, and on so leaving shall deliver to the applicant a list thereof. Such last-mentioned declarations shall be con- lined to matters strictly in reply. "Copies of the declarations mentioned in this and the last Copies of preceding rule may be obtained either from the Patent Office or from the opposite party." " No further evidence shall be left on either side except by Patent Rule leave of the Comptroller upon the written consent of the ' parties duly notified to him, or by special leave of the Comp- troller on application in writing made to him for that purpose." " Either party making such application shall give notice Patent Rule thereof to the opposite party, who shall be entitled to oppose 40< the application." " On the completion of the evidence, or at such other time as Patent Rule he may see fit, the Comptroller shall appoint a time for the Notice of hearing of the case, and shall give to the parties ten days' "earing, notice at the least of such appointment. " If the applicant or opponent desires to be heard he must forthwith send the Comptroller an application on Form E (bearing an impressed stamp for 1). The Comptroller may refuse to hear either party who has not sent such application for hearing. If neither party applies to be heard the Comptroller shall decide the case, and notify his decision to the parties." " On the hearing of the case no opposition shall be allowed Patent Rule in respect of any ground not stated in the notice of opposition, Opposition and where the ground or one of the grounds is that the r invention has been patented in this country on an application grounds of prior date, the opposition shall not be allowed upon such notice, ground unless the number and date of such prior application shall have been duly specified in the notice of opposition." 84 LAW OP PATENTS. Patent Rule The decision of the Comptroller, after hearing any party Decision to who applies under Rule 41, shall be notified by him to the be notified. Appeals to From the decision of the Comptroller an appeal law officer. YIQQ to the law officer ; the procedure on appeal in an opposition either to a grant or to an amend- ment is the same, and is dealt with in a separate chapter (see p. 115 in Chapter XI). The hearing before the law officer is by way of rehearing, and viva, voce evidence may be given, so that the witnesses may be cross- examined. In a complex case where viva voce evidence is practically indispensable, the evidence laid before the Comptroller may be of only a formal nature raising the issues, and the real contest may be deferred until the hearing by the law officer. Where either party wishes to adopt this procedure they should, if practicable, come to an agreement with the other party as to the evi- dence that shall be given. \vhen I n order to actually prevent a patent being iTfikeiyZ sealed, it is necessary for the opponent to have succeed. an ex t raO rdinarily strong case ; if the grant is refused, the applicant is left entirely without remedy ; while if the patent is sealed, it is always open to impeachment in the Courts, and if proved to have been wrongly sealed can always be revoked ; it is, therefore, comparatively seldom that the grant is wholly refused. In a case of opposition Sir Edward Clarke, Sol.-Gen., laid down the following strict rule : " The law officer should only stop the issue of a patent if, OPPOSITION TO THE GKANT OP A PATENT. 85 having examined the evidence, he is so clearly of opinion that the opponent has made out his case that he would, if a jury were to find in favour of the applicant, refuse to accept it, and overrule the decision on the ground that it was perverse and contrary to the obvious weight and effect of the evidence."* And of course this rule applies equally to a deci- sion of the Comptroller. The same eminent law officer was of opinion that " Where there is a strongly controverted question of scien- tific anticipation the patent should not be stopped. "f But this was before he stated the above rule, which may be taken as a perfect test of whether the sealing will be refused. As a general rule an opposition is entered not so much for the purpose of stopping the patent as for foi'cing the applicant to make an amendment by way of disclaimer of something which the Disclaimer i_ i i i may be opponent is interested in. ordered. Disclaimers are of two kinds, special and general. In a special disclaimer the applicant mentions some prior patent, and states that he does not claim anything described therein, or something to that effect. A special disclaimer will be required only in very special cases where the prior patent is a master patent, or the later invention is simply a modification of the earlier one. If the applicant can prove that there was any public knowledge * Re Stuart's Application, 1892, 9 R.P.C. 452. t Re Lake, 1889, 6 R.P.C. 550. 86 LAW OF PATENTS. on the subject of the application at the date of the prior application, he will only be compelled to insert a general disclaimer, not mentioning the prior patent, but only disclaiming what had been before claimed. CHAPTER VII. KEEPING UP A PATENT. WHEN a patent has been sealed the applicant becomes the patentee, and in all matters con- nected with the patent the patentee is the person concerned. The Act of 1883 defines the " patentee " as the Patentee pei'son for the time being entitled to the benefit sect. 46. of the patent. Thus if a patentee assigns his patent to any person or persons (including Corpo- rations) he ceases at once to be patentee, and the assignee or assignees become patentee or pa- tentees in their turn. Now, as any act or thing which may be required to be done in connection with a patent is always left to the patentee, it must be remembered that in all that follows re- lating to patents the patentee for the time being, and not the original patentee, is referred to under the term "patentee." " (1) The terra limited in every patent for the duration Term of thereof shall be fourteen years from its date. Act'llss " (2) But every patent shall, notwithstanding anything 8ect - *7. therein or in this Act, cease if the patentee fails to make the prescribed payments within the prescribed times." The fees of 1 and 3, paid with the application and complete specification, keep the patent inj r tentin 88 LAW OP PATENTS. force until the expiration of the fourth year from Patent Rules, the date of application. In order to keep the set), 4. patent in force beyond the fourth year the patentee must, before the expiration of the fourth and of each succeeding year during the term of the patent, pay the prescribed fee. Fees, how The fees payable in respect of a patent, and filed - J.V JE r. \ 3 Act 1883, the manner 01 payment or such tees, are regulated by the Board of Trade, and they have been altered from time to time by that authority. The present scale of fees, with the times of payment, will be found at page 239. Bate for The latest day for payment of a renewal fee in payment of .. 1 1 .1 renewal fees, any year is the date tor which the patent was sealed, that is, in ordinary cases the date on which the application for the patent was made. fees, LOW Payment must be made by way of Patent Form J, latent Ruiesi duly stamped, which must be sent to the Patent 189^ (2nd set), 4. Office for entry of the payment in the register. Act less, This must be sent to the Patent Office so as to ect.8. ^ received before midnight of the day on which the payment falls due, unless that day should fall on Christmas Day, Good Friday, or on a Saturday or Sunday, or any day observed as a holiday at the Bank of England, or any day observed as a day of public fast or thanksgiving. These are called ex- cluded days, and a payment due on an excluded day may be made up to midnight on the day next following such excluded day, or days if two or more of them occur consecutively. Payment.by Payment may be made by prepaid letter through Act 1883, the post, and if so made will be deemed to have sect 97 been made at the time when the letter containing KEEPING UP A PATENT. 89 the same would be delivered in the ordinary course of post. It is sufficient to prove that the letter was properly addressed and put into the post. The patentee may pay in advance the whole or Fees maybe any portion of the aggregate of the prescribed advance. annual fees. " On due compliance with these rules, and as soon as may be Certificate of . payment, after such respective periods as aforesaid, or any enlargement patent Rules, thereof respectively duly granted, the Comptroller shall issue No- ** a certificate that the prescribed payment has been duly made." If payment be not made in time, the time may Enlargement be extended for not more than three months on payment, payment of a fine. The Act of 1883 provides that "If, nevertheless, in any case, by accident, mistake, or Sect. 17 (3). inadvertence, a patentee fails to make any prescribed payment within the prescribed time, he may apply to the Comptroller for an enlargement of the time for making that payment. " Thereupon the Comptroller shall, if satisfied that the Sub-sect. (4). failure has arisen from any of the above-mentioned causes, on receipt of the prescribed fee for enlargement, not exceeding ten pounds, enlarge the time accordingly, subject to the following conditions : " (a) The time for making any payment shall not in any case be enlarged for more than three months. " (6) If any proceeding shall be taken in respect of an No damage infringement of the patent committed after a failure to n Lts during make any payment within the prescribed time, and enlargement before the enlargement thereof, the 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." " An application for an enlargement of the time for making Patentee a prescribed payment shall state in detail the circumstances in whyVee'^s which the patentee by accident, mistake, or inadvertence has n . ot P aid in failed to make such payment, and the Comptroller may require 90 LAW OP PATENTS. Patent Rules, the patentee to substantiate by such proof as he may think necessary the allegations contained in the application for enlargement." Application for enlargement of the time for payment of a renewal fee must be made on p. 260. Patent Form K duly stamped. The fees are 3, 7, and 10 for enlargements of one, two, or three months respectively. CHAPTER VIII. RIGHTS OF PATENTEE. S OBJECT to the due payment of the fees as they become due, the patent gives protection for fourteen years from the date of application, and we must now consider briefly what are the rights which the possession of letters patent for an inven- tion confers upon the patentee for the time being. " Every patent when sealed shall have effect throughout the Range of United Kingdom and the Isle of Man." Act 1883, sect. 16. It does not extend to the Channel Islands, nor to any colony or foreign possession; for these separate patents must be obtained as for foreign countries. The Act of 1883 provides that "A patentee may assign his patent for any place in or part Assignment of the United Kingdom or Isle of Man as effectually as if the SSff" patent were originally granted to extend to that place or part only." This of course implies that the patentee may assign his patent for the whole of the United Kingdom and Isle of Man. Although a patent is personal property an Assignment , , * _ J must be by assignment must be by deed; in order to be deed, effectual it must be duly stamped, and registered at the Patent Office ; and from the date of such 92 LAW OF PATENTS. Assignee patentee. registration the assignee, whether of part or of the whole of the patent, takes, so far as what is assigned to him is concerned, the place of the assignor. If the patent is assigned for any part of the kingdom the assignee becomes the patentee for that part, with all the rights of an ordinary patentee, so far as his district is concerned. Assipiordoes When a person sells a patent, he of course not warrant . .. 1,11 -1-1 11 validity. implies that he has a good title to sell it ; but he sells it for what it is, and does not by so selling it in any way warrant its validity.* Of course the sale may be subject to a covenant on the part of the vendor to hold himself responsible if the patent should be declared bad, but this is exceptional, and usually caveat emptor is the rule. what is On referring to the form of grant it will be seen granted to the patentee, that the Crown doth by the letters patent Act 1883, Patentee has a monopoly. May sen to n userT a8 "give and grant unto the said patentee our especial license, full power, sole privilege, and authority that the said patentee by himself, his agents or licensees, and no others, may at all times hereafter during the terms of years herein mentioned make, use, exercise, and vend the said invention within our United Kingdom of Great Britain and Ireland, and Isle of Man, in such manner as to him or them may seem meet, and that the said patentee shall have and enjoy the whole profit and advantage from time to time accruing by reason of the said invention." This gives to the patentee a monopoly of the f i ci 1-1 invention for the term of the patent, that is, he may during that time make and sell the patented article at his own price without any risk of corn- petitition, and he may also sell or supply the * Monforts v. Marsden, 1895, 12 R.P.C. 266. RIGHTS OF PATENTEE. 93 article subject to any conditions as to the manner or the locality in which it may be used. If the patentee wishes to restrict the manner but must -I I I 1 11 S* Ve U ti Ce f in which the patented article may be used, clear restrictions -'"... , . i before sale. notice or the restriction must be given to the purchaser before the article is sold ;* for when an article is sold without any restriction on the buyer the sale gives an absolute right as against the seller to use the article in any way the buyer may think fit. This will include using or selling the article in any country where the vendor owns a patent for the article at the time of sale.f We have seen that a patent may be granted Joint owners . , , . ,. ?. n ofa patent. to several persons jointly ; and even it originally granted to a single person the grantee may assign it to more than one person, and thus several persons may become joint owners, or, as they may then be called, joint patentees. When there are several "joint owners of a patent. A joint owner can work each of them is at liberty, unless he is bound invention - . alone. by some agreement to the contrary, to work the patent on his own account ; he can manufacture and sell articles made under it without the con- sent of his co-owners, and he need not account to them for any profits which he may so make.J Whether he can grant licenses and receive WLether . -ft J' nt owner royalties without accounting for the sums so can gwut . licenses on received does not appear to have ever been " own account. Joint owner * Incandescent Gas Light Co., Ltd., v. Cantelo, 1895, 12 may sell part RP.C. 262. f Societe anonyme de Glaces v. Tiljhrnan's Sand Blast Co., 1883, 25 Ch. D. 1. J Steers v. Rogers, 1893, H.L., 10 R.P.C. 245. 94 LAW OP PATENTS. Persons not owners entitled to benefit. Accounts of licensees where joint owners. Licensees. P. 9. decided ; * but he can of course sell a part of his share, and the purchaser will then be entitled to work the patent on his own account ; and as the price of such a share might be paid as an annuity, and would practically amount to a royalty, there really seems no reason why he should not also have power to grant a license. Besides joint owners, there may be persons who, though they are not owners, are entitled to share in the profits of the patent ; thus an owner may assign a share of the profits while remaining sole proprietor. In such a case the assignee of profits can claim an account from a licensee ; but the account must be taken in the presence of the assignor and of all persons interested so as to bind them.f The use of the word " licensees " implies that not only may the patentee by himself and his agents work his invention, but that he may license others to do so, and this is often the most valuable right attaching to the possession of a patent. The subject of licenses is treated fully in Chapter IX. The grant continues : Infringement " And to the end that the said patentee may have and enjoy forbidden. the sole use and exercise and the full benefit of the said invention, we do by these presents, for us, our heirs and successors, strictly command all our subjects whatsoever within our United Kingdom of Great Britain and Ireland, and the Isle of Man, that they do not at any time during the continu- ance of the said term of fourteen years either directly or indirectly make use of or put in practice the said invention, or * Mathers v. Green, 1865, L.K., 1 Ch. 29. f Bergmann v. Macmillan, 1881, 17 Ch.D. 423. RIGHTS OP PATENTEE. 95 any part of the same, nor in any wise imitate the same, nor make or cause to be made any addition thereto or subtraction therefrom, whereby to pretend themselves the inventors thereof without the consent, license, or agreement of the said patentee in writing under his hand and seal, on pain of incurring such penalties as may be justly inflicted on such offenders for their contempt of this our royal command, and of being answerable to the patentee according to law for his damages thereby occasioned." If any person breaks this royal command he is Liability of said to have infringed the patentee's monopoly, and m the patentee is entitled to bring against such person an action for infringement to restrain future breaches, and to recover damages in respect P. us. of past offences. The subject of actions for infringement is fully dealt with later. If any Threatened person threatens to infringe the patentee's mono- ments. poly without actually doing so, the patentee may bring an action against such person to prevent him from carrying his threat into execution."* For a full consideration of what amounts to in- fringement see Chapter XIII, p. 125. Besides bringing actions against infriugers a Threats, patentee may endeavour to prevent infringements taking place by frightening intending infriugers with threats of actions, and this right of threat- ening is often extremely effective, as the costs of a patent action are almost invariably very great for both parties, whichever side may ultimately be successful. This question is dealt with in a separate chapter (see p. 160). The Act of 1883 provides that * Frearson v. Loe, 1878, 9 Ch.D. 65. 96 LAW OP PATENTS. Patent binds " A patent shall have to all intents the like effect as against Act 1883, Her Majesty the Queen, her heirs and successors, as it has sect. 27(1). a g a i ns t a subject." But in cases where the Crown is concerned the patentee has not the same freedom as to the terms on which his invention shall be used as he has generally. It will be seen that by the terms of the grant, Patentee " If the said patentee shall not supply or cause to be supplied art 1 icle l s U for y for our service all such articles of the said invention as may be required by the officers or commissioners administering any de- partment of our service in such manner, at such times, and at and upon such reasonable prices and terms as shall be settled in manner for the time being by law provided, then, and in any of the said cases, these our letters patent, and all privileges and advantages whatever hereby granted, shall determine and be- come void, notwithstanding anything hereinbefore contained." And the Act of 1883 provides that Sect. 27 (2). " The officers or authorities administering any department of the service of the Crown may, by themselves, their agents, con- tractors, or others, at any time after the application, use the Terms on invention for the services of the Crown on terms to be before or nia'v use"'" a ^ er the use thereof agreed on, with the approval of the invention. Treasury, between 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." Crown need By the grant of letters patent for an invention validity. the Crown is not in any way bound to admit their validity. If any department make use of the invention, such use will very probably be without any agreement with the patentee, and the patentee must take some action to obtain any compensation to which he may consider himself entitled. If he believes that any department is using or RIGHTS OP PATENTEE. 97 intends to use his invention, he should write to Procedure if that department pointing out what his patent is infringes. for, and inquiring whether they wish to use his invention. He should also ask, in the event of their admitting user of his invention, that they should come to an agreement with him as to the terms upon which they are to use it. If they admit the fact of user, and do not dispute the validity of his patent, but fail to come to terms with him, he should apply to the Treasury to settle the terms. If they deny user or deny the validity of his whereCrown patent, he should apply to the Treasury to nomi- validity. nate some person against whom he may bring any action he may be advised to bring, and who shall defend on behalf of the Crown. * This course has been adopted more than once, and has proved very satisfactory, as it enables all matters in dispute to be determined in an ordinary action for infringement ; if it were not adopted, the patentee would have to proceed by way of a petition of right. The patentee will be allowed full inspection of Patentee has r . . full inspec- what the department is actually doing, so as to tn. be able to establish the fact of infringement if such really exist. When the validity of the patent and the fact Procedure . . ~ . , i ,11.1-1 when validity of infringement have been established in any >? etab- action that may be taken by the patentee against the nominee of the Treasury, he should again apply to the department to agree upon the terms on which the invention shall be used, and in default * Nobel's Explosive Co. v. Anderson, 1894, 11 R.P.C. 115. 7 98 LAW OF PATENTS. of their coming to au agreement with him he should again apply to the Treasury to fix the terms. The Act of 1883 provides that Useofinven- " -A- patent shall not prevent the use of an invention for the purposes of the navigation of a foreign vessel within the jurisdic- vessels. tion of any of Her Majesty's Courts in the United Kingdom or Isle of Man, or the use of an invention in a foreign vessel within that jurisdiction, provided it is not used therein for or in connection with the manufacture or preparation of anything intended to be sold in or exported from the United Kingdom or Isle of Man. Provision " But this section shall not extend to vessels of any foreign mutual 6 state of which the laws authorise subjects of such foreign state, having patents or like privileges for the exclusive use or exer- cise 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 jurisdic- tion of its courts, where such inventions are not so used for the manufacture or preparation of anything intended to be sold in or exported from the territories of such foreign state." CHAPTER IX. LICENSES. THE grant is that the patentee by himself, his see p. 7. agents or licensees, and no others may, &c. And the grant goes on to foi'bid any person using the invention without the consent, license, or agreement of the patentee in writing under his hand and seal. Later on it is provided that nothing in the grant shall prevent the granting of licenses in such manner and for such con- siderations as they may by law be granted. This shows that the patentee may grant licenses Patentee may to use his invention ; but from the earlier part it licenses. would appear that a license to be effective must be in writing under the hand and seal of the Aliccnse , should be by patentee ; on the other hand, the last proviso deed, makes the power of granting licenses very con- siderably wider. When the patentee sells a patented article to anyone unconditionally, he thereby impliedly licenses the use of that machine, so that it seems clear that in some circumstances even a parol license can be good. If a license but one not be granted not under seal, the Courts will enforce will be it against the licensee, as Baron Alderson said " To grant a license not under seal may be a contempt of the Crown, but does not exempt the man to whom it is granted, and who derives a benefit from it, from paying the price of it."* * Chanter v. Dewhurst and another, 1844, 12 M. & W. S2:{. 100 LAW OP PATENTS. We are here only concerned with what may be called real licenses, that is, definite licenses to make, sell, or use the patented invention, usual*' A- li cense not under seal has the advantage of undersea). no t requiring any stamp; but it is more usual to grant licenses by deed, and this course undoubtedly has advantages for all parties concerned. -^ n agreement to grant a license would be en- forceable in the courts, and would for many pur- poses be. as good as a license,* so that where the cost of stamps is a consideration it may be as well to use such an agreement, for which the stamp costs only sixpence. Joint owners of a patent may each use the invention without the consent of the rest ; but if a joint owner made and sold one of the patented articles, he would have impliedly granted a license to use thatarticle; and thereseems to be littledoubt that a joint patentee has power to grant licenses of his own motion. It has been suggested that if a joint owner granted a license he would have to account to his co-ow-ners for any royalties received by him,t but the point has never been deter- mined. A license may be granted even before the complete specification is filed. | A license may be granted wholly or partly in consideration of a lump sum, but it is more usual to reserve a royalty, either fixed or varying. * Post-card Automatic Supply Co. v. Samuel, 1889, R.P.C. 562. t Mathers v. Green, 1865, L.R., 1 Ch. 29. + Otto v. Singer, 1890, 7 R.P.C. 7, LICENSES. 101 When royalties are reserved, it is generally Effector stipulated that if at any time the patent shall be of invalidity declared invalid the payment of royalties shall " cease. If this were not stipulated for by the licensee a declaration of invalidity would not affect the payment of royalty, at least until the patent was revoked ; and any sums paid as royalty under a patent which, though invalid, has not been revoked cannot be recovered from the patentee.* A license is very usually granted for the re- Term of J J license. mainder of the term of the patent and any exten- License by . . ' . deed, when ssion thereof ; and m such a case if it be under irrevocable. seal it cannot be revoked by the licensor. f It may, however, be for a shorter definite period, or it may be for an indefinite time : in the last case, License for . ' indefinite unless the license required some definite notice totermis . . 111 11 revocable. be given, it would be revocable at any time by the licensor upon his giving notice to that effect to the licensee. The grant of a license does not impliedly war- License does , . ,. . not "arrant rant that the patent is valid, nor that in working validity. under such license the licensee does not infringe an earlier patent. J A licensee by deed under a patent is estopped Licensee may from disputing the validity of the patent,^ and, validity. while he is paying royalties, is not at liberty the title of his licensors : II bu * Taylor v. Hare, 1805, 1. W.P.C. 292. to deny the title of his licensors : II but he may. if Licenseem J ' shew that f Guyot v. Thomson, 1894, 11 R.P.C. 541. I Monforts v. Marsden, 1895, 12 R.P.C. 266. Hills v. Laming, 1853, 9 Ex.R. 256. j| Crossley v. Dixon, 1863, 10 H.L.C. 304. 102 LAW OF PATKNTS. sued for royalties, show that the licensor's right has expired. Thus, though the licensee could not say that the patent had been declared invalid, he could show that it had been revoked or had lapsed NO implied through non-payment of fees.* There is not. promise to . , pay renewal however, any implied covenant on the part of a licensor to pay any fees, and where an exclusive licensee covenants to pay a fixed annual royalty during the time for which the patent was granted, the patentee not covenanting to pay the fees for keeping up the patent, the royalty was held to be payable even though the patent had lapsed by reason of non-payment of fees.f Licensee may Although a license by deed is irrevocable on repudiate PIT -IT license. the part or the licensor, the licensee can repudiate it, and from the date of such repudiation the license terminates;! the repudiation dates from the time when the licensee gives notice to the licensor. Licensee To prevent the licensee repudiating his license, usually r . . covenants and thereby becoming able to dispute the validity dispute of the patent, it is usual for the license to validity- . contain a covenant on the part of the licensee not at any time either directly or indirectly to dispute the validity of the patent. Licenseisnot A license is not assignable unless it is made necessarily g , . . assignable, so in distinct terms, and it is usual to make n license to work under a patent assignable only with the business of the licensee, and to bind the * Muirhead v. The Commercial Cable Company, 1895, C.A., 12 R.P C. 39. f Mills v. Carson, 1892, 9 R.P.C. 338 ; C.A., 10 R.P.C. 9. I Hedges v. Mulliner, 1893, 10 R.P.C. 21 ; Crossley v. Dixon, 1863, 10 H.L.C. 293. LICENSES. 103 licensee not to part with his business without compelling the purchaser to accept a transfer of the license. A license is often made to extend to more License to . use several than one patent, and in such a case the royalties patents. are usually made payable until the expiration of the term of the latest patent; in such a case the royalty must be paid without deduction during the whole period, even though the principal patents have expired.* In an old case, however, where there was awiiereone -. . ., patent held license granted to use six patents 011 payment or bad. an annuity of 400 it was held that the consider- ation was entire, and if it failed partially by reason of one of the patents being invalid, it failed entirely, and no action could be maintained for the money ;f so that it is well to be careful in framing a license to use more than one patent to avoid the risk of this occurring. If a patentee granted an exclusive license for License may the remainder of the term of the patent without assignment, reserving any royalty, he would have parted with his entire interest, and the licensee could probably claim to be registered as owner and to sue in his own name ; but where an exclusive license Licensee . ,,...,. , cannot sue for a limited area and a limited time was granted alone, the licensee was not allowed to sue without joining the licensor. In granting an exclusive license it is usual Exclusive ... . . . licensee may to give the licensee the right to bring actions nave power to sue in * Siemens v. Taylor, 1892, 9 R.P.C. 393. "JJuL f Chanter v. Leese, 1839, 5 M. & W. 701. I Heap v. Hartley, 1889, O.A., fi H.P.O. 495. 104 LAW OF I'ATKNTS. Act 1883, sect. 22. Patent Rule 60. Petition for compulsory grant of license. P. 256. Patent Rule 61. To be left with evidence at Patent Office. Patent Rule 62. Directions as to further proceedings unless peti- tion ret used. in the patentee's name upon indemnifying him against the costs. Compulsory Licenses. " 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 grant licenses on reasonable terms " (a) The patent is not being worked in the United King- dom ; or " (&) The reasonable requirements of the public with respect to the invention cannot be supplied ; or " (c) Any person is prevented from working or using to the best advantage an invention of which he is possessed, the Board may order the patentee to grant licenses on such terms as to the amount of royalties, security for payment, or otherwise, as the Board, having regard to the nature of the invention and the circumstances of the case, may deem just, and any such order may be enforced by mandamus." "A petition to the Board of Trade for an order upon a patentee to grant a license shall show clearly the nature of the petitioner's interest, and the ground or grounds upon which he claims 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." The petition must be on Patent Form H, and must be accompanied by Patent Form H in duplicate, one copy bearing a stamp for 5. " The petition and an examined copy thereof shall be left at the Patent Office, accompanied by the affidavits or statutoiy declarations, and other documentary evidence (if any) tendered by the petitioner in proof of the alleged default of the patentee." " Upon perusing the petition and evidence, unless the Board of Trade shall be of opinion that the order should be at once refused, they may require the petitioner to attend before the Comptroller, or other person or pel-sons appointed by them, to LICENSES. 105 receive his or their directions as to further proceedings upon the petition." " If and when a primd facie case for relief has been made Patent out to the satisfaction of the Board of Trade, the petitioner procedure, shall upon their requisition, and on or before a day to be named by them, deliver to the patentee copies of the petition Petitioner's and of the affidavits or statutory declarations and other docu- mentary evidence (if any) tendered in support thereof." If the patentee desires to oppose the grant of Patentee may the license, he must give to the Comptroller notice license. of his opposition on Patent Form I, bearing a p _ 2 o8. stamp for 5 ; and " Within fourteen days after the day of such delivery the Patent patentee shall leave at the Patent Office his affidavits or patentee's statutory declarations in opposition to the petition, and evidence, deliver copies thereof to the petitioner." " The petitioner within fourteen days from such delivery Patent shall leave at the Patent Office his affidavits or statutory Evidence in declarations in reply, and deliver copies thereof to the patentee ; re P'y- such last-mentioned affidavits or declarations shall be confined to matters strictly in reply." " Subject to any further directions which the Board of Trade Patent may give, the parties shall then be heard at such time, before Further such pereon or persons, in such manner, and in accordance with P rocee action. Patent Office. It has been held by a law officer that an application for leave to amend a complete specifi- cation before acceptance must be made in this way ;t but he failed to explain how a duly * Fusee Vesta v. Bryant and May, 1887, 4 R.P.C. 71. f Re Jones, Gr. P.C, 313. 110 LAW OP PATENTS. Opposition to iimendment. Act 1883, sect. 18 (2). Notice to patentee. Patent Rule 53. Grounds of opposition must he stated. P. 255 certified printed copy should in such a case be provided. "At any time within one month from its first advertisement any person may give notice at the Patent Office of opposition to the amendment. Where such notice is given, the Comp- troller 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." " A notice of opposition to the amendment shall state the ground or grounds on which the person giving such notice (hereinafter called the opponent) intends to oppose the amendment, and shall be signed by him. Such notice shall state his address for service in the United Kingdom, and shall be accompanied by an unstamped copy." Notice of opposition to an amendment must be made on Patent Form G in duplicate, one copy bearing an impressed stamp for 10.9. If the notice of opposition be not signed by the opponent, the Comptroller mny allow him to sign it subsequently.* " On receipt of such notice the copy thereof shall be trans- mitted by the Comptroller to the applicant (or patentee) " " Within fourteen days after the expiration of one month from the first advertisement of the application for leave to amend, the opponent may leave at the Patent Office statutory declarations in support of his opposition, and on so leaving shall deliver to the applicant a list thereof." Form of Such declarations must be in the same form declarations, . -, -\ IT- i n t- T PatentRuies as is used in the High Court ot Justice, and must be headed in the matter or matters to which they relate. They must be divided into p;iragraphs consecutively numbered, each paragraph being so far as possible confined to one subject. * Re Codd, 1884, Gr.P.C. 305. Patent Rule 54. Evidence in support of opposition. Rule 55. AMENDMENT OF SPECIFICATIONS. Ill The filing of declarations is optional, and the opponent may be able to rely on the reasons which he has given in his notice of opposition. The rules for signing such declarations are the same as are given on page 82. " Within fourteen days from the delivery of such list the Patent applicant may leave at the Patent Office statutory declarations j$"|j c ^f c ' c in in answer, and on so leaving shall deliver to the opponent a support of list thereof, and within fourteen days from such delivery the tottnic'iid!" opponent may leave at the Patent Office his statutory de- clarations in reply, and on so leaving shall deliver to the appli- cant a list thereof. Such last-mentioned declarations shall be Evidence in confined to matters strictly in reply. " Copies of the declarations mentioned in this and the last Copies of preceding rale may be obtained either from the Patent Office or from the opposite party." " No further evidence shall be left on either side except by Patent leave of the Comptroller upon the written consent of the ciosin^of parties duly notified to him, or by special leave of the Comp- evidence, troller on application in writing made to him for that purpose." " Either party making such application shall give notice Patent thereof to the opposite party, who shall be entitled to oppose l the application." " On completion of the evidence, or at such other time as Patent he may see fit, the Comptroller shall appoint a time for the Notfceof hearing of the case, and shall give the parties ten days' notice hearing i>y . T . ., ,. Comptroller. at the least or such appointment. It the applicant or opponent desires to be heard, he must forthwith send the Comptroller an application on Form E (bearing an impressed stamp for 1). P. 253. The Comptroller may refuse to hear either party who has not sent such application forbearing. If neither party applies to be heard, the Comptroller shall decide the case and notify his decision to the parties." " The decision of the Comptroller after hearing any party who R^C".^. applies under Rule 41 shall be notified by him to the parties." , necis | ' be notified The decision of the Comptroller is subject to Act W?,' an appeal to the law officer, which must be made 112 LAW OP PATENTS. according to the law officers' rules (see next chapter). It is provided that Act 1883 "The law officer shall, if required, hear the person making sect. 18 (4). the request and the person so giving notice, and heing in the Law officer to . , Al , TR ,., Ti i u u i *. hear parties, opinion or the law omcer 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." Law officer's There do not appear to have been any cases in decision final. which the law officer refused to hear the opponent. The decision of the law officer is final on any question coming before him in proceedings for amendment of a specification. Act 1883, "Where no notice of opposition is given, or the person so Wl'en onDo- 8i v i n & n tice does not appear, the Comptroller shall determine nentdoes not whether and subject to what conditions (if any) the amendment appear. , , ,, , ought to be allowed. Act 1883, " Before exercising any discretionary power given to the Patent Comptroller adversely to the applicant for amendment of a KxercUe of specification, the Comptroller shall give ten days' notice, or discretionary 8uc h longer notice as he may think fit, to the applicant of the Comptroller, time when he may be heard personally or by his agent before the Comptroller." Patent " Within five days from the date when such notice would be NoUce i>y delivered in the ordinary course of post, or such longer time as applicant. the Comptroller may appoint in such notice, the applicant shall notify in writing to the Comptroller whether or not he intends to be heard upon the matter." Patent " Whether the applicant desires to be heard or not, the Comptroller Comptroller may at any time require him to submit a statement may require j n wr jting within a time to be notified by the Comptroller, or statements, , , . , . . &c. to attend before him and make oral explanations with respect to such matters as the Comptroller may require." Patent " The decision or determination of the Comptroller in the Decision to exercise of any such discretionary power as aforesaid shall be be notified to parties. AMENDMENT OF SPECIFICATIONS. 113 notified by him to the applicant, and any other person affected thereby." " When leave to amend is refused by the Comptroller, the person making the request may appeal from his decision to the Kefusal of end , , , , . ,, . ,. ,, conclusive deemed to torm part or the specification. of right to amend. This does not prevent anyone subsequently Amendment showing that the amendment made the specifica- *\uwnto have inviili- * Be Lake, 1887, Gr. A.P.C. 16. dated patentl t Be Arnold, 1887, Gr. A.P.C. 5. 8 114 LAW OF PATENTS. tiou claim an invention substantially larger than or substantially different from the invention claimed by tlie original specification ; and in such a case the patent would be rendered invalid by the amendment. So far as the bringing of actions is concerned, amendment is complete as soon as conditional leave to amend has been obtained, and the condi- tion has been assented to by the patentee.* If no conditions are imposed, it would appear that the amendment is complete for this purpose as soon as leave to amend is given. Act 1883, " Where an amendment by way of disclaimer, correction, or Effect of explanation has been allowed under this Act, no damages shall amendment be given in any action in respect of the use of the invention before the disclaimer, correction, or explanation, unless the patentee establishes to the satisfaction of the Court that his original claim was framed in good faith and with reasonable skill and knowledge." * Andrew and Co., Ltd., v. Crossley Brothers, Ltd., 1891, C.A., 9 R.P.C. 165. CHAPTER XI. PROCEEDINGS BEFORE LAW OFFICERS. IT has been seen that the decision of the Comptroller is always subject to an appeal to the law officer, that is to Attorney or Solicitor General. The decision of the law officer, whether he be Decision of Attorney-General or Solicitor-General, is final on is final, every matter before him ; and he is not a court to which a prohibition can go, so that there is never any way of testing the correctness of his decision.* " When any person intends to appeal to the law officer from L.o.R. 1. a decision of the Comptroller in any case in which such appeal appeal, is given by the Act, he shall within fourteen days from the date of the decision appealed against file in the Patent Office a notice of such his intention." The notice of intention to appeal must be on Patent Form T, which must bear a stamp for 3, p. 269. and must be sent to the Comptroller at the Patent Office. The notice of appeal need not be signed by the appellant himself ; signature by his authorised agent is sufficient. f * Re Van Gelder, 1889, 6 K.P.C. 28. t Be Anderson and McKinnell, 1887, Gr.A.P.C. 23. 116 LAW OF PATENTS. L.O.R. 5. Form of notice, L.O.R. 2. Law officer will only hear arguments ou points mentioned m notice. L.O.H. 3. Notice of Appeal, to whom sent. The fourteen days run, in case of leave being given to amend, from the day of forwardiug to the opponent a copy of the amendment as ap- proved by the Comptroller.* " No appeal shall be entertained of which notice is not given within fourteen days from the date of the decision appealed against, or such further time as the Comptroller may allow, except by special leave upon application to the law officer." When notice has been given just before the fourteen days expire, and the party receiving it desires to give a counter notice the time for giving it will be extended. t " Such notice shall state the nature of the decision appealed against, and whether the appeal is from the whole or part only, and if so, what part of such decision." When notice of appeal is given as to part only of the Comptroller's decision, and the party re- ceiving such notice desires to question other parts, he must give a counter notice. J " A copy of such notice of intention to appeal shall be sent by the party so intending to appeal to the law officer's clerk at room 549, Koyal Courts of Justice, London ; and when there has been an opposition before the Comptroller, to the opponent or opponents ; and when the Comptroller lias refused to seal a patent on the ground that a previous application for a patent for the same invention is pending, to the prior applicant." When the appeal is by an opponent he need not give notice to the applicant, but the law officer provides for giving such notice. || * Re Chandler, 1886, Gr. 270. f Re Baii-stow, 1888, 5 Il.P.C. 289. t Ibid. Re Anderson and McKinnell, 1887, Gr.A.P.C. 23. || Re Hill, 1888, 5 R.P.C. 601. PROCEEDINGS BEFORE LAW OFFICERS. 117 " Upon notice of appeal being filed, the Comptroller shall L.O.R, 4. forthwith transmit to the law officer's clerk all the papers relating to the matter of the application in respect of which such appeal is made." " Seven days' notice, at least, of the time and place appointed Notice of for the hearing of any appeal shall be given by the law officer's clerk, unless special leave be given by the law officer that any shorter notice be given." " Such notice shall in all cases be given to the Comptroller L.O.R. 7. and the appellant ; 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 that an application for a patent for the same invention is pending, to the prior applicant." In case of opposition to either the grant of a whom law patent or the amendment of a specification the hear. law officer is only required to hear the opponent sects. 11 '(3) .,,.., * 4/U 1 a> and 18 (4). if he is in the opinion of the law officer a person Se cts.9(3) entitled to be heard in opposition ; but he must in andl8 ( 7) - any case hear the applicant, and when the Comp- troller is respondent he also is entitled to be heard. If the appellant does not appear at the hearing Appellant ,1 i -11 i T T -,i .v. not appear- the appeal will be dismissed with costs.* ing If the appeal be withdrawn without sufficient or with- reason being assigned for the withdrawal the appellant will have to pay the costs. t If the respondent does not appear, but ex- Respondent T i- ,, ,. p ,. not appear- plains his non-appearance to the satisfaction or >g- the law officer, another day will be appointed for hearing the appeal, and the respondent will be ordered to pay the costs of the day.J * Re Dietz, 1889, 6 R.P.C. 297. f Re Knight, 1887, Gr. A.P.C. 35. I Re Ainsworth, 1885, Gr. 269. 118 LAW OF PATENTS. Law officer may employ expert. Act 1883, sect. 11 (4). L.O.R. 8. Evidence on appeal. Evidence before taf y- Law officers in ;cy take tira race evidence. Act 1883, sect. 38. Attendance of witnesses may be ordered. L.O.R.9. L.O.R. 10. Iii case of opposition to the grant of a patent " the law officer may, if he thinks fit, obtain the assistance of an expert, who shall be paid such remuneration as the law officer, with the consent of the Treasury, shall appoint." " The evidence used on appeal to the law officer shall be the same as that used at the hearing before the Comptroller; and no further evidence shall be given, save as to matters which have occurred or come to the knowledge of either party, after the date of the decision appealed against, except with the leave of the law officer upon application for that purpose." We have seen that the evidence before the Comptroller is entirely documentary ; he cannot take viva voce evidence under any circumstances, and therefore in a very complicated case the pro- ceedings before him are often of a formal cha- racter, just sufficient evidence being given to raise the questions at issue ; an appeal to the law officer is then made, and that alone is seriously contested. The law officers may examine witnesses on oath, and administer oaths for that purpose ; so that the objection as to documentary evidence being re- quired does not apply to an appeal. " The law officer shall, at the request of either party, order the attendance at the hearing on appeal, for the purpose of being cross-examined, of any person who has made a declara- tion, in the matter to which the appeal relates, unless in the opinion of the law officer there is good ground for not making such order." " Any person requiring the attendance of a witness for cross- examination shall tender to the witness whose attendance is re- quired a reasonable sum for conduct money." No costs before Comptroller has no power to award any . coafcg to e j t ] ier partv directly or indirectly ; but PROCEEDINGS BEFORE LAW OFFICERS. 119 the law officer may order costs to be paid by Law officer either party, and any such order may be made a costs. rule of the Court (i.e. of the High Court of sect. 38.' Justice). "Where the law officer orders that costs shall he paid by any Law officer party to another, he may fix the amount of such costs ; and if lie a^ou,,* O f shall not think fit to fix the amount thereof, he shall direct by costs - whom and in what manner the amount of such costs shall be ascertained." As a rule the law officer fixes the costs ; the amount awarded is quite an arbitrary one, often five guineas, but sometimes double that sum may be awarded when the evidence is of an expensive kind. " If any costs so ordered to be paid be not paid within four- Recovery of teed days after the amount thereof has been so fixed or ascer- f ,*l s ^, ,-, * f f I. I M, 12. tained, or such shorter period as shall be directed by the law officer, the party to whom such costs are to be paid may apply to the law officer for an order for payment under the provisions of section 38 of the Act (i. e. to make the order a rule of the Act 1883, ~ , , sect. 38. Court). "All documentary evidence required or allowed by the law Form of officer to be filed shall be subject to the same regulations, in e"fj l e c" tary all respects, as apply to the procedure before the Comptroller, L.O.R. 13. and shall be filed in the Patent Office, unless the law officer shall order to the contrary." " No further evidence shall be left on either side except by p a t cn t leave of the Comptroller upon the written consent of the R ule 89 - parties duly notified to him, or by special leave of the evidence. Comptroller on application in writing made to him for that purpose. "Either party making such application shall give notice Notice to thereof to the opposite party, who shall be entitled to oppose ^aence!'' the application." Patent Rule 40. 120 LAW OP PATENTS. Notice* to " 14. Any notice or other document required to be given to cl'erk""' 06 '' 8 * ne ' aw ffi cer ' s clerk, under these rules, may he sent by a pre- paid letter through the post." The Act of 1883 provides that Sect 38. " The law officers may from time to time make, alter, and rescind rules regulating references and appeals to the law officers and the practice and procedure before them under this part of this Act." CHAPTER XII. PROFESSIONAL ASSISTANCE IN PATENT MATTERS. To aid intending applicants for patents, and to enable them to make their applications in proper form, the Patent Office publishes a circular of Patent office Circular. information which will be found very useful. This circular is supplied gratis at the Patent Office. A careful examination of this and of a few specifications will be sufficient to enable an in- telligent person to make an application for a patent without professional aid, without much risk of making any serious mistakes so far as formal matters are concerned. The choice of a suitable title and the drafting of a provisional specification do not generally present any great difficulty, and provided the title Title must be is applicable to the invention, and not too wide, invention. and the provisional specification gives a fair outline of the invention sufficiently general to cover all probable improvements, there is no fear of going far wrong. When, however, it becomes a question of the complete specification and its complete . , . -11 8 P eci fleet" 011 claims, the greatest care and skill are required, and requires as a rule it is advisable for the applicant to obtain professional assistance. Before settling the claims it is very important Knowledge . r of what has to know what has been done before in the same g ne bef ? r ? is essential. connection, so as to be able to make the claims 122 LAW OF PATENTS. cover all that is really new and nothing that is old. For this purpose it is often advisable to supplement the applicant's knowledge by making a search through the specifications of previous Searches. patents. Such a search involves considerable expenditure of time, and the applicant may not feel prepared to spend several days at the Patent Office or elsewhere on work of this description. Of course he need not necessarily employ a regular patent agent for making a search, but one who is accustomed to the work is more likely to carry it out effectively than one who has had little or no experience in such matters. Patent Such work is usually entrusted to a patent agent, of whom there are many in London and other places ; their business consists in con- ducting all kinds of work, other than legnl pro- ceedings, in connection with patents. For- whnmay merlv any person, however ignorant of patent cull them- . J J selves patent business, could style himselr a patent agent ; but slct. i'(i). the Act of 1888 provided that " A person shall not be entitled to describe bimself as a patent agent, whether bj advertisement, by description on his place of business, %y any document issued by him, or otherwise, unless he is registered as a patent agent." Penalty for " If any person describes himself as a patent agent in contra- name patent vention of this section he shall be liable on summary con- agent viction to a fine not exceeding twenty pounds." improperly. sub-sect.4. Providing he does not describe himself as a Anyone may et HS a ? ent patent agent, any person can act as agent tor in patent , . _ . ..... matters, another in patent business ; and the signing ot a specification as agent for the applicant is not sufficient to render him liable to tlie fine.* This * Graham v. Fanta, 1892, Div. Ct,, 9 R.P.C. 164. PROFESSIONAL ASSISTANCE IN PATENT MATTERS. 123 would probably apply to any other patent business, but it would be certainly unwise in ordinary cir- butempioy- . ' ment of cnmstances for an applicant to employ as Ins agent patent apent 1 * TJ ' 8 "dvlSilllle. any person whose name is not on the Register. A patent agent cannot undertake the conduct Patent ngcnt 3 . cannot do of an action for infringement, or to restrain solicitor's . . . work. threats, or of a petition for revocation or pro- longation, which must be conducted by the party in person or through a solicitor like any other legal proceedings ; but in all proceedings before the Comptroller and the law officers it is unusual to employ a solicitor, and his place is generally taken by a patent agent, though, as has been said, the Acts and Rules do not require that the person who acts as agent for an applicant, patentee, or opponent need be a patent agent. At a hearing before the Comptroller or a law counsel may . . -ici lie em p'>' ed - officer it is very usual for the parties to be re- represented by counsel. Such proceedings form an exception to the general rule that in con- tentious business counsel must receive their in- structions from a solicitor, for in them the employment of a member of the other branch of the legal profession is unnecessary and unusual, and counsel take their briefs from the agent. Besides the contentious proceedings in which Non - . contentions professional assistance is generally absolutely >"sines. necessary, there are many matters in which it is advisable for a patentee not to trust to his own unaided powers. For settling the complete specification, amendments, or licenses professional aid is generally very advisable many a patent, which might have been of great value, has been 124 LAW OP PATENTS. irretrievably ruined by having the claims badly drawn in the first instance. Settling an amend- ment or disclaimer is usually a matter of some nicety, where experience is of great advantage. The drafting of specifications is generally carried out by a patent agent, but it is very usual to lay the draft specification befoi'e some counsel t ions and ... licenses who makes a speciality of patent matters, and let often settlrd f J by counsel, him settle the claims. The settling of an amendment or disclaimer is also very usually left to counsel. Proceedings When apatent is sold, the vendor does notusually on sale of a. . IT 11- t patent. in any way warrant its validity,* and the intending purchaser usually requires some search to be made to see if the patent has been anticipated, and gene- rally requires the specifications and the results of Counsel's any searches to be laid before counsel, and an usually opinion favorable to the validity of the patent to required by ,,,.-,, ,, , . 1,1 purchaser, be obtained betore the purchase is completed. In all these non-contentious matters the in- structions for counsel are usually prepared and submitted by a solicitor or patent agent ; but as in other non-contentious matters such, for instance, as the well-known case of giving instructions for drawing up a will they may, if preferred, be drawn np and submitted to counsel by the parties themselves, who may thus avoid the double ex- pense involved in the more usual procedure. * Monforts v. Marsden, 1895, C.A., 12 R.P.C. 270. CHAPTER XIII. INFRINGEMENT. LETTERS patent confer upon the patentee, his agents and licensees, the sole right to make, use, exercise, and vend the invention in the United Kingdom and the Isle of Man in such manner as to him or them may seem meet. If any person without the license of the patentee makes, uses, exercises, or vends the invention, such person is said to have infringed the letters patent ; and the patentee is entitled Patentee to bring an action for infringement against him. action fofin. In such an action, unless the patent is held bad, if he prove that the infringement has taken place, renames of the patentee will be entitled to judgment against the infringe? for an injunction to restrain any future infringements, for an account of the profits which the infringe! 1 has made by his wrongful acts, or in the alternative for an inquiry into the damages which the patentee has suffered by the infringements, and lastly for an order requiring the delivery up upon oath to the patentee or the destruction of all the infringing articles which may be at the time in the possession of the in- f ringer. The patentee is not even obliged to wait until 126 LAW OF PATENTS. Patentee his patent has beeu actually infringed : if any miiysue 1,1 iiefore person threatens to do what the patentee con- infringe- meut. siders will be an infringement of his patent, he can bring an action to restrain the threatened in- fringement ;* of course in such a case there is no question of damages, and the only relief possible is an injunction. In order to succeed the patentee must show that his patent is valid, and that the defendant has threatened and continues to threaten to do something which would actually infringe the patent. Generally Except when it is very clear that what is better to wait r . ... for infringe- threatened will be an infringement, it is safer to meiit to take . ... 1-1 place. wait until the infringement takes place, and in the meantime to threaten to proceed against iufringers (see Threats, p. 160). wimt The question of what constitutes an infringement constitutes L infringe- is one oi great importance both to the patentee meut. and to the public ; since the latter are entitled to know what they may do without infringing and becoming liable to the severe penalties inflicted on infringers. The first question that may arise in respect of an alleged infringement is " does the article or process alleged to be an infringement come within the scope of the invention described and claimed in the complete specification ? since this alone is construction protected by the patent. This, of course, depends of specitica- r . . tiou. partly on the construction of the specification, which is a matter of law for the consideration of the Court ; but when the meaning of the specifica- tion is clear, the question of infringement is one * Frearsun v. Loo, 1878, 9 Ch. D. 65. INFRINGEMENT. 127 of fact, and if the case be tried by a jury, must be left to them to answer. A second question which may arise is whether, istiieuser 1 . ill complained granted that the article or process would other- of an m- . IP PI fringement? wise be an infringement, the facts of the case are such that what the defendant did was done under an implied license from the patentee, and there- fore did not amount to an infringement. In such a case there may, of course, be questions of what actually happened, but when these are answered the question of infringement becomes a matter of law for the Court to decide. The question as to whether the alleged infringe- Does alleged , . . , P infringement moot does or does not come within the scope or come within . . . scope of the invention protected by a patent is sometimes patent? one of considerable difficulty, even after the mean- ing of the complete specification is made clear. Of course, where the iiifringer has simply taken the invention as described no difficulty arises ; but this is not by any means the most usual cas-e. More usually an iufringer, starting with the in- tention of using the invention described in the specification, disguises it by making slight altera- tions here and there, by using something which Effect of . . . . alterations is different from what is described in the specm- fr n| 1 invention cation, but which will produce the same effect, or described in . , . specification. by adding or subtracting something, perhaps in itself of considerable importance, so that at first sight what he does appears to be quite different from what is described in the specification, and it is only after careful examination and with full knowledge of all the particulars that the fact of infringement becomes clear. 128 LAW OF PATENTS. What is an equivalent? Substitution Perhaps the simplest alteration that an iufringer equivalent. can ma ke in an invention described by a specifica- tion is to substitute for the method described some other method which will produce the same result. This, according as the invention is me- chanical or chemical, is called using a mechanical or chemical equivalent. In his specification the applicant need not describe every method of carrying out his invention, and if he describes one method, this will be sufficient to prevent others from using what at the date of his specification was well known to be an equivalent method. The patent will not, however, protect him against the use of any method which, though really equiva- lent to that described by him in his specification, was not at the date of the specification known to be an equivalent ; in such a case there is invention in the discovery of the equivalent which may be the subject of another patent. In the leading case on this subject it was said : " The specification must be read as persons acquainted with the subject would read it at the time it was made ; and if it could be construed as containing any chemical equivalents, it must be such as are known to such persons at that time ; but those which are not known at the time as equivalents, and afterwards are found to answer the same purpose, are not in- cluded in the specification. They arc new inventions."* It is not, however, in every case that the intro- duction of an equivalent fails to secure immunity Substitution from infringement. In the case of a patent for a L combfna" 1 combination, all depends on whether the substitu- tion takes place in an important or unimportant * Heath v. Unwin, H.L. 1855, 2 W.P.C. 314 Equivalent must be k now n at date of patent. t ion may not be an in- fringement. INFRINGEMENT. 129 part. As a general rule a patent for a combina- tion protects only the actual thing described, and is not infringed by the use of a different combi- nation, even though the s;une results are produced in similar ways by each. Thus: " Where there is a well-known machine, and there is an im- provement in a part of that machinery for effecting the old ohject, though in a better way, you must confine the patentee to the improvement which he claims in effecting that particu- lar ohject. It does not come to the question whether this is or not a mechanical equivalent ; it is, ' Have you really taken in substance that which was the invention of the plaintiff, pro- tected by his patent ?'"* But although in the case of a patent for a But this is combination the question of equivalents may not true'. "' be of importance, this is not by any means always the case. It was laid down that " A patent for a new combination or arrangement is to be entitled to the same protection and on the same principles as every other patent. In fact, every patent, or almost every patent, is a patent for a new combination. The patent is for the entire combination ; but there is, or may be, an essence or sub- stance of the invention underlying the mere accident of form, and that invention, like every other invention, may he appro- priated by a theft in a disguised or mutilated form ; and it will be in every case a question of fact whether the alleged piracy is the same in substance and in fact, or is a substantially new or different combination. "f And in the Court of Appeal in a recent case it was clearly stated that a patent for a combination * Boyd v. Horrocks, 1889, C.A., 6 R.P.C. 159; see also Brown v. Jackson [1895], A.C. 446. f Clarke v. Adie, 1875, L.R., 10 Ch. 675. 9 130 LAW OF PATENTS. may be infringed by taking the essential part with mechanical equivalents for some of the parts.* ewentiai Besides the use of mechanical or chemical MmWnwtion equivalents, there may be many ways in which an is taken. infringer may endeavour to conceal the fact of in- fringement. As a general statement of the law on this subject we may take the words of Chief Justice Tindal in a case decided in 1841. He said : Test of m- Where a party has obtained a patent for a new invention, or mngemcnt. r J r a discovery he has made by his own ingenuity, it is not in the power of any other person, simply by varying in form or in immaterial circumstances the nature or subject-matter of that discovery, either to obtain a patent for it himself, or to use it without the leave of the patentee, because that would be in effect and in substance an invasion of the right ; and, therefore, what you have to look at upon the present occasion is not simply whether in form or in circumstances, that may be more or less immaterial, that which has been done by the defendants varies from the specification of the plaintiff's patent, but to see whether in reality, in substance, and in effect, the defendants have availed themselves of the plaintiff's invention in order to make that fabric. " There can be no doubt whatever, that, although one man has obtained a patent for a given object, there are many modes still open for other men of ingenuity to obtain a patent for the samo object. There may be many roads leading to one place, and if a man has by dint of his own genius and discovery, after a patent has been obtained, been able to give to the public without refer- ence to the former one, or borrowing from the former one, a new and superior mode of arriving at the same end, there can be no objection to his taking out a patent for that purpose. But he has no right whatever to take, if I may so say, a leaf out of his neighbour's book, for he must be contented to rest upon his * Peckover v. Rowland, 1893, C.A., 10 R.P.C. 234. INFRINGEMENT. 131 own skill and labour for the discovery, and hn must not avail himself of that which had before been granted exclusively to another."* This statement of the law has often been re- peated in different words by the highest authority. Thus Lord Chancellor Cairns said : " That which is protected by a patent is that which is speci- fied, and that which is held to be an infringement must be an infringemeiu infringement of that which is specified. But I agree that it jJat i will not be the less an infringement because it has been coloured described, but iiuiy 06 or disguised by additions or subtractions, which additions or altered so as subtractions may exist, and yet the thing protected may be facurf in- taken notwithstanding."! fringement. In every case the fact of infringement is one infringement to be decided on the evidence, and does not facTde'pen'd- depend on other cases, and the above only serve evfdence. as aids in showing what must be the object in view in considering the evidence. This has been stated in the following language : " You must ask yourself whether the substance and pith of the invention is taken substantially. A mere addition to the original machine will not prevent the new machine from being an infringement ; nor will diminishing or subtracting this or that part of the original machine necessarily prevent an in- fringement of it from taking place. You must recall yourself, after making allowance for the subtraction, to the question whether in substance the invention has been borrowed.''^ And to this nothing can with advantage be added. In order to be liable as an infrinerer it is not infringement by selling * Walton v. Potter, 1841, 1 W.P.C. 586. f Dudgeon v. Thompson, 1877, 3 App. Cas. 44. J Franklin Hocking and Co., Ltd., v. Franklin Hocking, 1887, C.A., 4 R.P.C. 442. 132 LAW OF PATENTS. FnvenUon always necessary to actually carry out the inven- tion protected by a patent ; it may be enough to constitute infringement for a person to make all the parts of a patented machine, and to supply these parts to others in a form in which they can easily put them together, and thus use the patented invention.* It is not necessary for a person either to use or to sell that which infringes a patent in order infringement to be rendered liable for infringement. The by making . . . . . ., . only. mere making and keeping infringing articles in others may Ins possession is sufficient. Thus in one case not prepare to flood where a patent was about to expire, and defendant market on l L expiration of had made a large number of the patented articles patent. a V t i ready to be thrown on the market as soon as the monopoly had expired, an injunction was granted to restrain the sale of such articles both before and after the time limited by the patent. t infringement Again, the infringement may be only by user by user only. 6 . J . . J J . . of the patented invention without either making Purchaser or selling. The purchaser of an infringing may infringe. ....*' .,* .. , * article infringes the patent every time he uses such an article, and is liable to the like penalties as any other in f ringer. If this were not so, it would be easy to defeat the patentee's rights by getting some man of straw to make the infring- ing article for sale to the person who wanted to use it. Restricted But, as we have seen, when the patentee himself supplies the article, he may supply it on any terms he thinks fit, and may license it to be * United Telephone Co. v. Dale, 1884, 25 Oh. D. 778. f Crossley v. Beverley, 1829, 1 Russ. & M, 166 n. user. INFRINGEMENT. 133 used or dealt with iu a restricted maimer only. For instance, a patentee who had a patent only in this country would be prepared to supply the patented article for export at a lower rate than for home use, since abroad anyone could law- fully supply such articles, and he would have all foreign manufacturers to compete with for the market. In such a case it would be an infringe- Articles for c export only ment to use in this country an article sold for may not be n- 11 i use< '. llere- export : in fact, the offence would be practically infringement J by importa- the same as that of importing into this country tion. an article made iu infringement of the patent, and this is in itself an infringement.* But. unless there is some clear indication to Sale implies . license to the contrary, notified to the purchaser before use. sale, where a patentee manufactures in England and abroad, the sale of the article in one country implies a license to use it in the other. This, how- ever, only applies where the patentee has not parted with any of his patent rights, since, if he has assigned the foreign patent in either country, he cannot sell the article so as to defeat the rights of the assignee, f Not only may the patentee supply an article for export, but he may supply an article and limit the manner or the locality in which it may be Locality for -i i , , user may be used in this country ; and in that case, provided limited, the purchaser is before purchasing made aware of * Von Heyden v. Neustadt, 1880, 14 Cb. D. 230 ; Walton v. Lavater, 1860, 8 C.B.N.S. 162; Wright v. Hitchcock, 1870, L.E. 5, Ex. 37. f Betts v. Willmott, 1871, 6 Ch. 239 ; cf. Societe Anomyine de Gluces v. Tilghraan's Sand Blast Co., 1883, C.A., 25 Ch. 1). 1. 134 LAW OK PATENTS. . the limitation, any use beyond the limits specified will constitute an. infringement.* nmst'not ^he patentee must not in any way be instru- fr a ingem n eiit. men tal in causing the infringement to be com- mitted ; thus the making of an infringing article under the instructions of the patentee's agent is not an infringement ; for the patentee must not lay a trap for anyone so as to entangle an innocent party in litigation. f * Incandescent Gas Light Co., Ltd., v. Cantelo, 1895, 12 K.P.C. 262. f Kelly v. Batchelar, 1893, 10 R.P.C. 289. CHAPTER XIV. ACTIONS FOR INFRINGEMENT. IF a patentee believes that any person has made use of his invention without license from him that is, that any person has infringed his mono- poly he may bring against such person an action for infringement of his patent. An action for infringement in England must ^"c"^ 'action be brought in the High Court of Justice or in {J 1 ^* 1 } the County Palatine Court of Lancaster. In the * e c c t t 1 !jJ5 8> High Court the action may be commenced in either the Chancery or Queen's Bench Division, and the choice of plaintiffs is divided nearly equally between the two. An action for infringement of a patent, how- [^"i be ever small the amount of damage may be, cannot count y court - be tried in a county court. * The Act of 1883 provides that "The provisions of this Act conferring a special jurisdiction Actions in ,,,,.. , Scotland and on the court as denned by this Act shall not, except so far as Ireland, the jurisdiction extends, affect the jurisdiction of any court in Sect - m W- Scotland or Ireland in any proceedings relating to patents, or to designs, or to trade marks ; and with reference to any such pro- ceedings in Scotland the term ' the court ' shall mean any Lord Ordinary of the Court of Session, and the term 'court of appeal ' shall mean either division of the said court ; and with reference to any such proceedings in Ireland, the terms 'the * Reg. v. Judge of C. Ct. of Halifax, 1891, C.A., 8 R.P.C. 338. 136 LAW OF PATENTS. court ' and ' the court of appeal ' respectively mean the High Court of Justice in Ireland and Her Majesty's Court of Appeal in Ireland." NO action till Au action for infringement cannot be com- s p eated'reiatc8 menced until the patent is actually sealed ; but it acceptance, may relate back to all infringements committed sect, iff* after the date of publication of the complete specification. Parties. Registered The registered owner of the patent is usually a owner can -i . i 11 i -i sue. plaintiff, even though he may only be in the position of a trustee ; but it appears that a ces- tui qiie trust may sue in his own name.* This would enable an equitable assignee to sue ; but, Registration except when his assignor is the defendant, the sary.but assignment ought to be by deed, and it is better advisable. 5 P , * ' to have the assignment registered berore commenc- ing the action. If the plaintiff is a registered owner, he is under no necessity for proving any assignment to him, but can describe himself as a registered proprietor. A joint When there are joint owners of a patent, any owner may ' . . . ' sue alone, one or them can sue tor mirmgemeut without the rest : if the defendant wishes to avoid the possi- bility of having several actions against him in respect of the same infringement, he should at once apply to join the other owners as parties. f Formerly Formerly an assignee of a patent could not sue necessary for infringement until the assignment had been before action. * Speckhaii v. Campbell, C.A., ' Times,' March 13th, 1884. f Sheehan v. G. E. Rail. Co., 1880, 16 Ch. D. 59. ACTIONS FOR INFRINGEMENT. 137 registered ; * but when the assignment was regis- tered the registration liad relation back, and gave a right to sue as from the date of the assignment.! A mortgagor in possession of a patent can sue Mortgagor . ... ma y sue for infringement without joining the mortgagee ; alone. but if it appear to the judge desirable that the mortgagee should be a party he ought to join him. J A licensee, even when his license is an exclusive Licensee ... cannot sue one, cannot sue in his own name without joining aine. the patentee. The writ usually claims Form of writ, (1) An injunction to restrain the defendant, his servants and agents, from infringing the plaintiff's letters patent (usually adding the title, date, and number of the patent). (2) Damages, or, at the option of the plaintiff, an account of profits. (3) Delivery up to the plaintiff or destruction of Jill articles in the defendant's possession made in infringement of the said letters patent. (4) Costs (adding, when a certificate of validity has been obtained in a previous trial) between solicitor and client. An action for an injunction may be commenced before the defendant has actually infringed if he has threatened to do so, [| but in this case only (1) and (4) will be required. * Chollet v. Hoffman, 1857, 7 E. & B. 686. f Hassall t. Wright and others, 1870, L.R., 10 Eq. 509. J Van Gelder v. Sowerby Bridge Flour Co., 1890, C.A., 7 ll.P.C. 41. Heap v. Hartley, 1890, C.A., 42 Ch. D. 461, 6 R.P.C. 495. || Prearson v. Loe, 1878, 9 Ch. D. 65. 138 LAW OF PATENTS. But although an injunction may be granted to restrain infringement where there is an intention to infringe, but no actual infringement ; no injunc- tion will be granted where there is no intention to infringe, even though there may have been a past infringement.* who may be Any party who is alleged to have infringed directly or indirectly may be made a defendant. Thus it has been held right to commence an action against carriers who have in their possession infringing articles, and on discovery to add the owners as defendants ; t but custom-house agents for foreign importers are not liable to be thus attacked.J Directors of Directors of a company may be liable for in- may I be' l " y friugements by the company, and if made defend- ants with the company are personally liable to pay the costs of the plaintiff s. when If the defendant is an importer resident out of nil* the the jurisdiction the plaintiff must not delay the commencement of his action until the term of his patent has nearly expired, as he will then have no ground for claiming an injunction, and will be unable to obtain leave to serve the defendant out of the jurisdiction ; or if he obtains leave to serve, the service will be liable to be set aside. In such a case his only remedy is to sue the persons who in this country have purchased infringing * Proctor v. Bailey, 1889, C.A., 6 E.P.C. 538. f The Washburn and Moen Manufacturing Co. v. Q., 1889, 6 R.P.C. 398. X Nobels Explosive Co. v. Jones, 1882, 8 App. Gas. 1. Betts v. De Vitro, 11 Jur., p. 9. ACTIONS FOB INFRINGEMENT. 139 articles, since he has no right of action abroad against an infringer in this country only. The manufacturer and purchaser of an infring- ing machine may be sued together,* but the manu- facturer cannot claim to be added as a defendant in an action against the purchaser ;f if, however, he has given the purchaser an indemnity he may be allowed to defend as a third party, and in such a case if unsuccessful he will be liable for the plaintiff's costs. J The Act of 1883 provides that " In an action for infringement of a patent, the Court or a Orders judge may, on the application of either party, make such order acUoif. for an injunction, inspection, or account, and impose such terms Sect - 30 - and give such directions respecting the same and the proceed- ings thereon as the Court or a judge may see fit." Interim Injunctions. If the plaintiff intends to apply for an interim when to be ...,,,.... ... applied for. injunction, he should do so as soon as possible after the defendant has entered an appearance ; he may with special leave in an urgent case do so before appearance. The application is made by motion or summons Application, ,. ,, ,. . . . , . . ., ,. . how made. according to the division in which the action is commenced, and asks for an injunction to restrain the defendant, his servants and agents from making, using, exercising, or vending the inven- tion for which the letters patent were granted. * Proctor v. Bennis, 1887, 36 Ch. D. 740. f Moser v. Marsden, 1892, C.A., 9 R.P.C. 214. I Edison and Swan Electric Light Co. v. Holland, 1889, C.A., 6 R.P.C. 287. 140 LAW OP PATENTS. Evidence on Upon the bearing the plaintiff must be pre- for p interim pared with evidence of the infringement, or of the intention to infringe, of the validity of his patent, and also of his title. Defendant If the defendant does not appear on a motion appearing, for an interim injunction, an injunction will be granted upon the plaintiff filing an affidavit stating that the patent is good and valid, and has not been anticipated.* Validity not If the defendant appears and does not dispute the validity of the patent, and there is good evidence of intention to infringe on his part, an injunction will be granted. f when If, however, the defendant appears and resists injunction is , . ,. ,-, ,./. M i i , resisted. the injunction the plamtin will not obtain an Plaintiff injunction unless he can show that for many Smdfac1e years the validity of the patent has been un- vaiiiHty? questioned, and his monopoly has been complete and free from infringement, or that the validity of the patent has been upheld in a previous trial ; Plaintiff and also that he will not be sufficiently pro- account w tected if the defendants keep an account of ent all the profits they make by the alleged infringe- ments. when If there is any reasonable doubt as to whether what the defendant is doing amounts to infringe- merit, or if the defendant seriously disputes the validity of the patent, no injunction will be Account may granted, but as a rule the defendant will be be ordered . i-i- / be kept. ordered to keep an account of his profits, and the motion or summons will be ordered to stand * Clarke v. Nichols, 1895, 12 K.P.C. 310. t Howes v. Webber, 1894, 11 E.P.C. 586. ACTIONS FOE INFRINGEMENT. 141 over until the trial of the action or further order. If the defendant undertakes not to infringe Defendant until the trial of the action or further order, the not to' motion will stand over with liberty to apply. * Where there is good evidence of infringement, Previous the strongest ground for an injunction is that the validity is validity of the patent has been established in a previous trial ; but where the defendants offered Defendant to pay a reasonable sum into court and to keep securftyand ....... PI keeping au an account an interim injunction was refused, account, though the patent had been so upheld. t When Plaintiff an interim injunction is granted the plaintiff must midertaidng give the defendant an undertaking in damages in '" case he should not succeed in the action. Statement of Claim. The Act of 1883 provides that " In an action for infringement of a patent the plaintiff Sect. 29 (l). must deliver with his statement of claim, or by order of the Court or the judge, at any subsequent time, particulars of the breaches complained of." The statement of claim is usually a formal Form of document which states the title of the plaintiffs of claim, to the letters patent, alleges that the said letters patent are good and valid, and that the defendant has infringed in the manner shown in the particu- lars of breaches delivered with it. The particulars of breaches must be the best Particulars of breaches. * Lyon v. Mayor, &c., Newcastle-upon-Tyne, 1894, 11 R.P.C. 218. f The North British Rubber Co., Ltd., v. The Gormully and Jeffry Manufacturing Co., 1895, 12 R.P.C. 17. 142 LAW OP PATENTS. that the plaintiff is able to give, but it is obvious that without full discovery the plaintiff canuot give very full particulars. He should give any instances of which he is aware, and may add a general statement as to other infringements. Where the patent has more than one claim the plaintiff should state which claims are alleged to have been infringed.* should state The particulars should say in what way the infringement defendant has infringed or threatened to infringe, of. nip i. e. by manufacture, sale, or user, and the plain- tiff is bound by these particulars, so that if he has not alleged infringement by manufacture in the particulars, he cannot complain of manufac- ture at the trial. f In cases where the plaintiff is unable to give particulars as to what part of his patent has been infringed, he may apply for an inspection order for liberty to inspect the defendant's alleged statement infringement before delivery of the statement of of claim. , . claim. J Complicated Where the alleged infringement is at all com- plicated, the particulars should specify what part of the article complained of is alleged to infringe. Particulars No general rule can be given as to how explicit must show i -i 11 11 what plaintiff the particulars need be, except that they must be such as to leave no reasonable doubt in the mind of the defendant as to what is the case he has to meet. Particulars It is not, however, necessary for the plaintiff, need not / . J . \ . ' interpret when alleging that a certain claim has been m- claim. * Haslam v. Hall, 1887, 4 R.P.C. 203. f Henerv. Bardie, 1894, 11 R.P.C. 421. I Drake v. Muntz's Metal Co., 1886, 3 R.P.C. 43. ACTIONS FOR INFRINGEMENT. 143 fringed, to tell the defendant what he considers to be the meaning of that claim.* Since part of the relief sought is an injunction infringement to restrain infringements, evidence of infringe- ments committed after the issue of the writ may be of service to the plaintiff ; but such evidence can only be given if proper notice be given to the defendant that such infringements will be relied upon. The particulars of breaches, however, usually compensa- state that the plaintiff will claim full compensation foraiiin- in respect of all infringements committed by the defendant up till the date of the judgment. The particulars of breaches form part of the Particulars pleadings in the action, and are usually settled counsel/ and signed by counsel. If the defendant admits some infringements, Defendant but denies all others, the plaintiff can move for frinsement. judgment on the pleadings; but the inquiry into damages must be confined to the admitted cases of infringement. f Defence. Three courses are open to the defendant in an action for infringement, success in any one of which will entitle him to judgment in the action. He may show (1) That the plaintiff is not entitled to sue Forms of , , defence. under the patent ; * Wenham Co. v. Champion Co., 1891, 8 K.P.C. 22. f United Telephone Co. v. Donohoe, 1886, 31 Ch. D. 399. 144 LAW OF PATENTS. (2) That he has not infringed the patent ; and (3) That the patent is bad. Liccusee The first course is open to him except when he may not . i i dispute is a licensee under the plaintiff, and continues to validity, pay royalties to him ; for as long as he is paying royalties he may not dispute his licensor's title ;* but may but. provided he does not continue to pay royalties, show that V J J plaintiff has it is open to a licensee to show that Ins licensor s no title. , i i , title has expired.! NO infringe- It is of course a complete answer to the plain- complete tiff's claim if the defendant can show that he has defence. , . . ,.,.. done nothing which infringes the patent. Licensee The fact that a man has taken a license under need not , , , . admit inter, the patent does not involve any assumption that pretatiim of , . . . _ patentee. the interpretation put on the specification by the patentee is to be accepted by him as the true one ; thus Lord Chancellor Cairns said : " A licensee is entitled to have it ascertained what is the ambit, what is the field which is covered by the specification as properly construed ; and he is entitled to say, ' Inside of that field I have not come ; so far as I have worked I have worked outside the limit which is covered by it as properly construed, and therefore I am not bound to make any of those payments which are stipulated in my license as payments to be made for working the patent.' "J Licensee Thus a licensee, although he may not dispute anXguous the validity of the patent, is entitled to have the coHstrued'by specification construed by the Court ; and if it is ambiguous, or requires explanation, he may give evidence of the state of public knowledge at the * Crossley v. Dixon, 1863, 10 H.L.C. 304. f Muirhead v. The Commercial Cable Co., 1895, 12 R.P.C. 39. J Clark v. Adie (No. 2), 1877, 2 App. Cas. 426. ACTIONS FOR INFRINGEMENT. 145 < date of the patent to show that the patentee could not be taken to have intended to include what he is doing.* There are several cases in which the defendant Defendant is not allowed to dispute the validity of the ah&ys dis- , . ,.., pute validity. plain tiffs patent. If the question of validity has been determined Estoppel by in a previous action to which he was a party, or if in such an action he has submitted to an injunction, he may not again dispute the validity of the patent. f If the defendant has formerly been an owner By being an olF the patent, and has assigned his share to the a * plaintiff or his predecessor in title, he cannot dispute the validity of the patent, for that would be to derogate from his own grant. J The assignment must, however, be by him in Actual party order to thus bind him ; for if the assignment was estopped i>y only by the trustee in the bankruptcy of the defendant, he is at liberty to dispute the validity of the patent on the ground of want of novelty, or insufficiency of the specification, or presum- ably on any other ground. His assignment only binds him, it does not or by record, bind his partner ; || and a like rule applies where the defendant has been the defendant in a previous action. ^[ * Crosthwaite v. Steel, 1889, 6 R.P.C. 190. f Moore v. Thomson, 1890, H.L., 7 K.P.C. 325. J Chambers v. Crichley, 1864, 33 Beav. 374; Walton v. Lavater, 1860, 8 C.B.N.S. 162. Smith v. Cropper, 1885, 10 App. Cas. 249. || Heugh v. Chamberlain, 1877, 25 W.It. 742. 1 Goucher t>. Clayton, 1864, 5, 11 Jur. N.S. 107. 10 14(3 LAW OF PATENTS. Licensee by If the defendant is a licensee by deed under estopped the patent he cannot dispute its validity :* he from , . , . disputing can, however, at any time repudiate the license, but may and from the time of such repudiation the license license. terminates ;t so that a licensee even by deed may give notice to the plaintiff that he repudiates the license, and then, unless he is under covenant Repudiation not to dispute the validity of the patent, he may must precede ,, .. , . , . T . defence. raise the question in his defence. It is not, however, sufficient for him simply to plead in his defence that the license has been abandoned,! since this is not notice that such is the case, and until the notice is given he may not dispute the validity of the patent. Equitable The rule that a licensee may not dispute validity licensee may . i , be estopped, may in some cases apply also to persons not licensed by deed, but who are only equitable licensees ; thus it has been held that the defendant in an infringement action cannot both claim to be an equitable licensee and also question the validity ; he must choose one or the other alternative. 6 I Licensee It is only the actual licensee who is unable to estopped. dispute the validity ; the fact of a person having been a licensee does not prevent his partner raising the question. || Usual Subject to these limitations, the defendant * Hills v. Laming, 1853, 9 Ex. 11. 256. f Hedges v. Mulliner, 1893, 10 R.P.C. 21 ; Crossley v. Dixon, 1863, 10 H.L.C. 293. J Cheetham v. Nuthall, 1893, 10 R.P.C. 321. Post-card Automatic Supply- Co. v. Samuel, 1889, 6 R.P.C. 560; and see Crossley v. Dixon, 18(53, 10 H.L.C. 293. || Goucher v. Clayton. 1864, 11 Jur. N.S. 107. ACTIONS FOR INFRINGEMENT. 147 usually raises all these issues in his defence. He does not admit the plaintiff's title, he denies that he has infringed, and he alleges that the patent is invalid. The Act of 1883 provides that " The defendant must deliver with his statement of defence, Particulars . ., ~ . , , , of objections or, by order of the Court or a judge, at any subsequent to validity time, particulars of any objections on which he relies in support "|"^ be thereof. sect 29, " If the defendant disputes the validity of the patent, 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." The defence is usually a formal document, and Form of all objections to the validity of the patent are left to be dealt with in the particulars, which are usually settled and signed by counsel. The particulars of objections in an action for Form of . ... .-, i . . . particulars infringement are similar to those in a petition tor of objection, revocation, and to those required in an action for threats where the validity of the patent is put in issue ; and the subject is dealt with in a separate chapter. In an action for infringement where there is when one more than one defendant, one of them may have cannot dis- -i f t i -i... P ute validity no defence because he cannot deny infringement, plaintiff and yet the plaintiff may not be entitled judgment, since another defendant disputes the validity of his patent ; and if this defence should succeed, it would enable the other defendant to escape judgment.* * Cropper t>. Smith, 1885, H.L., 2 R.P.C. 17. 148 LAW OP PATENTS. Particulars may be amended. Act 1883, sect. 29 (5). Particulars of objections are important. Conditions for amend- ment. No evidence of matter not in particulars. Sect. 29 (4). " Particulars delivered may be from time to time amended by leave of the Court or a judge." It is not necessary for the plaintiff to deliver very minute particulars of breaches ; it is suffi- cient if he proves a single breach, but it is most important for the defendant to make his par- ticulars of objections as perfect as possible ; and if after the delivery of his defence he finds out any really strong objection to the patent which is not included in his particulars, he should apply for leave to deliver further particulars. This will probably be given subject to the defendant paying any costs incurred between the delivery of the original and further particulars, if the plaintiff should discontinue within a given time after the delivery of the further particulars.* In the case of either plaintiff or defendant, care must be taken to give particulars of all that they intend to put in evidence at the trial, for the Act of 1883 provides that " At the hearing no evidence shall, except by leave of the Court or a judge, be admitted in proof of any alleged in- fringement or objection of which particulars are not so de- livered." Inspection. is able to make out a primd inspection. j" ac l e case of infringement he can in general obtain an order entitling him to inspect the de- fendant's works if such inspection would assist him in proving his case. * Ehrlich v. Ihlee, 1887, 4K.P.C. 115. ACTIONS FOR INFRINGEMENT. 149 The defendant may answer his application for Defendant inspection by alleging that it would disclose trade trade secret. secrets, and in such a case the Court will appoint an independent expert to make a secret report to it on the question. An expert appointed for this purpose may not be called as a witness by either side, or at least if called must only be asked such questions as are approved by the judge.* The defendant may also, if he can show good Defendant * . - may inspect reason for it, obtain an order for the inspection of plaintiff's works what the plaintiff is doing under his patent. When the utility of the invention is in issue, the defendant might wish to show that the plaintiff did not use his own invention because it would not work, and in such a case he would require to know exactly what the plaintiff was doing. In making an order for inspection the -judge P terrogate the defendant as to whether he uses each successive step or part of the patented process or machine; and where the interrogatories are directed interroga- te the steps of a process, it is no answer for the step^iu 3 1 process. * The Plating Co. v. Fanjuharson, 1879-83, Griff. 187. 150 LAW OF PATENTS. defendant to say that some of them are immaterial and constitute a trade secret.* Names of A defendant who denies infringement may be customers i -i i i 11 'i i cannot be asked if he sold certain specified articles to speci- fied persons, but he cannot, until after judgment, be made to disclose the names of customers in a general way.t If he admits the sale of certain goods, but denies that they are infringements, the question of who purchased them may be irrelevant. The defendant may interrogate the plaintiff as to whether he has succeeded in using his patented invention without any alteration or addition ; but not as to what those alterations or additions are, since this is not necessarily relevant to the matter in dispute. J Consolidation of Actions. Under the rules of the Supreme Court " Causes or matters pending in the same division of the High Court may be consolidated by an order of the Court or a judge in the manner formerly in use in the courts of Common Law." consolidation In these courts actions could be consolidated application only at the instance of the defendants ; || and, if ant s een the defendants applied for and obtained an order for consolidating the actions, the plaintiff had to * Benno Jaffe v. John Richardson and Co., Limited, 1893, 10 R.P.C. 136. t Lister v. Norton, 1885, 2 R.P.C. 68. J Rylands v. Ashley's Patent Bottle Co., 1890, C.A., 7 R.P.C. 175. R.S.C., 0. 49, r. 8. || Amos v. Chadwick, 1877, 4 Ch. D. 869 ; Lush's Practice, 3rd ed., p. 965, ACTIONS FOR INFRINGEMENT. 151 choose which he would proceed with first, and pro- ceedings in the others were stayed until the first had been disposed of. If in the one tried, the plaintiff was successful, Defendants the other defendants were bound by the result ; but by order, if the plaintiff was unsuccessful, he could, unless he had consented to be bound by the result of the first, proceed with the others. The orders made in various cases are so worded where first as only to bind the defendants ; but there might be fails to a great hardship inflicted on the other defendants if the one selected for attack did not appear and defend the action, and provision is usually made for such a case.* When several actions have been consolidated, and Appeals. the defendant in the representative case refuses to appeal against an adverse judgment, the Court may substitute one of the other defendants, who are bound by the decision, to prosecute an appeal. t Although true consolidation applies only when Several there are several defendants sued by one plaintiff, against one J ' defendant. when several plaintiffs have brought actions against the same defendant the Court may, under its general jurisdiction, extend the time for taking the next step in the rest of the actions until a test action has been tried ; and where the first action fails to be a real trial of the issue, a second may be substituted as a test action. J * See Bovill v. Ainscough, 1867, Plimpton v. Spiller, 1876, Johnasson v. Palgrave, Lawson, Pat. Pract., 2nd edit., pp. 495 seqq. f Briton, &c., Life Assurance v. Jones, 1889, 60 L.T. 637. J Amos v. Chad wick, 1877, 4 Ch. D. 869 ; Bennett v. Lord Bury, 5 C.P.D. 339, 152 LAW OP PATENTS. Defendant m Where an order has been made in one action test case not 11111 T defending, that another should be treated as a test case, and at the trial the defendant does not appear, this does not affect the binding nature of the test case.* * The Edison United Phonograph Company & The Edison Bell Phonograph Company, Limited, v. T. Lewis Young, 1894, 11 R.P.C. 489. CHAPTER XV. REVOCATION OF LETTERS PATENT. IT will be seen that the letters patent are granted subject to the condition "that if at any time during the said term it be made to See p. 9. appear to us, our heirs or successors, or our Privy Council, that this our grant is contrary to law, or prejudicial or incon- venient to our subjects in general, or that the said invention is not a new invention as to the public use and exercise thereof within our United Kingdom of Great Britain and Ireland, and Isle of Man, or that the said patentee is not the first and true inventor thereof within this realm as aforesaid, these our letters patent shall forthwith determine, and be void to all intents and purposes." The Act of 1883 provides that Form of " Revocation of a patent may be obtained on petition to the proceedings n , for revoca- Court. tion. Sect. 26 (1). But this does not apply to a patent which has flf' 4 gg^ )l been assigned to the Secretary of State for War, and in relation to which he has certified that it is his opinion that in the interest of the public ser- vice the particulars of the invention and of the manner in which it is to be performed should be kept secret. " Proceedings in Scotland for revocation of a patent shall be * n Scotknd. in the form of an action of reduction at the instance of the Lord Advocate, or at the instance of a party having interest with his 154 LAW OF PATENTS. concurrence, which concurrence may be given on just cause shown only. " Service of all writs and summonses in that action shall be made according to the forms and practice existing at the com- mencement of this Act." The Act of 1883 provided that Grounds for " Every ground on which a patent might, at the commence- s e e ct. 26(3). ment O f this Act, be repealed by scire facias shall be available by way of defence to an action of infringement, and shall also be a ground of revocation." These grounds will be fully discussed in the chapter on Particulars of Objections, and need not be here further mentioned. In one case it was suggested that a patent for a medicinal preparation which contained poison was bad (presumably as prejudicial or inconvenient to subjects in general), because it was taken out to defeat the provisions of the Pharmacy Acts ; but this was declared not to be a ground upon which it could be revoked.* Who ma; present petitions for revocation. Sect. 26 (4). " A petition for revocation of a patent may be presented by " (a) The Attorney-General in England or Ireland, or the Lord Advocate in Scotland : " (b) Any person authorised by the Attorney-General in England or Ireland, or the Lord Advocate in Scotland : " (c) Any person alleging that the patent was obtained in fraud of his rights, or of the rights of any person under or through whom he claims : " (d) Any person alleging that he, or any person under or through whom he claims, was the true inventor of any invention included in the claim of the patentee : " (e) Any person alleging that he, or any person under or through whom he claims an interest in any trade, busi- * Vaisey's Patent, 1894, 11 R.P.C. 592. REVOCATION OF LETTERS PATENT. 155 ness, or manufacture, had publicly manufactured, used, or sold, within this realm, before the date of the patent, anything claimed by the patentee as his invention." When a person petitions under (c), (d), or (e). Petitioner . . . , . , must prove he must state in his petition under which head or ius/o tii' ... , -ii-i t *'"""''> heads he is petitioning ; and until he has proved that he has a locus standi under one of the heads or petition . . . f*. . w 'il' HOt 1)6 mentioned in the petition, the Court will not iie.trd. entertain any evidence as to the invalidity of the patent.* Under (c) the person who presents the petition must show that the patent was obtained in fraud of his rights, that is, that the patentee has been guilty of dishonest and culpable acts in obtaining it ; the petition must be in the name of the person so defrauded, it cannot be presented by his attorney in his own name.f It is more advanta- geous to present a petition under the head (c) than any of the others, since " Where a patent has been revoked on the ground of fraud, Where there the Comptroller may, on the application of the true inventor patent may made in accordance with the provisions of this Act, grant to him a patent in lieu of and bearing the same date as the date of defrauded. revocation of the patent so revoked, but the patent so granted sect. 26 (8). shall cease on the expiration of the term for which the revoked patent was granted." Unless the person petitioning can bring himself ^'^ r n ne under (c), (d). or (e), he must obtain the fiat of the 9 cmiral ' \ /> v / > v " hat must be Attorney -General authorising him to present the obtained. petition. The person who desires to obtain the Attorney- 'I ". *" 4 obtain li.it * Avery's Patent, 1887, C.A., 4 R.P.G, 322, 36 Ch.D. 307- f Ibid, 156 LAW OF PATENTS. General's fiat must send to the law officer's clerk at room 549, Royal Courts of Justice, the follow- ing documents : (1) Memorial to the Attorney-General asking for his authority, and stating all the cir- cumstances. (On judicature paper.) (2) Statutory declaration verifying the state- ments in the memorial. (On judicature paper.) (3) Two copies of the proposed petition, and of the particulars of objections proposed to be delivered. (4) Certificate by a barrister that the petition is proper to be authorised by the Attorney- General. (On foolscap.) (5) Certificate by a solicitor thnt the proposed petitioner is a proper person to be a petitioner, and that he is competent to answer the costs of all proceedings in con- nection with the petition if unsuccessful. (6) Declaration by the applicant that the validity of the patent cannot be disputed in any legal proceedings then pending. (On foolscap.) granted** 6 Sometimes the Attorney-General grants or re- parte. fuses his fiat ex parts, and sometimes he directs notice to be given to the patentee or persons interested that they may appear before him and oppose the granting of his fiat. NO costs for The Attorney-General has no power to award proceedings * to obtain fiat. cos ts to any person on an application for his fiat,* * Griff. 330. REVOCATION OF LETTERS PATENT. 157 unless by consent they be made costs in the cause ; and where this has not been done, costs before the Attorney-General will not be allowed to a success- ful petitioner at the trial of the petition.* A petition for revocation is a proceeding on Petition is r not inter behalf of the public, and it is so far not a pro- p- ceeding inter partes that neither party is estopped from raising anew points which have been already decided in a previous action for infringement by the respondent against the petitioner. f " The plaintiff must deliver with his petition particulars of Particulars the objections on which he means to rely, and no evidence must J be ' OD shall, except by leave of the Court or a judge, be admitted in p*' t Yt? r n er proof of any objection of which particulars are not so delivered, bound by " Particulars delivered may be from time to time amended by ^cY leave of the Court or a judge." *"r ct - 26 < 5 )> The particulars of objectious in a petition for revocation are similar to those in an action for in- fringement. No certificate as to the reasonableness of the particulars is required in a petition for revocation in order to obtain the costs thereof. J The petitioner may obtain directions from the Court as to what persons are to be served with the petition ; all parties beneficially interested in the patent should be made respondents to the petition. There is no power to serve a petition of revoca- Respondent ...... . out of tion out of the jurisdiction ; but it ample notice jurisdiction. * Rendell's Patent, 1894, Lane. Ct., 11 R.P.C. 277. f Deeley's Patent, 1895, C.A., 12 R.P.C. 199. j Gaulard & Gibbs Patent, 1888, 5 R.P.C. 526; C.A., 6 R.P.C.215. Avery's Patent, 1887, 4 R.P.C. 152, C.A. 322. 158 LAW OF PATENTS. First hearing of petition. When revo> cation is unopposed. When opposed usually tried as witness action. No security for costs by respondent. Conduct of petition before trial. Trial may be at assizes. Jury. be given to the respondent the Court will make an order nisi for the petition to be set down for trial in the list of witness actions.* The petition is usually filed in the Chancery Division, and comes on to be heard on affidavit evidence in the usual way. When the respondent appears and consents to the revocation, an order for revocation will be made with costs without evidence being taken. f As a general rule, when the respondent appears and opposes the revocation, he applies for tlie petition to be tried on viva voce evidence, and in that event it is set down in the witness list, and comes on for trial in its turn.J If a foreign respondent applies to have a petition for revocation tried on vivd voce evidence, he will not have to give security for costs. A petition for revocation almost exactly resem- bles an action in the manner in which it is con- ducted ; interrogatories may be administered, and discovery and inspection ordered, as in an action for infringement. || The petition may be sent for trial to the assizes, and when fraud is alleged the trial may be ordered to be by jury.^f See chapter on Trial, p. 177. * Drummond's Patent, 1889, 43 Ch. D. 80, 6 R.P.C. 576, 59 L.J.Ch. 576. Cf. Gora & Hogh's Patent [1895], W.N. 105. f Sleight's Patent, 1893, 10 R.P.C. 447. t Gaulard and Gibbs' Patent, 34 Ch. D. 386. Miller's Patent, 1894, 11 R.P.C. 55. |j Haddan's Patent, Griff. 108, 1885, 54 L.J.Ch. 126. f Edge v. Harrison, 1891, 8 R.P.C. 74. REVOCATION OF LETTERS PATENT. 159 At the trial " the defendant shall be entitled to begin, and give evidence Respondent in support of the patent, and if the plaintiff gives evidence im- AcTi'sBsT* peaching the validity of the patent the defendant shall be sect - 26 (7). entitled to reply." If the petitioner succeed at the trial the Court will declare the patent invalid, and order its revo- cation. This is carried out by registration of the order at the Patent Office. The costs of a petition of revocation usually Costa, follow the event. While the petition is pending, the Amendment patentee may apply to the Court for leave to apply petition 8 , to amend his specification by disclaimer, and the sect. 19.' petition will be stayed pending the amendment being made ; if after amendment the petitioner does not wish to proceed, he will be entitled to his costs up to and including those of the application for leave to apply to amend.' 55 ' In case of an appeal the registration will be Amendment stayed pending the appeal. Even after the Court judgment, has made an order for revocation, it seems that the specification may still be amended ;) and since a pending appeal is not a pending action, there seems no reason why the amendment in such a case should be restricted to disclaimer. * Deeley's Patent, 1894, 11 E.P.C. 72. f Deeley's Patent, 1895, C.A., 12 R.P.C. 199. CHAPTER XVI. THREATS. TO bring A PATENTEE not only has the right of bringing actions. . . * actions and recovering damages against those who Patenteemay infringe his patent, but he mav by threats en- tlireaten to ' * bringactions. deavour to prevent others from infringing. It is open to him to say, " I have a patent for this inven- tion, and I give warning that I may bring an action against anyone whom I find infringing my patent." Purchaser of Now we have seen that the purchaser of an isu'Ze? 6111 infringing article, if he uses that article, is liable for infringement of the patent ; and in most cases the advantage he would obtain by purchas- ing an infringing article instead of one made by, or under license from, the patentee would be very small compared with the loss he would inevitably suffer were he made the defendant in an action for infringement. It is therefore very probable that if an intending purchaser were aware that an article is the subject of a patent, he would take Purchaser care not to run the risk of infringing, and would babiy d prefer consequently purchase the licensed rather than infringe. the infringing article. It seems, then, that threats against the purchasers of infringing articles are very likely to be of use to the patentee, and THREATS. 161 if he has any reason to suspect that his patent is Warning to .. ii till . purchasers being infringed he should take every opportunity may stop in- of warning the public of the possible consequences of infringement. Of course a patentee is not obliged to bring an Patentee not U c J f oM^to. action against every person he may find infringing sue for an m. , . , t i_ i i fringement. his patent, even though he may have threatened in a general way to bring actions. The expense of even a successful patent action is usually consider- able, and a patentee could hardly be expected to take proceedings against any infringer unless he could feel certain of getting whatever damages and costs might be awarded to him if successful. Threats Even if he fully believed that his patent was a valid ne'cessity'for one, the patentee might consider that by means ac of threats he could keep the amount of any in- fringements within such narrow limits, that his loss of profits by them would not be so great as to justify him in incurring the cost of an action. In any case the patentee would probably con- Prevention J . J * better than sider prevention better than cure, and deem an cure, advertisement containing a threat at least not inferior to one of a more peaceful nature. As there is always great risk in a patent An action is action, if a patentee could prevent infringement a by means of threats it would, in almost all cases, be to his advantage to do so. If the threats are intended only to prevent injury by possible infringements of a valid patent they can others. hardly be said to be capable of injuring anybody, since the most they can do is to prevent what would be wrongful competition with the patentee's monopoly. 11 162 LAW OP PATENTS. Threats may It may happen, however, that there are in- do serious r * injury, friugements going on, and the effect of the patentee's threats may be very serious for those who have actually commenced competing with him ; for threats, if effectively used, will entirely ruin the trade of such rivals. but no If the patent be valid the ruin of their trade patent be will not be any injustice to the rivals of the patentee, since their competition is an illegal one ; but if the patent be invalid, there is no reason why its possessor should be placed in a more favorable position than his rivals in trade. Patent no Now we have seen that the grant of a patent novelty. is of itself no guarantee whatever of the novelty of the invention, and thus it might happen that the possessor of a patent would ruin his rivals in trade by threatening to bring actions which Threats could not be carried to a successful termination, prevent because the patent itself was invalid ; and yet as validity being , ., contested, the patentee might prefer to threaten only, and not to run the risk of an action, the validity of the pntent might never come in dispute unless some one took proceedings to get the patent revoked. Patent Again, the wording of the patent might be ambiguous, such that without judicial interpretation there might well be doubts as to whether what was being done in competition with the patentee was really an infringement at all, and this could not be well determined in proceedings for revoca- tion of the patent. In order to prevent a patentee continuing to threaten indefinitely without putting his patent into court, the Act of 1883 provided that THREATS. 163 " Where any person claiming to be the patentee of an inven- Limitation of tion, by circulars, advertisements, or otherwise threatens any other person with any legal proceedings or liability in respect scct 3ij| of any alleged manufacture, use, sale, or purchase of the in- vention, any person or persons aggrieved thereby may bring an action against him, and may obtain an injunction against the continuance of such threats, and may recover such damage (if any) as may have been sustained thereby if the alleged manu- facture, use, sale, or purchase to which the threats related was not in fact an infringement of any legal rights of the person making such threats. Provided that this section shall not apply if the person making such threats with due diligence com- Person mences and prosecutes an action for infringement of his patent." must'brin 1 / action. The first question which arises on this section what is what is meant by "threatening any other a threat 6 person." How far can it be taken to apply to a general threat to bring actions against infringers ? In 1887 it was laid down by the Court of Appeal that " Everybody has still a right to issue a general warning to General pirates not to pirate, and to infringers not to infringe, and to maj^bef 8 warn the public that the patent to which the patentee is en- threats. titled, and under which he claims, is one which he intends to enforce ; but it does not follow that because a threat is so worded as in mere language apparently and grammatically to apply only to the future, that therefore it may not be in any particular case in substance and in fact applicable to what has been done. It might be really directed against the sale and manufacture of some machines which the patentee considered infringements, and would none the less be a threat because it was worded in a general way as a warning to all persons not to infringe."* In 1891, however, Mr. Justice Wright said : " The section of the Act is limited to threats, and I do not think it subjects a patentee to an action for publishing a general * Challender v. Royle, 1887, C.A., 4 R.P.C. 375, 36 Ch. D. 425. 164 LAW OF PATENTS. Not even general threats are allowed unless the threntener is qualified under the Act. statement that he claims to be the owner of a valid patent, which covers all articles of a particular description."* This left the question still open to doubt, but in the succeeding year the Court of Appeal again affirmed the doctrine that a general warning may be a threat ; and the threat may be directed against a proposed infringement, and render the patentee liable to an action. t And in the year following the Court of Appeal made the following statements as to the effect of the section : " The object of the section was to give an action for damages where there was not one before, and to enable an action to be brought against a man who uses threats unless he will or does follow up his threats by commencing an action himself. " You are not to threaten even in a general kind of way, which might not be regarded as a threat to any particular person ; you are not to do it even by a circular or advertisement, but if you do threaten, no action is to lie against you if you will prosecute the person who is aimed at by your threats. " The Legislature desires that threats of patent actions shall not hang over a man's head, that the sword of Damocles, in such a case, should either not be suspended, or should fall at once ; and it is with that view that the section seems to be framed. " You shall not threaten legal proceedings unless the manu- facture to which the threat applies infringes the legal right of the threatener, or unless the threatener is about to forthwith bring an action to show the validity of his threats. If he cannot bring himself within these two saving clauses at the end of the section, then the section absolutely forbids a man threatening legal proceedings with regard to a patent at all." J * Ungar t>. Sugg, 1891, 8 R.P.C. 385. f Johnson v. Edge, 1892, C.A., 9 R.P.C. 142. I Skinner v. Perry, 1893, C.A., 10 R.P.C. 1. THREATS. 165 It thus appears that there are only two coudi- Conditions , . -11-1 j.i a. under which tions under which a person can use even the most threats my general kind of threat without being liable for any damage which his threats may cause. It will be well to examine these two conditions carefully, and to see exactly what each amounts to. The first is that he shall be able to show that Must prove the manufacture to which the threat applies of legal right, infringes a legal right belonging to him. In order to do this he must have a legal title to the patent,* and must also be able to show that his patent is a valid one, for if not he has no legal rights ; you cannot infringe a bad patent. f He must also prove that his threats were directed only against manufactures which came within the scope of his patent. The other alternative is for him to commence or must , . , . . , . commence an action tor infringement, and to prosecute it an action. with due diligence. The action must be brought by the person who threatens,! and must be a bond Actionmay fide action for infringement, and not a collusive any 38 * action ; it need not be brought against the m person who is the plaintiff in the action for threats, but it would require a great deal to prove that an AnadTan- action brought against the plaintiff in an action pulntiff'for P ,-, , 7 * r- 7 I, threats. tor threats was not bona jiae.\\ The action need not be such as to test the Action need not test * Kensington Electric, &c., v. Lane Fox Electrical, 1891, 8 validity. R.P.C. 277. t Blakey v. Latham, 1889, C.A., 6 R.P.C. 190. J Kensington Electric v.Lane Fox Electrical, 1891, 8 R.P.C. 277. Challenderv.Royle, 1887, C.A.,36Ch.U.425,4R.P.C. 363. || Colley v. Hart, 1890, 7 R.P.C. 101. 166 LAW OP PATENTS. validity of the patent ; an action for royalties against a licensee who cannot dispute the validity of the patent is sufficient to bring the patentee within the proviso.* Action for If the action for infringement be commenced threats after an infringe, before the commencement of the action for ment action ... isTexatious. threats, the latter action will be vexatious;! but Both actions the bringing of an action for infringement must be on ~ same kind does not torm a defence to an action for threats ment. when what is done by the plaintiff in the action for threats is not similar to that for which the action for infringement is brought. J The action, then, must be for an infringement of the same class as that which is threatened ; and it must also be commenced and prosecuted with due diligence. what is due The question as to what constitutes due dili- diligence? . ^ . .... gence in commencing an action tor infringement depends entirely on the circumstances of the case, and no rule can be laid down. When a patentee has had an action for threats commenced against him he is justified in waiting a reasonable time to have a statement of claim delivered, and see whether he can combine the Action may action for infringement with the action for threats counter- by a counter-claim. 6 In an earlier case, however, claim. * when the threats had been continued for over a year, and then the patentee, on being sued to * Day v. Foster, 1890, 7 K.P.C., p. 64 f Barrett v. Day, 1890, 7 R.P.C., p. 54. J Combined Weighing Machine Co. v. Automatic Weighing Machine Co., 1889, 6 R.C.P. 502. Colley v. Hart, 1890, 7 R.P.C. 101. THREATS. 167 restrain the threats, waited to counter-claim forAnunsuc- -11 cessful infringement, and the counter-claim was un- counter- .. 1111 111 i i claim ma y successful, it was held that he had not brought not be a good an action with due diligence.* In a more recent case, however, in which the threats had been continued over a long period, but no action had been taken, and the person aggrieved brought an action to restrain the threats, the defendants, on a motion for an in- terim injunction to restrain the threats, stated that they could not be sure as to whether the Patentee ,..-,., 11 * i i not certain plaintiff did actually infringe, and got an order of infringe- for inspection of the plaintiff's works. After this they commenced an action for infringement, and the application for an injunction to restrain the threats was refused. f Provided that it is commenced and prosecuted Action need not be with due diligence, the action for infringement successful. need not be successful in order to protect the patentee from liability for the damage caused by his threats. He may, as long as he is duly Patentee . e . p . may threaten prosecuting his action tor infringement, con- while action tinue to threaten, and it is not contempt of court to go so far as to say that " users of in- fringing articles are liable to damages and in- iunction in respect of such user/'t If at any time Action my -, . be discon- during the prosecution of his action the patentee tinned, finds that it is hopeless to continue the action, he may discontinue it without losing his defence to any action for threats already issued. The action * Hen-burger v. Squire, 1888, 5 R.P.C. 581. f Edlin v. Pneumatic Tyre, &c., 1893, 10 K.P.C. 311. J Fenner v. Wilson, 1893, C.A., 10 R.P.C. 283. 168 LAW OF PATENTS. Summary of law of threats. Present state of law unsatis- factory. need not be successful, and whether it be dis- missed at the trial or discontinued when its further prosecution is hopeless makes no dif- ference.* It is right to discontinue and not to go on with a hopeless action, and discontinuance is no evidence of mala fides in having commenced the action. f As the law stands at present it seems as if the owner of even a hopelessly bad patent may safely use threats, provided he brings an action for in- fringement against some one within a reasonable time ; and if before a reasonable time has expired anyone commences an action to restrain his threats, he may wait until the time comes for delivering a defence, and then raise the question of infringement by way of counter-claim. This is somewhat unsatisfactory, and it is to be hoped that some one will carry a case of this nature to the highest tribunal, that it may be determined whether Colley u. Hart was rightly decided. Particulars. Action for Threats. In an action for threats, the plaintiff is entitled to particulars of the patents under which the threats are issued ; J and the defendant is entitled to particulars of the threats complained of before putting in a defence, but not to the names of * Colley v. Hart, 1890, 7 R.P.C. 111. f English and American v. Gare Machine, 1894, 11 R.P.C. 27. J Union Electrical Power Co. v. Electrical Storage, 1888, C.A., 5 R.P.C. 329, 38 Ch. D. 325. TH KEATS. 169 customer-s whom tlie plaintiff lias, in consequence of the threats, promised to indemnify.* Where the plaintiff alleges threats by the defendant's agents, particulars of the agents as well as of the threats must be given. f The plaintiff in his statement of claim usually Plaintiff for threats may alleges that the patent is bad tor the reasons iiege . 1 . * , /> i 11. invalidity ; given in the particulars of objections, and claims a declaration that the patent is invalid. J The particulars of objections are similar to those required in other patent actions, and should be delivered with the pleading which denies the validity. Where, however, the statement of claim does not but if not, invalidity allege invalidity, and the defence alleges validity, may be raised the invalidity may be set up in the reply, but in that case leave for a special rejoiuderwill be given. The plaintiff claims damages for past injuries, claims in and an injunction to restrain threats. If he threats, commences his action without great delay he will as a rule apply for an interim injunction : interim v i, L- t c t u in J uuttion - but where an action tor inrriugement is being prosecuted with due diligence no interim injunc- tion will be granted. || * Law v. Ash worth, 1890, 7 R.P.C. 86 (Lancaster Court Case). t Dowson Taylor v. The Drosophore Co., Ltd., 1894, 11 R.P.C. 536 (Lancaster Court Case). J Challender v. Royal, C.A., 1887, 4 R.P.C. 363; Union Electrical Power Co. v. Electrical Power Storage, 1888, C.A., 5 R.P.C. 329, 38 Ch. D. 325. Dowson Taylor and Co., Ltd., v. The Drosophore Co., Ltd., 1895, C.A., 12 R.P.C. 95. || Kurtz v. Spence, 1887, C.A., 4 R.P.C. 427. 170 LAW OF PAT1NT8. threat! f -^ an action for infringement is commenced by the defendant in a threats action against the plaintiff, the latter action will be stayed, and the costs made costs in the infringement action ; * but this rule does not apply unless the infringe- ment action involves all the patent upon which the threats are based. t Damages The damage must be really due to the threats, at9 ' and not to general rumours in the trade, and the natural disinclination of people to run any risk of an action. The question of the amount of damages should be dealt with at the trial, and not ref erred. J Where a contract is stopped by reason of threats, the loss of profits is a proper measure of damages. Although the question of the validity of a patent can be tried in an action for threats, it is doubtful whether a valid certificate of validity can be given. || When the validity of the patent is in issue the defendant commences, and the pi'ocedure is simi- lar to that in an action for infringement. * Household v. Fairburn, 1884, 1 R.P.C. 109. f Dowson Taylor v. The Drosophore Co., 1895, 12 R.P.C. 95 (Lancaster Court Case). J Ungar v. Sugg, 1891, 8 R.P.C. 385 ; C.A., 9 R.P.C. 114. Skinner and Co. v. Perry, 1894, 11 R.P.C. 406. || Crainpton v. Patents Investment, 1888,5 R.P.C. 404. CHAPTER XVII. PARTICULARS OP OBJECTIONS. WHENEVER the validity of a patent is chal- Particulars . -,. ' . of objections lenged in any proceeding at law. whether in an required . P . . whenever action for infringement or for threats, or in a validity is . , ,, challenged. petition of revocation, the party who challenges validity must deliver to the party upon whom the task of defending the patent will fall parti- culars of his objections to the validity of the patent which is challenged. At the trial the challenger is confined to the particulars he has delivered, so that it is most important for them to embrace every objection that can be fairly taken to the patent ; at the same time judges (especially Mr. Justice Kekewich) have frequently commented severely on the very loose way in which particulars were framed, and on the inclusion in them of objections for sustaining which no evidence was given, and which were really wholly inapplicable. The particulars should, where necessary, specify claims .1 , . . . , . -, must be the claims against which they are directed, and specified, should in every case be made as precise as possible. In making out particulars of objections, quality 172 LAW OF PATENTS. Feeble is of far greater importance than quantity. A objections . ? . . . . . . .., should be single good omection is sufficient to invalidate a avoided patent ; and, although it is of course better to find more than one point against which an attack may be directed, it should always be remem- bered that one strong objection is better than a dozen weak ones, and that if an objection can- not be sustained it is really a sign of weakness and is far better omitted. It is not, as a rule, advisable to raise objections 011 trivial matters in the specification, as a number of trivial objections may incline the Court to favour the patent. In one case, where the only real issue was that of validity, which was decided in favour of the patent, Lord Esher, M.R., said in dismissing an appeal : " The defendants have used the exact thing that has been patented ; they have used it to a considerable extent, but they say, " Your patent is a bad one, you cannot sue upon it ; ' and they have taken, by way of objection, every one of the ordinary objections which are taken under such circumstances, that is to say, they spell every paragraph and every line in the patent, and try to persuade the Court that some one line or some one sentence in it is so bad that it makes the whole of the patent bad, and prevents the inventor from having the benefit of his invention, however useful or however great it may be. I do not hesitate to say myself that when that is the sort of defence in such a case, the Court ought to look carefully to see whether any one of these objections can be sustained. The Court certainly, under those circumstances, ought not to favour the objection. Those who take such objections as that must prove them strictly. That is my view." * * The Edison Bell Phonograph Co., Ltd., v. Smith, 1894, C.A., 11 R.P.C. 395. PARTICULARS OP OBJECTIONS. 173 Some of the following objections will usually be found applicable when the validity of the patent is open to attack. (a) " That the plaintiff (or the person to whom the patent True and ivas granted where there has been an assignment) T was not the true and first inventor of the alleged invention in respect of which the said letters patent were Cf. p. 34. granted." This objection is often used very loosely, but it is really applicable only when it is intended to show that the plaintiff obtained the invention from some other person. It is not a correct way of alleging want of novelty.* (6) " That the alleged invention is not proper subject- invention matter for letters patent." subject?" This is applicable only when the alleged inven- tion is primd facie not proper subject-matter ; e. g. cf. p.16. if it is for a principle, or for an illegal or immoral purpose, the ground on which subject-matter is impeached ought to be stated. (c) " That the alleged invention is not useful." Invention This is frequently introduced, though but rarely is it of any avail to the defendant. If, however, cr. p. 17. it can be sustained, it is a good objection. (d) " The complete specification does not sufficiently describe specification and ascertain the nature of the alleged invention com- m s uffic 'e>t. prised therein, and in what manner the same is to be performed. In that, &c. (adding wherein the insufficiency Cf. p. 65. lies)." This particular must contain particulars of the parts of the invention which are alleged to be in- * Thomson v. Macdonald & Co., 1891, 8 R.P.C. 9. 174 LAW OF PATENTS. sufficiently described if the defendant is able to point them out.* Specification (e) "The specification is ambiguous." ambiguous. cr.p.71. This particular should point out in what way the specification is ambiguous. t Discon- (f) That the alleged invention described in the complete specification is different from that described in the pro- Cf. p. 65. visional specification and title (or one of them) in that This particular must state iu what way the inventions described in the specifications differ from one another. J Enlargement (0) " That the amendment of the complete specification en- nfen larged the scope of the alleged invention." Cf. p. 107. Particulars of this objection should be given. Concealment W " That the complete specification did not describe the c? pat |S tee- most beneficial method of carrying out his alleged inven- tion with which the plaintiff was then acquainted." This should only be used when the defendant is able to point out something which he can show was within the knowledge of the plaintiff at the date of filing the complete specification, which was omitted therefrom ; the particular should mention what is complained of. FUe (i) " That the letters patent were granted on a false sugges- Particulars of the false suggestion should be given, such as of any words in the complete * Crompton v. Anglo-American Brush Corporation, 1887, C.A., 4 R.P.C. 197 ; 35 Ch. D. 283. f Heathfield v. Greeenway, 1894, 11 R.P.C. 17. j Anglo-American Brash Corporation v. Crompton, 1887, C.A., 4 R.P.C. 27. PARTICULARS OF OBJECTIONS. 175 specification which might tend to mislead. This objection in its most general form, and the similar one <; that the Crown was deceived," are often used crown , , , ,. deceived. in a very loose manner merely as general forms. (/) "That the alleged invention was anticipated in the invention , ,, . . ii-.,. anticipated following prior publications. by prior publication. If the prior publications be specifications of j ; 1 [ < 8 p English patents the publication need not be tion ' proved, but in any other case the time and place i of publication must be given in the particulars. Particulars " The parts relied on as anticipations should be very definite. specified, not necessarily pages and lines, though this is generally advisable, but where the antici- pation is to be found, and what it is."* (&) " That the alleged invention was anticipated by prior Anticipation IT i. by prior public user. public user must be This particular must give the details of the i 6 / 1 " 4 prior user ; it should specify the persons by whom, the places where, the dates at, and the manner in which the prior user took place. f It is not sufficient to allege prior user over a space of several years many years ago.J If general user in a locality is alleged, the plaintiff may interrogate as to the names and addresses of those who so used the invention. No order for inspection of anticipating machines will be made unless by consent. || * Holliday v. Heppenstall, 1889, C.A., 6 R.P.C. 320. f Penn v. Bibby, 1866, L.R., 1 Eq. 548. J Smith v. Lang, 1890, C.A., 7 R.P.C. 148. Alliance Pure White Lead Syndicate v. Maclvor's Patents, Ltd., 1891, 8 R.P.C. 321. || Garrard v. Edge, 1889, C.A., 6 R.P.C. 372. 176 LAW OF PATENTS. Considering (0 " Considering the state of public knowledge at the date public of the patent, the alleged invention was not proper knowledge ' no subject- subject-matter for the grant of letters patent. matter. Public" ' No particulars of the public knowledge need amntte/for* be given, though it is not unusual to state that the specifications and publications put forward as prior publications will be relied on to prove the state of public knowledge. Aspedfica- The specification of a prior patent is not Proof of evidence of much value as to prior public know- knowledge, ledge ; * it must be proved by ordinary evidence, as by that of persons engaged in the trade, but but books are well-known books may also be referred to.t evidence. , TIT Knowledge The knowledge of a particular man is not notpubhc 80n public knowledge, though it may be an antici- nowiedge. p a ^ on> | since even a single person must not be restrained by a patent from doing that which he was able to do before the date of the grant. single As evidence of common knowledge a defendant specification . , , . . , . may not be may not without having given notice, in his par- without ticulars of objections, of his intention so to do, NO notice refer to a single specification, though where publications several publications are relied on no reference is are referred . to. necessary. Hypothetical Sometimes objections (b), (e), (j), (k), and (1) objections. mav ^ e p ut j n a hypothetical form, " If the com- plete specification be construed so as to include the alleged infringement, then," &c. * Peckover v. Rowland, 1893, 10 R.P.C. 118. f Holliday v. Heppenstall, 1889, C.A., 6 R.P.C. 320. j Benno Jaffe Fabrik v. Richardson, 1894, 11 R.P.C. 102. English and American Machinery Co., Ltd., v. Union Boot and Shoe Machine Co., Ltd., 1894, C.A., 11 R.P.C. 367. CHAPTER XVIII. TRIAL OF A PATENT ACTION. IN the term patent action are included the what is a three kinds of action which have been already con- actfoli? sidered, viz. actions for infringement, actions for threats, and petitions for revocation. Although in these three kinds of action the one jm>ce- relations of the parties are entirely different, the patent" a procedure at trial is practically the same in all, ac and the three varieties can be conveniently con- sidered together. Any action for infringement may be put down Patent for trial at an assizes, and a petition for revocation be tri'ed'a? may be ordered to be tried at an assizes when AS that mode of trial appears to the Court to be con- venient. If set down for trial at an assizes, a patent action will be tried like any other action standing for trial at an assizes, and if in the Chancery Division it must not be sent back to the and must not judge of the Chancery Division because there is to be tried in no time to try it at the assizes ; it must be treated wautof time, as a remanet, or transferred to a neighbouring assizes.* * Fairburn v. Household, 1885, C.A., 2 R.P.C. 195. 12 178 LAW OF PATENTS. Infringe- ment. Threats. Issues in a Patent Action. Revocation. The simplest kind of patent action is a petition for revocation in which only two points can arise, viz. what is the invention claimed in the complete specification ? and is the patent for this invention a valid one ? In an action for infringement also the same two points arise, and there is the further question, has the defendant infringed ? In an action for threats there are the further questions, has the defendant threatened ? and if so, has he with due diligence commenced and prosecuted an action for infringement ? Construction of the Specification. The first question for the Court at the trial of any patent action is, what is the invention for which the patent is granted ? that is, what does the patentee claim in his complete specification ? Construction The construction of the specification is a law. matter of- law for the Court, but it differs some- what from that of any other document, since the Evidence on Court will hear the evidence of experts as to specification, what the specification means. Upon this subject Lord Chancellor Westbury in 1861 made the following statement : " It is undoubtedly true as a proposition of law that the con- struction of a specification, as the construction of all other written instruments, belongs to the Court ; but a specification of an invention contains most generally, if not always, some technical terms, some phrases of art, some processes, and re- quires generally the aid of the light derived from what are TRIAL OF A PATENT ACTION. 179 called surrounding circumstances. It is therefore an admitted rule of law that the explanation of the words or technical terras of art, the phrases used in commerce, and the proofs and results of the processes which are described (and in a chemical patent the ascertainment of chemical equivalents) that all these are matters of fact upon which evidence may be given, contra- dictory testimony may be deduced, and upon which undoubtedly it is the province, and the right of a jury to decide." * Notwithstanding that evidence may be required Construction to enable the Court to construe the specification, precedent. the construction is so far a matter of law that it forms a precedent, which is binding in any later action brought on the same patent. f In ascertaining what is the invention patented the claims must be looked at and construed as forming part of the specification, and must not be dealt with independently of what precedes them. Upon this subject Lord Esher, M.R., said : " As to the rule of construction of a patent, when the question is what is the true construction, I cannot doubt myself that the same rules of construction or the same canons of construction are to be applied to the construction of a patent or to any part of it as are used with regard to any other instrument. You must look at the whole of the specification, and then, having looked at the whole, if it is an objection to the claim, see what the claim on the true construction of it is, having regard to the whole of the instrument." J A specification is sometimes capable of bearing Ambiguity, more than one construction, and then it becomes * Hills v. Evans, 1862, 31 L. J.N.S.Ch. 460. f Edison and Swan v. Holland, C.A., 6 E.P.C. 243. J Edison Bell Phonograph Corporation, Ltd., v. Smith ar.d Young, 1894, C.A., 11 K.P.C. 395. 180 LAW OP PATENTS. a question for the Court which construction is to be preferred, seep. 9. The grant provides that the letters patent shall Benevolent r . , ~ . , construction be construed in the most beneficial sense for the ofspecifica- , . tion. advantage or the patentee, and it has been supposed that this means that the Court is to try and make out a meaning which will make the patent of the greatest benefit to the patentee. On this subject, which is called the beneficial construction of a patent, Jessel, M.R., in 1882, used the following language : Rule for " I have heard judges say, and I have read that other judges n ' have said, that there should be a benevolent interpretation of specifications. What does this mean ? I think, as I have ex- plained elsewhere, it means this : when the judges are con- vinced that there is a genuine, great, and important invention, which, as in some cases, one might almost say, produces a revo- lution in a given art or manufacture, the judges are not to be astute to find defects in the specification, but on the con- trary, if it is possible consistently with the ordinary rules of construction, to put such a construction on the patent as will support it. They are to prefer that construction to another which might possibly commend itself to their minds if the patent was of little worth and of very little importance. That has been carried out over and over again, not only by the Lord Chancellor on appeal, but by the House of Lords. There is, if I may say so, and I think there ought to be, a bias, as between Limit of rule two different constructions, in favour of the real improvement construction 1 an< * g enu i ne invention, to adopt that construction which supports an invention. Beyond that I think the rule ought not to go."* In a recent case in the Court of Appeal, Lord Justice Kay went somewhat further than this when he laid down the rule that * Otto v. Linford, 1882, C.A., 46 L.T. 39. TRIAL OP A PATENT ACTION. 181 " The Court will continue the specification so as to support the patent if it can fairly be done, and will not be astute to find flaws in small matters in a specification with a view to over- throw it. Where any expression is ambiguous the Court will endeavour to give effect to the intentions of the patentee."* Validity. When the meaning of the specification has been arrived at, the next question is whether the patent is a valid one. Now we have seen that if a A patent bad in one point patent be bad in one particular, it is altogether is j^ ad tl invalid ; so that the question of validity resolves itself into the question, has any one of the objections specified in the particulars been sus- tained ? These objections may involve the construction of the specification, or may be simple questions of fact, as of the sufficiency of the specification, or the utility or novelty of the invention ; but since a jury is now rarely employed in the trial of a patent action, these distinctions are not of any great importance. Probably the question of conformity of the Most objec. specifications would be a matter of law, which ^ tersof would, when determined form a precedent binding in subsequent trials ; but all the other objections seem to be matters of fact, which must be decided de novo at each trial. f * Edison Bell Phonograph Corporation, Limited, v. Smith, 1894, C.A., 11 R.P.C. 400. t Edison and Swan v. Holland, 1889, C.A., 6 R.P.C. 243, 182 LAW OF PATENTS. offact. Whether a thrr.it has been used. Infringement. n of whether the defendant has in- fringed is one entirely of fact, which would in a trial by jury be left to the jury. Threats. The question as to whether what was done by the defendant in an action for threats amounted to a threat seems to be one partly of law and partly of fact, and is dealt with in the chapter on Threats. Due Diligence. Whether the defendant in an action for threats brought an action with due diligence depends entirely on the circumstances of the case.* The Hearing of a Patent Action. The Act of 1883 provides that " In an action or proceeding for infringement or revoca- Sect.28(l). tiou of a patent the Court may, if it think fit, and shall on the request of either of the parties to the proceeding, Assessor may ca ll i n the aid of an assessor specially qualified, and try and hear for by either the case wholly or partially with his assistance. The action shall be tried without a jury unless the Court shall ottierwise direct." " The remuneration (if any) to be paid to an assessor under this section shall be determined by the Court, and be paid in the same manner as Act lass, the other expenses of the execution of this Act," that is out of money provided by Parliament. * Colley v. Hart, 1890, 7 R.P.C. 101. TRIAL OF A PATENT ACTION. 183 " In any action for infringement of a patent in Scotland the Act 1883, provisions of this Act, with respect to calling in the aid of an Trial in assessor, shall apply, and the action shall be tried without a Scotland - jury, unless the Court shall otherwise direct ; but otherwise nothing shall affect the jurisdiction and forms of process of the courts in Scotland in such an action, or in any action or proceeding respecting a patent hitherto competent to those courts. " For the purposes of this section ' court of appeal ' shall mean any court to which such action is appealed." It would certainly appear that this provision might more often be taken advantage of by suitors, and it would certainly very largely reduce the cost of a patent action ; the assessor appointed by the court would not entail any expense for the parties, and if an action were tried in this way there seems no reason why the expense of expert witnesses should not be almost if not entirely avoided. It would be a great boon to a poor plaintiff, to whom the proverbial cost of a patent action must often be a cause of great injustice. Notwithstanding its apparent beneficence this right to demand an assessor has but seldom been exercised. Whenever the validity of a patent is in issue Patentee the party defending the patent commences, and if any evidence of prior user of the invention be given he will be allowed to call evidence in reply. Since the person attacking a patent is tied down to his particulars of objections, the patentee really may almost be said to have to open his opponent's case, and to be compelled to prove that what is going to be brought against him is of no effect. commences. 184 LAW OF PATENTS. Title usually The title of the plaintiff in an action for in- admitted, . . . 11 -i -i i mngement is usually admitted by consent, as are the specifications and patents ; and in one case the ordefendants defendants, who refused to admit the plaintiff's pay costs of title, had to pay the costs of proving it. although proving it. f > ., , successful in the action.* Each party must of course carefully consider which points his evidence is to be directed towards, and upon this his choice of witnesses will depend. Expert It is very usual for both sides to call scientific witnesses are usually experts, who are really expert advocates or the cause they are called to support rather than wit- nesses, and it is generally supposed that such experts are not always strictly truthful : an ideal expert witness is a man who is unlikely to be en- trapped by the wiles of the opposing counsel into admitting anything which will injure the side on which he is called. witnesses The scientific witnesses generally have to pre- may make .,..'.-. experiments pare themselves specially for giving evidence, and for use as r J & . evidence. come prepared with accounts or experiments which they have made in the course of this pre- paration. A witness is not compelled to make a general disclosure of all his experiments, though of course, if asked about any particular experi- ment, he would have to answer as best he can. Models and When the subject of the patent is mechanical, each party usually produces models and drawings of what they consider that the specification de- scribes, and also of the alleged infringement ; Proof of models of any articles alleged to anticipate the anticipations * by model?, patent are usually produced, but it is of course * Vorwerlc and Son v. Evans and Co., 1890, 7 R.P.C, 174. TRIAL OF A PATENT ACTION. 185 advisable where practicable to have the actual articles produced in court, since this will avoid not only the expense of making models and draw- ings, but also the expense of proving their correctness, and the possibility of conflict of evi- dence as to what the articles really are. The Experts . 1111 11 ' -i should expert witnesses should be well acquainted with examine 11 i -t -i r- models, all the models, drawings, and specifications which drawings, .,...,' -j andpublica- it is intended to use in evidence. Besides scien- tions. tific experts it is often necessary or advisable to call trade witnesses to speak to the knowledge Trade possessed by the trade at the date of the patent, general -, ,, ,.,., ,, . ,. knowledge. and as to the utility 01 the invention. When the sufficiency of the specification is in Sufficiency 1 1, it. j.- proved by issue, workmen may be given the specification, workmen, and, without any further assistance, instructed to make what is described ; and then they may be called and asked to produce the result of their work. Some small points of evidence have already been dealt with in the chapter on Particulars of Objections. As a general rule all the issues in a patent when issues action are tried together ; the question of in- separate^, fringement will be tried separately only if the validity of the patent is admitted,* but where several instances of prior user are alleged, all the evidence on one will sometimes be taken before going into another.t If it is admitted that an alleged prior user, if proved, would be fatal to the patent, the defendant may be allowed to call * United Telephone Co. v. Mottishead, 1886, 3 R.P.C. 213. t Richardson v, Castrey, 1887, 4 R T P.C. 265. 186 LAW OF PATENTS. witnesses to prove such user before the rest of the case is gone into.* Plaintiff for I n order to be successful in an action for infringement must succeed infringement the plaintiff must be successful on on every -" point. every point. From this it follows that the defendant Defendant in needs to succeed on only a single point to be en- infnngement * must succeed titled to -judgment. on one point. . r Now it might happen that a plaintiff who was entitled to succeed on every other point was un- able to prove infringement; and the Court might say that since the defendant had succeeded on that ground, the other issues did not affect the result of the action, and need not be considered ; this would, however, be very hard on a patentee, whose chief attention had been devoted to the issue of validity so as to get the validity of his patent established ; since if the Court did not decide this issue, he would lose this advantage because he had failed in an entirely different direction. The same would apply equally to the decision of Court of an appeal, and to avoid this hardship the Court Appeal will decide on o f Appeal have decided that, even when an every point if required, appeal could be dismissed on one point, the parties have a right to have every issue decided between them, and that where two points have been argued at full length in the Court below and decided, the Court of Appeal will hear and give a decision on both points in order to decide the litigation as far as possible. f * Badham v. Bird, 1888, 5 R.P.C. 238. f Parkinson v. Simon, 1894, C.A., 11 R.P.C. 493. TEIAL OF A PATENT ACTION. 187 Shorthand Note. If the trial is likely to last more than one day, or if an appeal is at all probable, it is advisable to have a shorthand note of the evidence taken. The cost of this is very usually shared by the parties, but by agreement they may be made costs in the cause ; unless this latter course be adopted they will not be allowed on taxation as between party and party. CHAPTER XIX. JUDGMENT IN INFRINGEMENT ACTION. IP the plaintiff succeeds in an action for in- fringement he is entitled to judgment for Injunction. (1) " A perpetual injunction to restrain the defendant, his servants and agents, from infringing the letters patent during the remainder of the term." This may extend to restraining the sale after the patent has expired of articles made during the term of the patent.* If the patent has expired, an injunction will be required only when the de- fendant has made a number of articles before the expiration of the patent for sale afterwards. Damages or (2) " Damages or an account of the profits made by the an account of ,,.,,,, 11 j: f n profits. defendant through his infringements. The plaintiff must choose one or the other alternative, he cannot have both,f and it is often very difficult to see which is likely to bring him the largest amount, since the damage suffered by the plaintiff is an entirely different matter from the profits made by the defendant. If the plaintiff chooses to have damages, they may be assessed by the Court, or possibly the * Crossley v. Beverley, 1829, 1 R. & M. 166 n., 1 W.P.C. 106. f De Vitre v. Betts, 1873, L.R., 6 H.L. 319 ; 21 W.R. 705 ; Siddell v. Vickers, 1892, 9 R.P.C. 162, JUDGMENT IN INFRINGEMENT ACTION. 189 plaintiff may he entitled to apply at the trial to have them assessed by a jury ;* but as a rule the Court orders an inquiry to be taken of the amount of the damage suffered by the plaintiff, and the judgment will be for the amount so found. When the plaintiff is a manufacturer, the usual measure of damages is the total profit the Measure of 1 r damages. plaintiff would have made if he had supplied the infringing articles himself ; f but where an article is made partly by infringing and partly by other machinery the damages may be less than if the whole of the machinery was made in infringement to the plaintiff's patent rights. J When a complete article consists partly of a patented and partly of an unpatented part, and the parts are separate and obtainable separately, allowance should be made in respect of the unpatented part. Where the plaintiff would, but for the defend- where ant's competition, have had a practical monopoly migrant e of manufacture of the patented article, loss to the plaintiffs caused by their having to lower Lowering of their prices owing to competition by the defendant considered. e may be taken into account. || As a general rule, a patentee can rightly claim * American Braided Wire v. Thomson, 1888, C.A., 5 R.P.C. 696. f Boyd v. The Tootal Broadhurst Lee Co., Ltd., 1894, 11 K.P.C. 175. J United Horse Nail Co. v. Stewart and Co., 1887, 4 R.P.C. 130, 13 App. Cas. 401. United Telephone v. Walker, 1887, 4 R.P.C. 63. || The American Braided Wire Co. v. Thomson and Co., 1890, C.A., 7 R.P.C. 152. 190 LAW OP PATENTS. Litigation may increase amount claimed, except when licenses are granted to all on fixed terms. Damages from pur- chaser and from manu- facturer. Account of profits in lieu of damages. Costs of account. Account of profits often advisable. from an infringer who litigates more than he would be prepared to accept from a licensee,* but when a patentee both manufactures himself and licenses others on fixed terms, he can recover in dam- ages only the amount which he would have re- ceived for royalties ; and, if he has accepted this amount as royalty from the users of infringing machines, he cannot recover anything as damages from the manufacturers. t On the other hand, the fact that damages have been recovered against the manufacturer of in- fringing goods does not affect the amount of damages recoverable against a purchaser from him.J Instead of claiming damages the plaintiff may in a way adopt the acts of the defendant as those of his agent, and make the defendant account to him for all the profits which he has made by his infringements. In this case the Court will order an account to be taken, and as a general rule there will be judgment for the amount of profit so found together with the costs of taking the account ; but if it seems probable that the amount found due on taking an account will be trifling the costs may be left to the discretion of the referee to whom the taking of the account is entrusted. It is often to the patentee's advantage to adopt this course, since the profit direct and indirect * Perm v. Bibby, 1866, L.R. 3 Eq. 308. f Penn v. Jack, 1867, L.R. 5 Eq. 81. J United Telephone v. Walker, 1887, 4 R.P.C. 63. Sbaw v. Jones, 1889, 6 R.P.C. 328. JUDGMENT IN INFRINGEMENT ACTION. 191 made by the defendant may be much in excess of any damage which the plaintiff has suffered ; indeed, the profits may be considerable when the damage is practically nil. When the defendant both manufactures and sells the infringing articles, there is not, as a rule, much difficulty in ascertaining his profits. When the infringement is by user of an in- fringing machine only, the proper course is to compare the profits arising when the infringing machine is used with those which would have resulted had the infringement not taken place.* Of course, where no other machine would do the work of the patented machine the plaintiff is entitled to the whole profit made by its use ; but when the work could be done in other ways the plaintiff is entitled only to the increased profit arising from the use of his invention over what the defendants would have made if they had used what they could use in the absence of the plaintiff's invention. When the infringing machine has been intro- duced into an existing manufacture the de- fendants must disclose their profits before and after its introduction, t Whether damages or profits be chosen the defendant must make a full disclosure of all the articles made or sold, and of the prices obtained ; he must also disclose the names and addresses of purchasers of infringing machines. J * Siddell v. Vickers, 1892, C.A , 9 R.P.C. 152. f Siddell v. Vickers, 1889, 6 R.P.C. 464. J Murray v. Clayton, 1872, L.R., 15 Eq. 115. 192 LAW OF PATENTS. When an account of profits is taken, the amount found due is not due by way of damages, but rather as money had and received for the use of the plaintiff ; and when an infringer is bank- rupt a patentee may prove in the bankruptcy for profits which he is entitled to recover from the infringer.* The Court may also order (3) " The delivery up on oath by the defendant to the plaintiff, or the destruction of all infringing machines in the defendant's possession." The value of infringing machines so ordered to be given up must not be considered in assess- ing the damages, or set off against the amount awarded for damages. f When part only of a machine infringes, the infringing parts only need be delivered up.J Instead of being delivered up, the infringing articles are sometimes ordered to be marked so as to prevent their being sold by the defendant. * Watson v. Holliday, 1882, 20 Ch.D. 780. f United Telephone v. Walker, 1887, 4 R.P.C. 63. J Edison Bell Phonograph Corporation, Ltd., v. Smith and Young, 1894, C.A., 11 R.P.C. 389. Westinghouse v. Lancashire Rail Co., 1884, 1 R.P.C. 253. CHAPTER XX. CERTIFICATE OP VALIDITY. THE Act of 1883 provides that " In an action for infringement of a patent, the Court or a Sect. 31. judge may certify that the validity of the patent came in ^'fficate of question ; and if the Court or judge so certifies, then, in any validity on subsequent action for infringement, the plaintiff in that action, on obtaining a final order or judgment in his favour, shall have his full costs, charges, and expenses, as between solicitor and client, unless the Court or judge trying the action certifies that he ought not to have the same." This shows that it is a very great advantage to Advantage . of having a a patentee to win an action on his patent, and get certificate. a certificate of validity, since he is then in a position of great advantage as against all other infringers. It will be noticed that the section applies only NO certificate to an action for infringement, and it is doubtful threats " ' whether a valid certificate can be given in an action for threats.* As a general rule, where a certificate of validity Oniyone . .,. . / certificate of has been given, a second one will not be given in validity granted. a subsequent action;! but if the grounds' on * Crampton v. The Patents Investment Co., Limited, 1888, 5 R.P.C. 404. f Edison and Swan Electric Light Co. v. Holland, 1880, C.A., 6 R.P.C. 287. 13 194 LAW OP PATENTS. which validity was disputed in the second action were substantially different from those which had failed in the first action, a second certificate may be granted.* Grant of The srranting or withholding of a certificate of certificate ,.,... , , . . r , /-. not appeal- validity is in the discretion ot the Uonrt or judge, and from it there is no appeal. f Validity In order to obtain a certificate of validity it is upheld. not necessary that the validity should be upheld by the Court ; it may be equally given when the Validity need patent is declared invalid.J Nor is it necessary decided. that the question of validity should be decided at all. A certificate can be given when after a contest the parties come to terms of settlement, and it may be a term of settlement that a certifi- cate should be applied for. Certificate A certificate has been granted even when the defendant validity was not contested in court, when the issue appear. had been raised in the defence, but the defen- dant failed to appear at the trial to support it. || what actions The rule as to costs applies only to a subse- by certificate ouentaction, that is, to an action commenced after of validity. ~* ._ . _. . ,. , the certificate is given :"| it applies even where in the subsequent action the validity is not put in question ;** but when the defendant admitted in- * Otto v. Steel, 1886, 3 R.P.C. 120. f Haslam v. Hall, 1888, C.A., 5 R.P.C. 144. t Ibid., 1888, 5 R.P.C. 27. Delta Metal v. Maxim NordenfeltCo., 1891, 8 R.P.C. 247. || Haydock v. Bradbury, 1887, 4 R.P.C. 74 ; Edison Bell Phonograph . Edison Phonograph, 1894, 11 R.P.C. 33. ^[ Automatic Weighing v. International Hygienic Soc., 1889, 6 R.P.C. 480. ** United Telephone v. Patterson, 1889, 6 R.P.C. 140. CERTIFICATE OP VALIDITY. 195 fringeinent, and did not dispute validity, but had when only offered the plaintiff less than the amount of the amount of judgment, which was for less than the amount claimed, the plaintiff was not allowed his full costs. * The rule as to costs applies unless the Court or Rule as to the judge trying the action certifies that it ought unless it is not to apply ; so that whenever the plaintiff having otherwise. a certificate of validity is successful, application should be made to the judge on behalf of the de- fendant for a certificate to deprive the plaintiff of solicitor and client costs. When he has obtained a certificate of validity, the plaintiff should in any subsequent action give the defendant notice of the Notjceof ,. ,...,.,. , ., , , . . . certificate of tact, as it is likely to have considerable weight in validity . , . v -i. ii i 8hould be inducing a submission ; it is as well also to given. mention it in the statement of claim, and to claim costs as between solicitor and client. * Boyd v. The Tootal Broadhurst Lee Co., Limited, 1894, 11 R.P.C. 185 (Lane. Ct. case). CHAPTER XXI. COSTS. 11 IN an action for infringement or threats, and in action follow event. a petition for revocation, the successful party is, unless deprived thereof by the judge, entitled to the general costs of the action or petition. S?, t . 8 . ,L t Where, however, there are several issues to be issues nirty * * beaetoff. decided, the costs of each separate issue may, if separable from the general costs of the action, be made to follow the event of the issue, and be set off against the costs awarded to the other party. Thus a plaintiff unsuccessful in the action, but P r ving infringement, will be allowed the costs of off - that issue ;* but this is only true when that issue can be distinguished from the rest of the case.f - The Court of Appeal has laid down that " There can be no infringement of a bad patent. If a man brings an action upon a patent which is bad, but is put to heaps of costs with reference to some part of the case, and certain issues which are unnecessary, by the defendant, we may apportion the costs and give the plaintiff the costs of those issues without infringement, because those costs have been im- properly and unnecessarily incurred." J Badische Anilin Fabrik v. Levinstein, 1885, C.A., 2 R.P.C. 143 ; 29 Ch. D. 420. t Guilbert-Martin v. Kerr, 1887, 4 R.P.C. 18. 1 Blakey & Co. v. Latham & Co., 1889, C.A., 6 R.P.C. 190. COSTS. 197 In this case the plaintiff was refused the costs of the issue of infringement. Where the defendants were successful on in- when costs fringement, but had pleaded that if they had issues^et off. infringed, the patent was bad, and the question of validity was not fought out, the plaintiffs were given the costs of all issues but that of infringement.* " On taxation of costs regard shall be had to the particulars costs of delivered by the plaintiff and by the defendant ; and they i^m'" 8 ' respectively shall not be allowed any costs in respect of any sect 29 (6). 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." In consequence of this it is necessary that Certificate both the plaintiff and defendant should ask the particulars judge at the trial to certify that their particulars always be are reasonable and proper, or if proved, that they ap have been proved ; but where the defendant is not called on to prove any particulars of objec- tions, the judge will probably refuse a certificate as to their being reasonable and proper. t On account of this the plaintiff may sometimes costs of be able to deprive the defendant of the costs of objections 8 his particulars of objections by submitting at the u dUmlsse trial to having the action dismissed without his being heard. It was in one such case suggested that the question of costs, and of the certificate as to the particulars of objections, should be reserved until * Tweedale v. Ashworth, 1892, H.L., 9 R.P.C. 121. t Newsum v. Mann, 1890, 7 R.P.C. 310. 198 LAW OF PATENTS. the matter had been before the Taxing Master ;* but it was afterwards decided that as no certifi- cate had been given by the judge at the trial, no costs of the particulars of objections could be allowed.f Cost of It appears, therefore, that if a defendant who particulars . cannot be is successful at the trial of the action does not given after- . . wards. obtain his certificate at once, the omission cannot be afterwards made good. Certificate The iudge sometimes gives a certificate as to as to some ~ particulars some only of the particulars of omections : only may be . ' * given. and judges have frequently complained of the insertion of particulars which are really not applicable to the case, but are put in as general forms. where action Ju a case in the County Palatine Court of discontinued. . -i i i , . Lancaster it was said that where the plaintiff discontinued the action after the delivery of particulars of objections the Taxing Master should decide which particulars were reasonable, J but it has been now decided by the High Court that the operation of the rule as to costs of particulars is not confined to cases in which an action is brought to trial, so that when the plaintiff discontinues after delivery of the defence the defendant has to bear the cost of the parti- culars of objections. Court of If the defendant fails at the trial, he does not Appeal can _ ' t givecertifi- require any certificate as to his particulars, since * Mandleberg v. Morley, 1894, 11 R.P.C. 1. f Mandleberg v. Morley, 1895, 12 R.P.C. 35. j Rothwell v. King, 1887, 4 R.P.C. 397 (Lane. Ct. case). Middleton v. Bradley, 1895, W.N. 123 (7). COSTS. 199 he must have failed on every issue ; but if he appeals against tlie judgment, and the Court of Appeal reverse the decision of the Court below, they can give a certificate that the particulars of objections are reasonable and proper.* Scale of Costs. The costs usually given in a patent action are the ordinary party and party costs, although the actual costs are probably, as a rule, far heavier than those of an ordinary action. It is an almost universal rule, and in many cases it is almost necessary, to have a shorthand note of the evidence taken, but the costs thereof will not be allowed Costs of shorthand to the successful party unless they have by agree- notes not ment been made costs in the cause. In case of an Note of judgment appeal the Court of Appeal will allow the costs of allowed on 1 i . . appeal. a shorthand note and transcription of the judg- ment, but not of the evidence. Although the preparation of any patent action for trial probably involves more work and more expense than that of an ordinary action, it is very rarely that costs are given on the higher scale: the rule is that Costs on t higher scale only ordinary costs shall be given, except in a vef y rare - case of unusual difficulty and skill antiquarian research and things of that kind,t -not usually experienced in a patent action. It is very seldom that the costs of three counsel Cost of J counsel not allowed. * Cole v. Saqui, 1889, C.A., 6 E.P.C. 41 ; 40 Ch. D. 132. f Gadd v. Mayor, &c., of Manchester, 1892, O.A., 9 E.P.C. 535. 200 LAW OP PATENTS. Scale of casts is wholly inadequate, and often cause of injustice. will be allowed ; a third counsel, even in a long and intricate case, is usually treated as a luxury, for which the party retaining him must pay in any event. It seems rather hard that the ordinary scale of costs, inadequate in any kind of action, should be so rigidly adhered to in a class of action in which the expense incurred is necessarily very heavy ; it is impossible to get efficient witnesses for the meagre fees allowed on taxation, and the preparation of a case for trial often necessitates long and expensive consultations, for which no allowance at all is made. The result is that both parties often feel that it will be less onerous for them to put up with injustice than to enforce what they believe to be their just rights ; the patentee allows infringement to pass unchecked, or accepts a lower royalty than he feels that he is entitled to, and the manufacturer pays royalties under what he believes to be an invalid patent, because each fears the unknown volume of extra costs which he will have to pay even if he is completely success- ful in asserting his rights. CHAPTER XXII. EXTENSION OP TERM OP LET TE KS PATENT. IT has been seen that by the Statute of Lira i- The fourteen . I'-ii P years limit is tations the time for which letters patent tor an sometimes ,,,,.., found too invention could be granted was absolutely limited short. to fourteen years ; and this is so far still the limit that every patent is now granted for that term. It was found, however, that in some cases the term of fourteen years was not long enough to enable an inventor to get his invention introduced and to obtain a proper reward for his labour, and so in special cases Parliament extended the limit Extension was by of time beyond the fourteen years. To attain this special Act. object a special Act of Parliament was formerly required, but it was thought better to simplify the process, and to allow the Crown to extend the Extension term of a patent upon a report of the Judicial council n mi -r /~i MI i when remu- Committee or the Privy Council that the patentee nerationis has been inadequately remunerated by his patent. This is the only ground upon which a patent Grounds for may be extended ; and in order to obtain an term, extension the patentee will have to show that his invention was one of unusual merit, and that, through no fault of his, he has failed to secure proper remuneration, but not necessarily that if 202 LAW OF PATENTS. the term be extended he will probably be able to do so.* Extension as A petition may be presented and an extension to part of - , , patent. of the patent may be granted for part only of the invention originally protected. f Procedure for obtaining Extension. " -^ patentee may, after advertising in manner directed by an y 1 " u ^ es ma de under this section his intention to do so, sect. 25 (l). present a petition to Her Majesty in Council, praying that his patent may be extended for a further term ; but such petition must be presented at least six months before the time limited for the expiration of the patent." The limit of time applies only to patents granted under the Acts now in force, and a petition for the extension of a patent granted prior to the Act of 1883 may be presented at any time before its expiration. J A patentee here means a person for the time being entitled to the benefit of the patent ; and it is only such a person who may present a petition for extension. If the petitioner be an assignee he must prove his title strictly ; but there is no objection to an extension being granted to an assignee, whether a private person or a public company. || * Jones' Patent, 1840, 1 W.P.C. 579. t Bodmer's Patent, 1853, 8 Moo. P.C.C. 282 ; Lee's Patent, 1856, 10 Moo. P.C.C. 226 ; Napier's Patent, 1881, L.R., 6 App. Cas. 174. J Brandon's Patent, 1884, 1 R.P.C. 154. Galloway's Patent, 1843, 1 W.P.C. 725. || Houghton's Patent, 1871, L.R., 3 P.C., 461. EXTENSION OP TERM OF LETTERS PATENT. 203 Where a patent is mortgaged the patentee will be required to extend the mortgage so as to cover the extended patent.* There does not appear to have been any case in A joint which one of several joint patentees has presented probably a petition for extension without joining his co- alone, patentees, but there seems no reason, provided he can show what profits they have made, why such a petition would not be properly presented, and an extension granted to such joint patentee with due provision for preserving the rights of his co- patentees. When a patent has been once extended, no further extension can be granted. f In a petition for extension the petitioner must not withhold anything which is material ; the com- mittee require that uberrima fides shall be shown by him, since the grant of an extension is entirely a matter of grace ; and if the committee find that any material fact has been suppressed, they will dismiss the petition, f The Act of 1883 provides that Actisss, sect. 25 (6). "It shall be lawful for Her Majesty in Council to make, Rules for from time to time, rules of procedure and practice for regu- lating proceedings on such petitions, and subject thereto such proceedings shall be regulated according to the existing proce- dure and practice in patent matters of the Judicial Committee." No rules have as yet been made under this section, and consequently the rules made under * Church's Patents, 1886, 3 R.P.C. 95. f Goucher's Patent, 1865, 2 Moo. P.C.C. N.S. 532. j Horsey 's Patent, 1881, 1 R.P.C. 225; Clark's Patent, 1870, L.R., 3 P.C. 421. 204 LAW OP PATENTS. the repealed Act of 1835 are those by which proceedings on petitions for extension are now regulated. They are as 'follows : [Rules to be observed in proceedings for the extension of the term of letters patent before the Judicial Committee of the Privy Council under the Act of 5 & 6 Will. IV, c. 83 (repealed), intituled " An Act to amend the Law touching Letters Patent for Inventions."] Notice by " 1- A party intending to apply by petition under section 2 of nfenYo'f 6 " ^ e SJ "^ ^ c ^ s ^ & ^ s' ive> public notice by advertising in the intention to ' London Gazette ' three times and in three London papers, and petftlon. three times in some country papers published in the town where or near to which he carries on any manufacture of anything made according to his specification, or near to or in which he resides in case he carries on no such manufacture, or published in the county where he carries on such manufacture or where he lives, in case there shall not be any paper published in such town, that he intends to petition His Majesty under the said section, and shall in such advertisements state the object of such petition, and give notice of the day on which he intends to apply for a time to be fixed for hearing the matter of his peti- tion (which day shall not be less than four weeks from th0 date of the publication of the last of the advertisements to be in- sorted in the ' London Gazette '), and that on or before such day notice must be given of any opposition intended to be made to the petition ; and any person intending to oppose the said appli- cation shall lodge notice to that effect at the Council Office on or before such day so named in the said advertisement, and having lodged such notice shall be entitled to have from the petitioner four weeks' notice of the time appointed for the hearing." Rule 1 applies only to petitions for confirmation of a patent which are now practically obsolete, but the advertisements directed are the same as those directed in section 4 of the Act which relates to petitions for extension. "2. A party intending to apply by petition under section 4 EXTENSION OF TERM OP LETTEES PATENT. 205 of the said Act shall, in the advertisements directed to be published by the said section, give notice of the day on which he intends to apply for a time to be fixed for hearing the matter of his petition (which day shall not be less than four weeks from the date of the publication of the last of the advertisements to be inserted in the ' London Gazette ') ; and that on or before such day caveats must be entered, and any person intending to enter a caveat shall enter the same at the Council Office on or before such day so named in the said advertisements, and having entered such caveat shall be entitled to have from the petitioner four weeks' notice of the time appointed for the hearing. " 3. Petitions under Sections 2 and 4 of the said Act must be Time for presented within one week from the insertion of the last of P eUtlon - the advertisements required to be published in the ' London Gazette.' " 4. All petitions must be accompanied with affidavits of Affidavits as advertisements having been inserted according to the provisions | e l J 1 < Jg ertlse ~ Section 4 of the said Act, and the first and second of these rules and the matters in such affidavits may be disputed by the parties opposing upon the hearing of the petitions. " 5. All persons entering caveats under Section 4 of the said Persons Act, shall respectively be entitled to be served with copies of 8 ! " r ; y t e 1 |j' 1 to be petitions presented under the said section, and no application to fix a time for hearing shall be made without affidavit of such service. " 6. All parties served with petitions shall lodge at the Notice of Council Office within a fortnight after such service notice of the grounds of their objections to the granting of the prayers of such petitions. " 7. Parties may have copies of all papers lodged in respect Copies of of any application under the said Act, at their own expense. document*. " 8. The Registrar of the Privy Council or other officer to Taxation of whom it may be referred to tax the costs incurred in the matter costs> of any petition presented under the said Act shall allow or dis- allow, in his discretion, all payments made to persons of science or skill examined as witnesses to matters of opinion chiefly. " 9. A party applying for an extension of a patent, under sec- Papers tion 4 of the said Act, must lodge at the Council Office six printed p^yy" Council. 206 LAW OF PATENTS. Time for leaving papers. Crown may oppose petition. copies of the specification, and also four copies of the balance- sheet of expenditure and receipts relating to the patent in ques- tion, which accounts are to be proved on oath before the Lords of the Committee at the hearing. In the event of the appli- cant's specification not having been printed, and if the expense of making six copies of any drawing therein contained or re- ferred 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 appli- cation made under either the second or fourth section of the said Act in case it shall be thought fit to oppose the same on such behalf." It will be seen that the advertisement must give notice that any person may lodge a caveat against the petition within a certain time, and the Act provides that " Any person may enter a caveat addressed to the Registrar of the Council at the Council Office, against the extension." A caveat must be lodged in the name of the actual objector, not in that of a patent agent for him.* " If Her Majesty shall be pleased to refer any such petition to the Judicial Committee of the Privy Council, the said com- mittee shall proceed to consider the same, and the petitioner and any person who has entered a caveat shall be entitled to be heard by himself or by counsel on the petition." As a rule not more than two counsel will be heard on behalf of any party entitled to be heard. Grounds for " The Judicial Committee shall, in considering their decision, Sect 8l $>5 (4). have regard to the nature and merits of the invention in * Lowe's Patent, 1852, 8 Moo. P.C.C. 1. Caveats. Act 1883, sect. 25 (2). Who will be heard on petition. Act 1883, sect. 25 (3). EXTENSION OP TERM OP LETTERS PATENT. 207 relation to the public, to the profits made by the patentee as such, and to all the circumstances of the case." The first thing which the Judicial Committee Accountg look at is the profit made by the patentee, and it perfect, is most essential that the accounts filed should be as perfect as possible. The accounts should on the one side show all receipts in connection with the patent, and on the other all the expenditure, and in the latter may be included the cost of legal proceedings, the cost of the patent and of experiments, and the expense of bringing the invention into use.* The accounts of the original patentee must of Profits of course be filed, and if he has sold his patent to a working company for cash and shares, the accounts must pa show the profits made by the company. f The accounts must of course show all royalties re- ceived from licensees under the patent, and if there be a free licensee, the profits made by Profits of him compared with those made by royalty- paying licensees should be shown in the account,! and manufacturer's profit cannot be distinguished from patentee's pi*ofit. The ground for granting an extension being want of proper remuneration for the invention, the patentee must show what Profitgof remuneration he has received for the invention for . ei s. n patents must independently of the English patent. For this be stated - purpose, if there be any foreign patents, accounts * Galloway's Patent, 1843, 1 W.P.C. 725. t Deacon's Patents, 1887, 4 E.P.C. 119. J Thomas's Patents, 1892, 9 R.P.C. 367. Muntz's Patents, 1846, 2 W.P.C. 121 ; Duncan and Wilson's Patents, 1884, 1 R.P.C. 257 ; Saxby's Patent, 1870, L.R , 3 P.C. 292. 208 LAW OF PATENTS. Remunera- tion for patentee's time. of the profits in respect of them should be sub- mitted to the Judicial Committee.* If proper accounts are not filed in time, an adjournment will not be granted ;t and if the accounts are not clear, evidence to explain them will not be allowed, but the petition will be dis- missed with costs.J When there is any profit, the utmost accuracy is necessary ; but when the accounts show a heavy loss, extreme accuracy is not required. In estimating the patentee's profits the Judicial Committee will, where he has been personally engaged in developing his invention, and in super- intending the manufacture of goods under it, make an allowance out of the net amount rr- ceived by him for remuneration for the time so expended by him.|| Thus, even when the patentee has received considerably more than a fair return for capital expended by him, he may be able to show that most of the balance would be absorbed in paying him at a fair rate for work done after the patent was granted.^ In order to have a primd facie case for ex- tension the remuneration must appear to be decidedly inadequate ; and where large profits are * Newton's Patents, 1884, 9 App. Cas. 592, 1 R.P.C. 177 ; Johnson's Patent, 1871, L.R., 4 P.C. 76. f Yates and Kellett's Patent, 1887, 4 R.P.C. 150. j Lake's Patent, 1891, 8 R.P.C. 227. Darby's Patent, 1891, 8 R.P.C. 380. || Joy's Patent, 1893, 10 R.P.C. 89 ; Carr's Patent, 1873, L.R., 4 P.C. 539 ; Perkin's Patent, 1845, 2 W.P.C. 17. f Li vet's Patent, 1892, 9 R.P.C. 332; Hazeland's Patent, 1894, 11 R.P.C. 467. EXTENSION OP TERM OF LETTERS PATENT. 209 shown the Judicial Committee will not go into the question of merit.* When the accounts show that the patentee has when merits . . f^, are con ~ not made very large profits the Judicial Com- sidered mittee will proceed to examine into the merits of the invention and into the other circumstances of the case. For this purpose the Judicial Committee Jjf,j d> assume that the patent is a valid one,t even though it may have been declared invalid in a court of first instance, against the judgment of which an appeal is pending. \ Although the general question of validity will not be considered, evidence of anticipation by patents and by actual user is admissible. In order to obtain prolongation the petitioner Exceptional 1 ' r merit must must show that there is exceptional merit in the besllown - invention, || and when a reasonable profit has resulted the committee will consider whether the benefit to the patentee is commensurate with that to the public. ^[ If the patentee has not made any profit from the patent, the only questions for the Judicial Com- mittee to consider are those of the merit of the invention and the conduct of the patentee. The patentee will also have to show that there utility must is some considerable usefulness to the public** in * Houghton's Patent, 1871, L.R., 3 P.C. 461. f Heath's Patent, 1853, 2 W.P C. 247; Hill's Patent, 1863, 1 Moo. P.C.C., N.S. 258. I Lane Fox's Patent, 1892, 9 E.P.C. 411. Duncan Stewart's Patent, 1885, 3 E.P.C. 7. || Beanland's Patent, 1887, 4 R.P.C. 489. 1 Derosne's Patent, 1844, 2 W.P.C. 1. ** Woodcroffs Patent, 1846, 2 W.P.C. 31. 14 210 LAW OP PATKNTS. the invention, and on the question of utility the fact that the invention has not been brought into extensive public use might lead the Judicial Com- mittee to infer that it was not useful ;* to remove this inference the patentee should be prepared to show that the invention is not from its nature easily brought into public use.f invention As a rule, if the invention has not been brought not brought . into use. into public use at all, this fact will go very strongly against any extension being granted, since the inference is that if not used for four- teen years the invention cannot be of any value. ; Extension of If, however, the patentee can show that the patent not . . . IT-T T-I-T brought inio invention is ot such limited applicability that it has hardly had a fair chance of being used, and that there is every prospect that if the term be extended it will get into use, the Judicial Com- mittee may grant the extension. The consideration of utility by the Judicial Committee is not at all connected with validity ; the following quotation will make this clear : Utility " Their Lordships do not propose in this case to go into any considered l r . J in relation to question with reference to the novelty or utility of this inven- tion. In point of fact, it is not the practice of this tribunal to decide upon the novelty or utility of a patent ; and although * Simister's Patent, 1842, 1 W.P.C. 723 ; Napier's Patent, 1861, 13 Moo. P.C.C. 543. f Semet and Solway's Patent, 1895, A.C. 78, 12 R.P.C. 10. J Wright's Patent, 1839, 1 W.P.C. 576; Roper's Patent, 1887, 4 R.P.C. 201 ; Allan's Patent, 1867, L.R., 1 P.C. 507. Roper's Patent, 1887, 4 R.P.C. 201; Stoney's Patent, 1888, 5 R.P.C. 518; Southby's Patent, 1891, 8 R.P.C. 433; Bakewell's Patent, 1852, 15 Moo. P.C.C. 385. EXTENSION OF TERM OF LETTERS PATENT. 211 they would of course abstain in any case from prolonging a patent which was manifestly bad, yet, in one point of view, they are in the habit, in taking into account that which may be termed the question of utility, to consider not that amount of utility which would be necessary to support a patent, but that kind of utility which might more properly be described as merit."* The Judicial Committee must also consider all the circumstances of the case, and in this con- nection they will look at what the patentee has done in endeavouring to get the patent worked. It will afo against him if he has slept on his rights Effect of , , ,- -,1 i n unchecked tor a long time, either by allowing infringements infringe- to go unchecked, or by not endeavouring to get the invention worked till a large part of his time had expired. t An agreement giving one party an exclusive Effect 9f right to use the invention will be treated with license, disfavour ;J and if an extension be granted, an exclusive licensee may be required to renounce all claim under his license before the extension is registered. When there are foreign patents, whether Lapsed granted before or after the English patent, the patents do fact that they have lapsed does not affect the dis- extension, cretion of the Judicial Committee in recommending an extension; || but if, at the date of the application for a patent in this country, the invention was well * Saxby's Patent, L.K., 1870, 3 P.O. 294; Cockling's Patent, 1885, 2 K.P.C. 151. t Pettit Smith's Patent, 1850, 7 Moo. P.C.C. 133. J Darby's Patent, 1891, 8 R.P.C. 384. Shone's Patent, 1892, 9 R.P.C. 438. || Semet and Solway's Patent [1895], A.C. 78. 212 LAW OF PATENTS. known abi'oad, the importer is unlikely to obtain any extension.* Act 1883, " If the Judicial Committee report that the patentee has been How patent inadequately remunerated by his patent, it shall be lawful for is extended. jj er Majesty in Council to extend the term of the patent for a further term not exceeding seven, or in exceptional cases four- teen years ; or to order the grant of a new patent for the term therein mentioned, and containing any restrictions, conditions, and provisions that the Judicial Committee may think fit." When the extension is granted to some party other than the original patentee, the Judicial Committee sometimes make it a condition that some benefit should be reserved to himf or to his family,^ unless he has been already remunerated. It is not unusual to impose terms as to the granting of licenses to any persons who may care to apply for them, || and to make other conditions for the working of the patent, so as to protect the public and parties other than the patentee from hardship or injustice.^ Assessor may " The Judicial Committee of the Privy Council may, if they Actress m see fit, in any proceeding before them, call in the aid of an Sect. 28 (2). assessor. " The remuneration, if any, to be paid to an assessor under this section shall be determined by the Judicial Committee, and be paid in the same manner as the other expenses of the execution of this Act." * Claridge's Patent, 1851, 7 Moo. P.C.C. 394. f Hardy's Patent, 1849, 6 Moo. P.C.C. 441. J Herbert's Patent, 1867, L.R., 1 P.C. 399. Bodmer's Patent, 1849, 6 Moo. P.C.C. 468. || Lyon's Patent, 1894, 11 R.P.C. 537; Mallet's Patent, 1866, L.B., 1 P.C. 308. ^ Normandy's Patent, 1855, 9 Moo. P.C.C. 452. EXTENSION OP TERM OF LETTERS PATENT. 213 " The costs of all parties of and incident to such proceedings Costs shall be in the discretion of the Judicial Committee ; and the orders of the committee respecting costs shall be enforceable as if they were orders of a division of the High Court of Justice." No rule can be laid down as to costs in petitions for extension ; in each case the Judicial Committee will consider all the circumstances of the case, and one case is no guide to what will be done in another. If the petition is abandoned the peti- tioner will have to pay the opponent's costs. * Council Office Fees. ON PETITIONS TO THE QUEEN IN COUNCIL. s. d. Entering . . .... .110 Setting down petition . . . . . 10 Summons . . . . . . . 10 Committee Report . . ,.' . 1 10 Order of Her Majesty in Council . .326 Committee Order 1 12 6 Lodging affidavit 110 Lodging petition 110 Searching books for information for parties 10 Committee references 220 Lodging caveat 110 Subpoena to witness 10 Fee for taxation petitions . . . .110 * Morgan Brown's Patent, 1886, 3 R.P.C. 212. CHAPTER XXIII. OFFENCES. Actl 883, "(1) ANY person who represents that any article sold by Penalty on him is a patented article, when no patent has been granted for presenting ^he same > shall be liable for every offence on summary conviction articles to be to a fine not exceeding five pounds. " (2) A person shall be deemed, for the purposes of this enact- ment, to represent that an article is patented if he sells the article with the word ' patent,' ' patented,' or any word or words expressing or implying that a patent has been obtained for the article stamped, engraved, or impressed on, or otherwise applied to the article. to sed ent LM ^ a P a ^ en ^ nas been granted, but has lapsed before the time at which the representation is made, this will be sufficient to avoid the penalty.* Act 1883, " If any person makes or causes to be made a false entry in Fafsificaiion anv re o^ s ^ er k g pt under this Act, or a writing falsely purporting of register, to be a copy 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." Using the " After the 1st day of July, 1889, a person shall not be en- patenf azent titled to describe himself as a patent agent, whether by adver- Act 1888, tisement, by description on his place of business, by any docu- ment issued by him, or otherwise, unless he is registered as a patent agent in pursuance of this Act." * Myers v. Baker, 1858, 3 H. &N. 802; Cheavin v. Walker, 1876, 5 Ch. D. 850 ; The Leather Cloth Co. v. The American Cloth Co., 1865, 11 H.L.C. 523. OFFENCES. 215 " If any person knowingly describes himself as a patent agent Sect. 1 (4). in contravention of this section, he shall be liable on summary conviction to a fine not exceeding 20." A person applying for a patent as agent for another does not thereby describe himself as a patent agent.* " In Scotland any offence under this Act declared to be Act 1883, punishable on summary conviction may be prosecuted in the summary Sheriff Court." proceedings in Scotland. " In the application of this Act to Ireland, ' summary con- Act 1883, viction ' means a conviction under the Summary Jurisdiction i* Ireland. Acts, that is to say, with reference to the Dublin Metro- politan Police District the Acts regulating the duties of justices of the peace and of the police for such district, and else- where in Ireland the Petty Sessions (Ireland) Act, 1851, and any Act amending it." " Any offence under this Act committed in the Isle of Man Act 1883, which would in England be punishable on summary conviction f^i'sie of may be prosecuted, and any fine in respect thereof recovered at Man - the instance of any person aggrieved, in the manner in which offences punishable on summary conviction may for the time being be prosecuted." " The punishment for a misdemeanor under this Act in the Act 1883, Isle of Man shall be imprisonment for any term not exceeding Misdemeanor two years, with or without hard labour, and with or without a *" Islc of fine not exceeding one hundred pounds, at the discretion of the Court." * Graham v. Fanta, 1892, 9 R.P.C. 164 (Div. Ct.). CHAPTER XXIV. REGISTER OF PATENTS. Act 1883, THEEE shall be kept at the Patent Office a book called the sect 23. Register of Patents, wherein shall be entered the names and addresses of grantees of patents, notifications of assignments and of transmission of patents, of licenses under patents, and such other matters affecting the validity or proprietorship of patents as may from time to time be prescribed. " The Register of Patents shall be prinul facie evidence of any matters by this Act directed or authorised to be inserted therein. " Copies of deeds, licenses, and any other documents affecting the proprietorship in any letters patent or in any license there- under must be supplied to the Comptroller in the prescribed manner for filing in the Patent Office." The actual proprietorship must in general be affected by a document that is entered on the register; a letter agreeing to give an exclusive license on terms of royalties to be agreed on is not a document that can be entered on the register.* Patent " Upon the sealing of a patent the Comptroller shall cause to Kutryof he entered in the Register of Patents the name, address, and graut. description of the patentee as the grantee thereof, and the title of the invention." * Fletcher's Patent, 1893, 10 R.P.C. 252. REGISTER Of PATENTS. 217 " Upon the issue oE a certificate of payment under Rule 48, Patent the Comptroller shall cause to. be entered in the Register of Kntry of Patents a record of the amount and date of payment of the ^"on^ssue fee on such certificate. of certificate. " If a patentee fails to make any prescribed payment within Patent the prescribed time, or any enlargement thereof duly granted, Entry of' such failure shall be duly entered in the register." failure to "Where a person becomes entitled by assignment, trans- Act 1883, mission, or other operation of law to a patent, the Comptroller !. ect : ??,. .,.,... Registration shall, on request, and on proof of title to his satisfaction, of assign- cause the name of such person to be entered as proprietor of '" the patent in the Register of Patents. The person for the time being entered in the Register of Patents as proprietor of a patent shall, subject to the provisions of this Act and any rights appearing from such register to be vested in any other person, have power absolutely to assign, grant licenses as to, or otherwise deal with the same, and to give effectual receipts for any consideration for such assignment, license, or dealing. Provided that any equities in respect of such patent may be enforced in like manner as in respect of any other personal property." But although it is provided that "There shall not be entered in any register kept under this No notice of Act, or be receivable by the Comptroller, any notice of any re^uter trust expressed, implied, or constructive," Act 1883, sect. 85. it has been decided that an equitable assigutneut Equitable , , . assignment. or a patent can be entered in the register.* " Where a person becomes entitled to a patent or to any Patent share or interest therein by assignment, either throughout the Request for United Kingdom and the Isle of Man, or for any place or *"{* J t places therein, or by transmission or other operation of law, a proprietor request for the entry of his name in the register as such com- 8 plete or partial proprietor of the patent, or of such share or in- terest therein, as the case may be, shall be addressed to the Comptroller, and left at the Patent Office." * Stewart v. Casey, 1892, C.A., 9 R.P.C. 9. 218 LAW OF 1'ATENTS. p. 261. Change of address. P. 267. Such request must be made on Patent Form L, which must bear a stamp for 10s. The address of a proprietor is also entered, and r ' in case ot an alteration being required application must be made on Patent Form R, bearing a stamp for bs. Patent Rule 7-- Body Patent" 16 Rules 69. request. 5 Patent_ Particulars in request* 1 Patent^ Production 01 other proof, Patent Copies for Office* " A body corporate may be registered as proprietor by its jt corporate name. " Such re q u est shall in the case of individuals be made and signed by the person requiring to be registered as proprietor, or by his agent duly authorised to the satisfaction of the Comp- troller, and in the case of a body corporate by their agent authorised in like manner. " Every such request shall state the name, address, and description of the person claiming to be entitled to the patent or * anv snare or interest therein, as the case may be (herein- after called the claimant), and the particulars of the assignment, transmission, or other operation of law, by virtue of which he requires to be entered in the register as proprietor, so as to show the manner in which, and the person or persons to whom, the patent, or such share or interest therein as aforesaid, has been assigned or transmitted. "Every assignment and every other document containing, giving effect to, or being evidence of the transmission of a patent or affectingthe proprietorship thereof as claimed by such request, except such documents as are matters of record, shall be produced to the Comptroller, together with the request above prescribed, and such other proof of title as he may require for his satisfac- tion. "As to a document which is a matter of record, an official or certified copy thereof shall in like manner be produced to the Comptroller. " There shall also be left with the request an examined copy of the assignment or other document above required to be produced. " As to a document which is a matter of record, an official or REGISTER OP PATENTS. 219 certified copy shall be left with the request in lieu of an examined copy. " Where an order has been made by Her Majesty in Council Patent for the extension of a patent for a further term, or for the grant Entry of of a new patent, or where an order has been made by the Court 1*^^ for the revocation of a patent or the rectification of the register Council or of under section 90 of the Act of 1883, or otherwise affecting the validity or proprietorship of the patent, the person in whose favour such order has been made shall forthwith leave at the Patent Office an office copy of such order. The register shall thereupon be rectified, or the purport of such order shall other- wise be duly entered in the register, as the case may be." An application for the entry of au Order of the Privy Council in the Register must be made on Patent Form S, and must bear a stamp for 10s. p. 268 . " If anv rectification of a register under this Act is required Scotch or f ,. . j. a ii i Irish Order, in pursuance or any proceeding in a court in Scotland or i, ow reg is- Ireland, a copy of the order, decree, or other authority for the ^^g 83 rectification shall be served on the Comptroller, and he shall sect. Ill '(2). rectify the register accordingly." "An attested copy of every license granted under a patent Patent shall be left at the Patent Office by the licensee, with a request ^try of' that a notification thereof maybe entered in the register. The ^censes. 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." A request to enter a notification of a license must be made on Patent Form M, and must bear p. 262. a stamp for 10s. " Every register kept under this Act shall at all convenient Act 1883, times be open to the inspection of the public, subject to the R provisions of this Act and such regulations as may be prescribed ; be open to and certified copies, sealed with the seal of the Patent Office, 220 LAW OF PATENTS. of any entry in any such register shall be given to any person requiring the same on payment of the prescribed fee." The fee for each inspection is Is. Patent^ The Register of Patents shall be open to the inspection of Hours of the public on every week-day between the hours of ten and four, exce P t on the da J s and at the times " (a) Christmas Day, Good Friday, the day 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 " (6) 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 purpose of official use." Act 1883, " Printed or written copies or extracts, purporting to be Sea'lecUopies cer ^ ned ^J the Comptroller and sealed with the seal of the are evidence. Patent Office, of or from patents, specifications, 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." RuiesVg " Certified copies of any entry in the register, or certified Certified copies of, or extracts from, patents, specifications, disclaimers, 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." The fee for office copies is 4>d. per 100 words, and the cost of drawings according to agreement. The cost of a printed specification is 8d. There is a fee of 1*. for certifying an office copy or specification, &c. f e entr Ca ' e " " ^ cei ^^ nca ^ e purporting to be under the hand of the Comp- repister. troller as to any entry, matter, or thing which he is authorised sect. 96. ' by this Act, or any general rules made thereunder, to make or REGISTER OP PATENTS. 221 do, shall be primd 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." The fee for a certificate from the Comptroller p. 266. is 5s. ; it is given on Patent Form Q. " The Comptroller may, on request in writing, accompanied Clerical . errors may by the prescribed fee, be corrected. " (a) Correct any clerical error in or in connection with an f^ 1 ^ 3 ' application for a patent ; or " (Z>) Correct any clerical error in the name, style, or address of the registered proprietor of a patent." An application to the Comptroller to correct a clerical error must be made on Patent Form P, v. ses. which must bear a stamp for 5*. or 1, according as the application is made before or after the patent is sealed. " The Court may, on the application of any person aggrieved Correction of by the omission without sufficient cause of the name of any thf'cour^ person or of any other particulars from any register kept under Act 1 883 this Act, or by any entry made without sufficient cause in any such register, make such order for making, expunging, or vary- ing the entry, as the Court thinks fit ; or the Court may refuse the application ; and in either case may make such order with respect to the costs of the proceedings as the Court thinks fit. "The Court may, in any proceeding under this section, decide any question that it may be necessary or expedient to decide for the rectification of a register, and may direct an issue to be tried for the decision of any question of fact, and may award damages to the party aggrieved. " Any order of the Court rectifying a register shall direct that due notice of the rectification be given to the Comptroller." The Court here means the High Court or other see p. iss. court having jurisdiction in patent matters. 222 LAW OF PATENTS. Act 1883, " ^ atl 7 person makes or causes to be made a false entry in sect. 93. an y register kept under this Act, or a writing falsely purport- lalsification . J . . , of register a ing to be a copy 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." misde- meanor. CHAPTER XXV. MISCELLANEOUS. Warlike Inventions. " (1) THE inventor of any improvement in instruments or Act 1883, munitions of war, his executors, administrators, or assigns (who Assignment are in this section comprised in the expression the inventor), may * Secretary (either for or without valuable consideration) assign to Her certain Majesty's Principal Secretary of State for the War Department inventions - (hereinafter referred to as the Secretary of State), on behalf of Her Majesty, all 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. " (2) The assignment shall effectually vest the benefit of the invention and patent in the Secretary of State for the time being on behalf of Her Majesty, and all covenants and agreements therein contained for keeping the invention secret and otherwise shall be valid and effectual (notwithstanding any want of valu- able consideration), and may be enforced accordingly by the Secretary of State for the time being. " (3) Where any such assignment has been made to the Secretary for Secretary of State, he may at any time before the application pr eveiit y for a patent for the invention, or before publication of the publication Of RlH'Clfl- specification or specifications, certify to the Comptroller his cations. opinion that, in the interest of the public service, the particulars of the invention and of the manner in which it is to be performed should be kept secret. " (4) If the Secretary of State so certifies, the application Specifica- and specification or specifications with the drawings (if any), ^th^e'illed and any amendment of the specification or specifications, and packet, any copies of such documents and drawings, shall, instead of 224 LAW OF PATENTS. being left in the ordinary manner at the Patent Office, be deli- vered to the Comptroller in a packet sealed by authority of the Secretary of State. " (5) Such packet shall, until the expiration of the term or extended term during which a patent for the invention may be in force, be kept sealed by the Comptroller, and shall not be opened save under the authority of an order of the Secretary of State, or of the law officers. " (6) Such sealed packet shall be delivered at any time during the continuance of the patent to any person authorised by writ- ing under the hand of the Secretary of State to receive the same, and shall, if returned to the Comptroller, 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 authorised by writing under the hand of the Secretary of State i to receive it. " (8) Where the Secretary of State certifies as aforesaid, after an application for a patent has been left at the Patent Office, but before the publication of the specification or specifications, the application, specification, or specifications, with the drawings (if any), shall be forthwith placed in a packet sealed by authority of the Comptroller, and such packet shall be subject to the fore- going provisions respecting a packet sealed by authority of the Secretary of State. No revoca- " (9) No proceeding by petition or otherwise shall lie for tion of patent revocation of a patent granted for an invention in relation to not pub- ished. which the Secretary of State has certified as aforesaid. No copies "(10) No copy of any specification or other document or allowed. drawing, by this section required to be placed in a sealed packet, shall in any manner whatever be published or open to the in- spection of the public, but save as in this section otherwise directed, the provisions of this part of this Act shall apply in respect of any such invention and patent as aforesaid. May be " (^) ^" ne Secretary of State may, at any time by writing published at under his hand, waive the benefit of this section with respect to quent time, any particular invention, and the specifications, documents, and drawings shall be thenceforth kept and dealt with in the ordinary way. MISCELLANEOUS. 225 " (12) The communication of any invention for any improve- Communica- inent in instruments or munitions of war to the Secretary of invention to State, or to any person or persons authorised by him to inves- war^n'ot a' tigate the same or the merits thereof, shall not, nor shall any- publication, thing done for the purposes of the investigation, be deemed use or publication of such invention so as to prejudice the grant or validity of any patent for the same." Patents existing prior to Act 1883. (1) The provisions of this Act relating to applications Act 1883, for patents and proceedings thereon shall have effect in respect sei only of applications made after the commencement of this Act. " (2) Every patent granted before the commencement of Provisions this Act, or on an application then pending, shall remain un- pa'tente'prior affected by the provisions of this Act relating to patents m date> binding the Crown, and to compulsory licenses. " (3) In all other respects (including the amount and time of payment of fees) this Act shall extend to all patents granted before the commencement 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. " (4) All instruments relating to patents granted before the commencement 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 filed before or after the commencement of this Act in the Patent Office." Postal Communications. " (1) Any application, notice, or other document authorised Act t 1 g7 3 ' or required to be left, made, or given at the Patent Office or to 8ei the Comptroller, or to any other person under this Act, 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 would be delivered in the ordinary course of post. " (2) In proving such service or sending, it shall be sufficient to prove that the letter was properly addressed and put into the post." 15 226 LAW OF PATENTS. Act 1883, sect. 98. Act 1883, sect. 99. Act 1883, Beet. 35. Patent Rules 80. Excluded Days. " Whenever the last day fixed by this Act, or by any rule for the time being in force, for leaving any document or paying any fee at the Patent Office shall fall on Christmas Day, Good Friday, or on a Saturday or Sunday, or any day observed as a holiday at the Bank of England, or any day observed as a day of public fast or thanksgiving, herein referred to as excluded days, it shall be lawful to leave such document or to pay such fee on the day next following such excluded day, or days if two or more of them occur consecutively." Person incapacitated from doing Anything. " If any person is, by reason of infancy, lunacy, or other in- ability, incapable of making any declaration or doing anything required or permitted by this Act or by any rules made \inder the authority of this Act, then the guardian or committee (if any) of such incapable person, or if there be none, any person appointed by any Court or judge possessing jurisdiction in respect of the property of incapable persons, upon the petition of any person on behalf of such incapable person, or of any other person interested in the making such declaration or doing such thing, may make such declaration or a declaration as nearly corresponding thereto as circumstances permit, and do such thing in the name and on behalf of such incapable person, and all acts done by such substitute shall for the purposes of this Act be as effectual as if done by the person for whom he is substituted." Fraudulent Applications. " A patent granted to the time and first inventor shall not be invalidated by an application in fraud of him, or by provisional protection obtained thereon, or by any use or publication of the invention subsequent to that fraudulent application during the period of provisional protection." Power to dispense with Evidence, &c. " Where, under these rules, any person is required to do any act or thing, or to sign any document, or to make any declara- MISCELLANEOUS. 227 tion on behalf of himself 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 unable 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." " Where any discretionary power is by this Act given to Act 1883, the Comptroller, he shall not exercise that power adversely to Discretionary the applicant for a patent, or for amendment of a specification, C, ower . of | . without (if so required within the prescribed time by the appli- cant) giving the applicant an opportunity of being heard personally or by his agent. "The Comptroller may, in any case of doubt or difficulty Act 1883, arising in the administration of any of the provisions of this Difficulties in Act, apply to either of the law officers for directions in the "dministni- tion. matter. " The Comptroller shall, before the first day of June in every Annual year, cause a report respecting the execution by or under him comptroller, of this Act to be laid before both Houses of Parliament, and Act 1883 therein shall include for the year to which each report relates all general rules made in that year under or for the purposes of this Act, and an account of all fees, salaries, and allowances and other money received and paid under this Act." Ireland and the Isle of Man. " All parties shall, notwithstanding anything in this Act, Act 1883, have in Ireland their remedies under, or in respect of, a patent Reservation as if the same had been granted to extend to Ireland only." of remedies " This Act shall extend to the Isle of Man, and Act 1883 " Nothing in this Act shall affect the jurisdiction of the sect - 112 (*) courts in the Isle of Man, in proceedings for infringe- ment, or in any action or proceeding respecting a patent, competent to those courts." 228 LAW OF PATENTS. Patent Museum, South Kensington. Patent Office This Museum was in 1883 placed under the manage- ment of the Department of Science and Art. It no longer forms a separate section, but has been incorporated with the general Science Collections of the South Kensington Museum. All communications relating thereto should be addressed to the Secretary, Science and Art Department, South Kensington, London, S.W. The Science Collections are open to the public free daily, from 10 a.m. to 4, 5, or 6 p.m., according to the season. A number of the models may be seen in motion from 11 a.m. to the hour of closing. Entrance Exhibition Road." Models for "The Department of Science and Art may at any time Museum require a patentee to furnish them with a model of his invention Act 1883, on payment to the patentee of the cost of the manufacture of the model ; the amount to be settled in case of dispute by the Board of Trade." Act. 1883, " Copies of all specifications, drawings, and amendments left Documents a ^ ^ ne Patent Office after the commencement of this Act, sent to printed for and sealed with the seal of the Patent Office, shall capitals. be transmitted to the Edinburgh Museum of Science and Art, and to the Enrolments Office of the Chancery Division in Ireland, and to the Rolls Office in the Isle of Man, within twenty-one days after the same shall respectively have been accepted or allowed at the Patent Office ; and certified copies of or extracts from any such documents shall be given to any person requiring the same on payment of the prescribed fee ; and any such copy or extract shall be admitted in evidence in all courts in Scotland and Ireland and in the Isle of Man without further proof or production of the originals." Patent Office Publications. See p. 5. " These may be consulted daily at the Free Public Library in tlie Patent Office 5 at the Science and Art Department, South Kensington ; and at a large number of Free Libraries. They are also on sale at the Patent Office Sale Branch, 25, Southampton Buildings, Chancery Lane, W.C. " Specifications and other publications will be forwarded by post from the Patent Office on receipt of the price and of the MISCELLANEOUS. 229 postage when such is charged. Sums amounting to Is. or more must be remitted by Postal or Post Office Order pay- able to Sir Reader Lack. Postage stamps sent in payment of any amount exceeding llrf. will be returned. Cheques will not be accepted. " In ordering specifications the name of the Patentee, the No. of Patent, and year in which applied for must be given. These particulars can be obtained by searching the Indexes of Patents and (for recent specifications) the illustrated Official Journal. The Indexes and the Journals can be referred to at the places named in the List ' A ' following, and at the Patent Office Library. The price of each specification is 8d., which includes postage in the United Kingdom.* "Printed specifications or other publications cannot be returned by the purchasers unless a wrong number has been supplied through an error on the part of the Patent Office." LIST OF PLACES RECEIVING DONATIONS OF PATENT OFFICE WORKS. A. Places in the United Kingdom receiving a complete set of the publications of the Patent Office, including the Specifications, on condition that they shall be daily accessible to the public, for reference or for copying, free of all charge. Belfast (Free Library). f Birmingham (Central Library, Reference Department, Eden Place). Bolton-le-Moors (Public Library, Exchange Buildings). Bradford, Yorkshire (Free Library, Darley Street). Brighton (Free Library). fBristol (Free Library, King Street). fCardiff (Free Library and Museum) from 1871. Carlisle (Public Free Library, Tullie House). Derby (Free Library and Museum}. Dublin (National Library of Ireland, Kildare Street). * For form of postal application see p. 251. t This Library has also received since 1893 a set of Specifi- cations of United States Patents. 230 LAW OF PATENTS. fDundee (Public Library, Albert Institute). fGlasgow (Stirling's Library, Miller Street). Halifax (Public Library, Akroyd Park). Horwich (Mechanics' Institiite). H udders field (Corporation Offices). fHull (Mechanics' 1 Institute, George Street). Ipswich (Museum Library, Museum Street) Keighley (Mechanics' Institute, North Street). Kidderminster (Free Library). fLeeds (Public Library). Leicester (Free Library, Wellington Street). Liverpool (Free Library, William Brown Street). London (British Museum). (Free Library, London Street, Bethnal Green) from 1881. fManchester (Free Library, King Street). Newcastle- upon-Tyne (Public Library, New Bridge Street). Newport, Monuiouth (Free Library). Nottingham (Free Public Libraries). Oldham (Free Library, Union Street). Plymouth (Free Library). Preston (Dr. Shepherd's Library, Cross Street). Rochdale (Free Library, Town Hall). Salford (Free Library, Peel ParJc). fSheffield (Free Library, Surrey Street). Stockport (Central Free Library). Swansea (Free Library). Wolverhampton (Free Library). B. Public Offices, &c., in the United Kingdom, and British Colonies and Foreign States receiving a complete set of the publications of the Patent Office. Public Offices, &c. Department of Science and Art, South Kensington. fMuseum of Science and Art, Edinburgh. Public Record Office, Dublin. f This Library has also received since 1893 a set of Specifi- cations of United States Patents, MISCELLANEOUS. 231 British Colonies, &c. Canada Patent Office, Ottawa. Council of Arts and Manufactures of Quebec, Montreal. Public Library, Toronto. India Patent Office, Imperial Secretariat, Calcutta. Patent Office, Secretariat, Bombay. Patent Office, Secretariat, Madras. New South Wales Patent Office, Sydney. New Zealand Patent Office, Wellington. Queensland Patent Office, Brisbane. South Australia Colonial Institute, Adelaide. Patent Office, Adelaide (from 1878). Tasmania General Register Office, Hobart. Victoria Patent Office, Melbourne. Public Library, Melbourne. Foreign States. Austria Polytechnic University, Vienna. Belgium Ministere Directeur 1'Industrie, Brussels. Musee de 1'Industrie, Palais du Midi, Brussels. Denmark Patent Office, Copenhagen (from 1893). France Bibliotheque Nationale, Paris. Bureau de la Propriete Industrielle, Ministere du Commerce, Paris (from 1876). Conservatoire des Arts et Metiers, Paris. Germany Kaiserliches Patentamt, Berlin. Kaiserliches Statisticbe amt, Berlin. Baden Polytechnic School, Carlsruhe (from 1876). Bavaria Polytechische Verein, Munich. Prussia Konigliche Bibliothek, Berlin. Polytechnische Schule, Hanover. Saxony Polytechnische Schule, Dresden. Mulhouse Socicte Industrielle. Italy Ufficio delle Privative, Rome. Royal Institution for the Encouragement of Science, Naples (from 1852). Japan Patent Office, Tokio (from 1884). Norway Patent Office, Christiania (from 1884). 232 ''-. * LAW OF PATENTS. Russia Bibliotheque Imperiale, St. Petersburg. Polytechnic School, Riga. Spain Madrid. Sweden Patent Office, Stockholm. United States Patent Office, Washington, B.C. Astor Library, New York, N.Y. State Library, Albany, N.Y. Franklin Institute, Philadelphia, Pa. Free Public Library, Boston, Mass. Public Library, Cincinnati, Ohio. Free Public Library, Chicago, 111. Peabody Institute, Baltimore, Md. Cornell University, Ithaca, N.Y. Mercantile Library, St. Louis, Mo. Mechanics' Institute, San Francisco, Cal. Historical Society, Madison, Wis. CHAPTER XXVI. INTERNATIONAL AND COLONIAL ARRANGEMENTS. " If her Majesty is pleased to make any arrangements with Act 1883, the Government or Governments of any foreign state or states inter- for mutual protection of inventions, then any person who has nalional . . arrange- applied for protection for any (invention in any such state ments for shall be entitled to a patent for his invention under this Act fnventions. in priority to other applicants ; and such patent shall have the same date as the date of the application in such foreign state. " Provided that his application is made within seven 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 to recover damages for infringements happening prior to the date of the actual acceptance of his complete speci- fication." " Where it is made to appear to Her Majesty that the Legis- Act 1883, lature of any British possession has made satisfactory provision provision for for the protection of inventions patented in this country, it Colonies and shall be lawful for Her Majesty from time to time, by Order in Council, to apply the provisions of the last preceding section, with such variations or additions (if any) as to Her Majesty in Council may seem fit, to such British possession. " An Order in Council under this Act shall, from a date to be mentioned for the purpose in the Order, take effect as if its provisions had been contained in this Act ; but it shall be lawful for her Majesty in Council to revoke any Order in Council made under this Act. " ' British possession ' means any territory or place situate 234 LAW OF PATENTS. Definition of within her Majesty's dominions, and not being or forming part possession, of the United 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 authority in the British possession ; and where there are local Legislatures as well as a central Legislature, means the central Legislature only." " Under this power Great Britain has joined in an Interna- tional Convention for the protection of inventions, which now exists between the following States : Patent Office Circular, p. 8. Belgium. Brazil. Curacoa and Surinam. Denmark. East Indian Colonies of the Netherlands. France. Great Britain. Guatemala. Italy. Netherlands. New Zealand. Norway. Portugal. Queensland. Santo Domingo. Servia. Spain. Sweden. Switzerland. Tunis. United States. " Similar arrangements, for the mutual protection of inven^ tions, have been made between Great Britian on the one side, and each of the following States and Colonies on the other : Paraguay. Roumania (Designs and Trade Marks only). Tasmania Uruguay. Ecuador (Designs and Trade Marks only). Greece (Designs and Trade Marks only). Mexico. Act iss?, " The publication in the United Kingdom or the Isle of ^' Man during the period aforesaid of any description of the invention, or the xise therein during such period of the in- vention, shall not invalidate the patent which may be granted for the invention. Act 1883, " The application for the grant of a patent under this section ' must be made in the same manner as an ordinary appli- cation under this Act." INTERNATIONAL AND COLONIAL ARRANGEMENTS. 235 Where the foreign state in which the first state joining Convention patent was taken out became a member subse- after date of quently to the date of that patent but before that of the application here, the International Conven- tion was held to apply.* An appeal lies to the law officer with regard to an application under the International Convention. " The provisions of this section shall apply only in the Act 1883, case of those foreign states with respect to which Her Majesty Limitation of shall from time to time by Order in Council declare them to be a"^n" a e tlo applicable, and so long only in the case of each state as the ments. Order in Council shall continue in force with respect to that state." " The term ' foreign application ' shall mean an application Definition of by any person for protection of his invention in a foreign application. state or British possession to which by any Order of Her * tent Rule Majesty in Council for the time being in force the provisions of section 103 of the Patents, Designs, and Trade Marks Act, 1883, have been declared applicable. "An application in the United Kingdom for a patent for Patent Rule any invention in respect of which a foreign application has been wim may made shall contain a declaration that such foreign application apply "der has been made, and shall specify all the foreign states or British arrange- possessions in which foreign applications have been made, and m< the official date or dates thereof respectively. The application must be made within seven months from the date of the first foreign application, and must be signed by the person or persons by whom such first foreign application was made. If such person, or any of such persons, be dead, the application must be signed by the legal personal representative of such dead person, as well as by the other applicants, if any." A foreign patentee must elect whether he will apply under the International Convention, or risk * Re Main's Patent, 1890, 7 R.P.C. 13, 236 LAW OF PATENTS. having his patent invalidated by a prior publica- tion in England of his prior foreign patent.* Only the foreign patentee himself, or his legal personal representative, can take advantage of the International Convention ; a patent to an agent for him can only be granted as of the date of application as on " nn application for a com- munication from abroad. "f Patent " The application in the United Kingdom shall be made in Form ( >r the Form A2 in the second schedule to these rules, and in addi- p P 247 at ' n> ^ on * ^ ne s P ec ifi ca tion, provisional or complete, left with such application must be accompanied by foreign s[>ec i- " ^ ^ CO W ov copies f tne specification, and drawings or fication to documents corresponding thereto, filed or deposited by the application. applicant in the Patent Office of the Foreign State or British Possession in respect of the first foreign applica- tion duly certified by the official chief or head of the Patent Office of such Foreign State or British Posses- sions as aforesaid, or otherwise verified to the satisfaction of the Comptroller. Declaration " (2) A statutory declaration as to the identity of the inven- inVent'ions. tion ' n res P ec t of which the application is made with the invention in respect of which the said first foreign appli- cation was made, and if the specification or document corresponding thereto be in a foreign language, a transla- tion thereof shall be annexed to and verified by such statutory declaration. Patent "On receipt of such application, together with the prescribed Date 8 of specification and the other document or documents accompany- foreign appli- j n cr the same, required by the last preceding rule, and with cation to be c,- \ AV n 11 e entered on such other proot (it any) as the Comptroller may require or or Register. relating to such foreign application, or of the official date thereof, the Comptroller shall make an entry of the applications * The British Tanning Co., Limited, v. Groth, 1891, 8 R.P.C. 121. f Shallenbergor's application, 1889,6 R.P.C. 550. INTERNATIONAL AND COLONIAL ARRANGEMENTS. 237 in both countries and of the official dates o such applications respectively. "All further proceedings in connection with such application Patent shall be taken within the times and in the manner prescribed ' by the Acts or rules for ordinary applications." Such further proceedings include any act within the discretion or jurisdiction of the Comptroller, and consequent appeals to the law officer.* " The patent shall be entered in the Register of Patents as Date of dated of the date on which the first foreign application was patent made, and the payment of renewal fees and the expiration of Rule 29- the patent shall be reckoned as from the date of the first foreign application." The chief points in the International Conven- tion are (1) The right of priority obtained by a person Art. iv. who first applies for a patent in this country is seven months. (2) The importation by the patentee into the importation, country where the patent has been granted of objects manufjictured in any other state belonging to the Union does not entail forfeiture ; but the patentee must work his patent in conformity with the laws of the country into which he so imports articles when any working in such country is required in order to keep a patent in force. (3) Temporary protection is given to patent- Art. XL able inventions for articles exhibited at official or officially recognised International Exhibitions. " An International Office, in connection with the Convention, international has been established at Berne, which publishes a monthly periodical. * Re Main's Patent, 1890, 7 R.P.C. 13. 238 LAW OF PATENTS. periodical, entitled ' La Propriete Industrielle.' The yearly subscription (including postage) for all countries within the Postal Union is 5 francs 60 centimes, and should be for- warded by money order to M. S. Collin, Imprimeur, Berne." LIST OP FEES PAYABLE ON AND IN CONNECTION WITH LETTERS PATENT. Up to Sealing. s. d. s. d. 1. On application for provisional pro- tection . . ,100 2. On filing complete specification .300 400 Or 3. On filing complete specification with first appli- cation . . . .400 4. On appeal from Comptroller to Law Officer. By appellant . . . .300 5. On notice of opposition to grant of patent. By opponent . . . . 10 6. On hearing by Comptroller. By applicant and by opponent respectively . .100 On application to amend specification : 7. Up to sealing. By applicant . . 1 10 8. After sealing. By patentee . .300 9. On notice of opposition to amendment. By opponent . . . . 10 10. On hearing by Comptroller. By applicant and by opponent respectively . .100 11. On application to amend specification during action or proceeding. By patentee .300 12. On application to the Board of Trade for a compulsory license. By person applying .500 13. On opposition to grant of compulsory license. By patentee . . . .500 240 LAW OF PATENTS. s. d. On certificate of renewal : 14. Before the expiration of the 4th year from the date of the patent and in respect of the 5th year . . . .500 15. Before the expiration of the 5th year from the date of the patent and in respect of the 6th year . . ,. .600 16. Before the expiration of the 6th year from the date of the patent and in respect of the 7th year . . . .700 17. Before the expiration of the 7th year from the date of the patent and in respect of the 8th year . . . .800 18. Before the expiration of the 8th year from the date of the patent and in respect of the 9th year . . . .900 19. Before the expiration of the 9th year from the date of the patent and in respect of the 10th year . . . . 10 20. Before the expiration of the 10th year from the date of the patent and in respect of the llth year . . . . 11 21. Before the expiration of the llth year from the date of the patent and in respect of the 12th year . . . 12 22. Before the expiration of the 12th year from the date of the patent and in respect of the 13th year . . . . 13 23. Before the expiration of the 13th year from the date of the patent and in respect of the 14th year . . . . 14 On enlargement of time for payment of renewal fees : 24. Not exceeding one month . . .100 25. two months . .300 26 three months .500 LIST OF FEES. 241 S. d. 27. For every entry of an assignment, transmission, agreement, license, or extension of patent . 10 28. For duplicate of letters patent . each 200 29. On notice to Comptroller of intended exhibition of a patent under Section 39 . . 10 30. Search or inspection fee . . each 010 31. For office copies . . every 100 words 004 (hut never less than one shilling). 32. For office copies of drawings, cost according to agreement. 33. For certifying office copies, MSS. or printed, each . . . .010 33A. On postal request for printed copy specification 008 34. On request to Comptroller to correct a clerical error : up to sealing 050 after sealing 100 35. For certificate of Comptroller under Section 96 5 36. For altering address in register . .050 37. For enlargement of time for filing complete specification, not exceeding one month .200 38. For enlargement of time for acceptance of com- plete specification : Not exceeding one month . .200 two months . .400 three months . ,600 242 LAW OP PATENTS. PATENT FORMS. PAGE A. Form of Application for Patent . .-. 243 Al. communicated from abroad 245 A2. ,, under international convention . 247 B. Provisional Specification . . 249 C. Complete . . 250 Cl. Postal Request for printed copy of specifi- cation (for use in the United Kingdom only) . . . .251 D. Opposition to Grant of Patent . . 252 E. Application for Hearing by^Comptroller . 253 F. to amend Specification or Drawings 254 G. .. Opposition to Amendment of Specification or Drawings . . . 255 H. Application for Compulsory Grant of License .... 256 HI. Petition for Compulsory Grant of Licenses 257 I. ,, Opposition to Compulsory Grant of License .... 258 J. Application for Certificate of Payment or Renewal . . . 259 K. Application for Enlargement of Time for Payment of Renewal Fee . .260 L. Request to enter Name upon the Register of Patents . . .261 M. Request to enter Notification of License in Register . . . 262 N. Application for Duplicate of Letters Patent 263 0. .. Notice of Intended Exhibition of Un- patented Invention . . 264 P. Request for Correction of Clerical Error . 265 Q._ M Certificate of Comptroller . . 266 R. Notice for Alteration of an Address in Register. . . .267 S. Application for Entry of Order of Privy Council in Register . . 268 T. Appeal to Law Officer . . 269 U. .. Application for Extension of Time for leaving a complete Specification . 270 V. Application for Extension of Time for acceptance of complete Specification . 271 PATENT FORMS. 243 PATKNT. PATENTS, DESIGNS, AND TRADE MARKS ACTS, 1883 TO 1888. Form A. To be accompanied by two copies of Form B or of Form C. APPLICATION FOE PATENT. (a) Here (a) insert name and full address and calling of applicant or applicanti. declare that (4) Here which is (b) insert title of invention. do hereby in possession of an invention the title of that caslofmore than one the true and first inventor thereof ; and that rtate whether ^ e same is not in use by any other person or persons to the best all, or if not, of knowledge and belief ; and humbly pray that a who is or are -r, , , , , , , . , . , . *.f the inventor Patent may be granted to for the said invention. or inventors. Dated da of 18 signed by applicant or applicants. In the ease each member (d) NOTE. Where application is made through an agent (Rule 8), the authorisation on the back (if used) should be signed by the applicant or applicants. To the Comptroller, Patent Office, 25, Southampton Buildings, Chancery Lane, London, W.C. 244 LAW OF PATENTS. For the convenience of applicants, suggested forms of autho- risation to an agent and statement of address respectively are printed below. (1) Where application is made through an Agent (Rule 8). hereby appoint of to act as agent in respect of the within applicati on for a Patent, and request that all notices, requisitions, and com- munications relating thereto may be sent to such agent at the above address. day of 18 * To be # signed by applicant or applicants. (2) Where application is made without an Agent (Rule 9). hereby request that all notices, requisitions, and communications in respect of the within application may sent to at day of t To be signed tiy applicant or applicants. PATENT FOKMS. 245 PATENTS, DESIGNS, AND TRADE MARKS ACTS, 1883 TO 1888. Form A 1. (To be accompanied by two copies of Form B or of Form C.) APPLICATION FOB PATENT FOE INVENTIONS COMMUNICATED FEOM ABEOAD. (a) Here insert name, full address, I (a) and calling r n ofapplicant. f m the county of do hereby declare that I am in possession of "an invention the title of which is (6) (i) Here insert title of invention. (c) Here which invention has been communicated to me by (c), that I insert name, address, and calling of communi- cant - claim to be the true and first inventor thereof ; and that the same is not in use within the United Kingdom of Great Britain and Ireland and the Isle of Man by any other person or persons to the best of my knowledge and belief; and I humbly pi-ay that a Patent may be granted to me for the said invention. (./) To be eigned by applicant or applicants. day of 18 NOTE. Where application is made through an agent (Rule 8) the authorisation on the back (if used) should be signed by the applicant or applicants. To the Comptroller, Patent Office, 25, Southampton Buildings, Chancery Lane, London, W.C. 246 LAW OP PATENTS. For the convenience of applicants, suggested forms of authori- sation to an agent and statement of address respectively are printed below. (1) Where application is made through an Agent (Rule 8). hereby appoint of to act as agent in respect of the within application for a patent, and request that all notices, requisitions, and com- munications relating thereto may be sent to such agent at the above address. * To be signed by applicant or applicants. day of 18 (2) Where application is made without an Agent (Rule 9). hereby request that all notices, requisitions, and com- munications in respect of the within application may be sent to at t To be signed by applicant or applicants. day of 18 PATENT FORMS. 247 PATENTS, DESIGNS, AND TRADE MARKS ACTS, 1883 TO 1888. Form A 2. APPLICATION FOE PATENT UNDER INTERNATIONAL AND COLONIAL ARRANGEMENTS. (a) Here insert name, full address, and calling of applicant, or of each of the applicants. (6) Here insert title of invention. (c) Here insert the namesofeach Foreign State followed by the official date of the application respec'tivelv (d) Here insert the names of each British Possession followed by the official date of the do hereby declare that I (or we) have made foreign applications for protection of my (or our) invention of (6) * n ^ e following Foreign States, and on the following official dates, viz. (c) an ^ * n ^ e fU w i n o British possessions and on the following official dates, viz. (d) i'lfeach* 10 " That the said invention was not in use within the United respectively. Kingdom of Great Britain and Ireland and the Isle of Man by any other person or persons before the (e) (e) Here insert the official date of the earliest foreign application. 248 LAW OP PATENTS. to the best of knowledge, information, and belief, and humbly pray that a patent may be granted to for the said invention in priority to other applicants, and that (/) Here such patent shall have the date (/) insert the official date of the earliest foreign application. to} (g) Signature of applicant or of each of applicants. To the Comptroller, Patent Office, 25, Southampton Buildings, Chancei-y Lane, London, W.C. PATENT FORMS. 249 To be issued with Form A, A 1, or A 2. PATENTS, DESIGNS, AND TRADE MARKS ACTS, 1883 TO 1888. Form B. (a) Here insert title as in declaration. (i) Here insert name, full address, and calling of applicant or applicants as in declaration. (c) Here insert short description of invention. PBOVISIONAL SPECIFICATION. (To be furnished in Duplicate.) (a) do hereby declare the nature of this invention to be as follows : (c) NOTE. No stamp is required on this document, which must form the commencement of the Provisional 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 Provisional Specification and the " Duplicate " thereof must be signed by the applicant or his agent on the last sheet, the date being first inserted as follows : " Dated this day of 18 To the Comptroller, Patent Office, 25 Southampton Buildings, Chancery Lane, London, W.C. 250 LAW OP PATENTS. PATENTS FOKM C 1. To the Comptroller-General. Please send one copy of Specification No. I o to (Name in full) (Address) Year PATENTS. 7V. The Comptroller -General, Patent Office, 25, Southampton Buildings, London, W.C. PATENT FORMS. 251 PATENTS, DESIGNS, AND TRADE MARKS ACTS, 1883 TO 1888. Where provisional specifi- cation hag been left, quote No. and date. No Date (a) Here insert title as in declaration. (4) Here insert came, full address, and calling of applicant or applicants as in declaration. (c) Here insert full description of invention, ic hi r/t ,iii'!t end with a distinct statement of claim or claimt in the following form : "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 Here 1. state 2. distinctly 3 the features of novelty claimed. (a) Form C. COMPLETE SPECIFICATION. (To be furnished in Duplicate one unstamped.) do hereby declare the nature of this invention and in what manner the same is to be performed, to be particularly described and ascertained in and by the following statement : 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 complete specification and the " Duplicate " thereof must be signed by the applicant, or his agent, on the last sheet, the date being first inserted as follows : "Dated this day of 18 ." To the Comptroller, Patent Office, 25, Southampton Buildings, Chancery Lane, London, W.C. 252 LAW OF PATENTS. PATENTS, DESIGNS, AND TRADE MARKS ACTS, 1883 TO 1888. D. FOEM OF OPPOSITION TO GEANT OF PATENT. [To be accompanied by an unstamped copy.'] * Here *I state name and full address. hereby give notice of my intention to oppose the grant of letters patent upon application No. of , applied for by which of the grounds of opposition permitted by section 11 of the Act the grant is opposed. t Here insert signature of opponent. (Signed)J To the Comptroller, Patent Office, 25, Southampton Buildings, Chancery Lane, London, W.C. PATENT FORMS. 253 PATENTS, DESIGNS, AND TRADE MARKS ACTS, 1883 TO 1888. Form E. FORM OP APPLICATION FOB HEABING BY THE COMPTBOLLEB. IN CASES OF REFUSAL TO ACCEPT, OPPOSITION, OB APPLI- CATIONS FOB AMENDMENTS, &c. SIB, WHere f ( insert hereby apply to be beard in reference to and request tbat I may receive due notice of the day fixed for the hearing. Sir, Your obedient Servant, To the Comptroller, Patent Office, 25, Southampton Buildings, Chancery Lane, London, W.C. 254 LAW OF PATENTS. PATENT. PATENTS, DESIGNS, AND TRADE MARKS ACTS. 1883 TO 1888. Form F. FOBM OF APPLICATION FOE AMENDMENT OF SPECIFICATION OB DBAWINGS. * Here state name and full address of applicant or patentee. seek leave to amend the specification of Letters Patent No. of 188 , as shown in red ink in the copy of the original speci- fication hereunto annexed t Here state reasons for seeking amendment ; and where the applicant is not the patentee, state what interest he possesses in the letters patent. t To be signed by applicant. My reasons for making this amendment are as follows : f (Signed) t To the Comptroller, Patent Office, 25, Southampton Buildings, Chancery Lane, London, W.C. PATENT FORMS. 255 PATENTS, DESIGNS, AND TRADE MARKS ACTS, 1883 TO 1888. Form Q. FOBM OF OPPOSITION TO AMENDMENT OP SPECIFICATION OB DRAWINGS. [To be accompanied by an unstamped copy.] * Here state name and full address of opponent. hereby give notice of objection to tbe proposed amendment of the specification or drawings of Letters Patent No. t Here o f ig8 for the following reason : t state reason of opposition. (Signed) To the Comptroller, Patent Office, 25, Southampton Buildings, Chancery Lane, London, W.C. 256 LAW OF PATENTS. PATENTS, DESIGNS, AND TRADE MAHKS ACTS, 1883 TO 1888. PATENT. Form H. FOBM OF APPLICATION FOB COMPTJLSOBY GBANT OF LICENSE. * Here * state name and full address of applicant. t Here state name and address of patentee, and number and date of his patent. [To be accompanied by an imstamped copy.] hereby request you to bring to the notice of the Board of Trade the accompanying petition for the grant of a license to me by f (Signed) NOTE. The petition must c.early set forth the facts of the case, and be accompanied by an examined copy thereof. See form next page. To the Comptroller, Patent Office, 25, Southampton Buildings, Chancery Lane, London, W.C. PATENT FOEMS. 257 PATENTS, DESIGNS, AND TRADE MARKS ACTS, 1883 TO 1888. Form H 1. FOEM OF PETITION FOB COMPULSOBY GBANT OF LICENSES. To the LOEDS of the COMMITTEE of PEIVY COUNCIL for TEADE. (a) Here insert name, THE PETITION of (a) of full address, and . . description. m the county of , being a (4) Here insert title person interested in the matter of this petition as herein- of invention. af ter described : (c) Here state fully the nature of SHEWETH as follows : petitioner's interest. L A paten< . dated No> ( *0* a further period of f Here Namef insert name and full A jj address. Address To the Comptroller, Patent Office, 25, Southampton Buildings, Chancery Lane, London, W.C. (This part of the Form to be filled in at the Patent Office.) PATKNT. CERTIFICATE OF PAYMENT OH RENEWAL. Letters Patent No. , of 188 18 This is to certify that did this day of 18 , make the prescribed payment of in respect of a period of from and that by virtue of such payment the rights of the * See patentee remain in force.* section 17 of the Patents, Designs, and Trade Marks Act, 1883. Patent Ojfice, London. 260 LAW OF PATENTS. PATENTS, DESIGNS, AND TRADE MAKES ACTS, 1883 TO 1888. Form K. FOEM OF APPLICATION FOB ENLABGEMENT OF TIME FOB PAYMENT OF RENEWAL FEE. SIB, I HEBEBY apply for an enlargement of time for month in which to make the payment of upon my patent, No. of 188 . The circumstances in which the payment was omitted are as () See Rule follows (a) : 49. I am, Sir, Your obedient Servant, (4) Here insert full address to which receipt is to be sent. To the Comptroller, Patent Office, 25, Southampton Buildings, Chancery Lane, London, W.C. PATENT FORMS. 261 PATENTS, DESIGNS, AND TRADE MARKS ACTS, 1883 TO 1888. Form L. (a) Or We. Here insert . name, full address, and FORM OF BEQUEST TO ENTER NAME UPON THE REGISTER OF description. (4) My or our. (c) Or names. (d) I or 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 PATENTS. I (a) hereby request that you will enter (&) Register of Patents : name (c) in the (d) claim to be entitled (e) of the Patent No. of 188 , granted to (/) by virtue of (h) such docu- ment, giving its date, and the parties to the same, and showing how the claim here made is substanti- ated. (j) Here And in proof whereof I transmit the accompanying (i) Seethe with an attested copy document, thereof (j) I (j) Where any docu- ment which is a matter of record is required to be left, a certified or official copy in lieu of an attested copy must be left, am, Sir, Your obedient Servant, To the Comptroller, Patent Office, 25, Southampton Buildings, Chancery T,ane, London, W.C. 262 LAW OP PATENTS. (a) Here insert full address. PATENTS, DESIGNS, AND TRADE MARKS ACTS, 1883 TO 1888. Form M. FOBM OF REQUEST TO ENTER NOTIFICATION OF LICENSE IN THE REGISTER OF PATENTS. SIB, I HEREBY transmit an attested copy of a license granted to me by under Patent No. of 188 , as well as the original license for verification, and I have to request that a notification thereof may be entered in the Register. I am, Sir, Your obedient Servant, To the Comptroller, Patent Office. 25, Southampton Buildings, Chancery Lane, Jjondon, W,C. PATENT FORMS. 263 PATIENT. PATENTS, DESIGNS, AND TRADE MARKS ACTS, 1883 TO 1888. Form N. APPLICATION FOE DUPLICATE OF PATENT. Date SIB, I REGRET to have to inform you that the letters patent t* H ? r insert date, a N nd'fT e ' addresi of Patentee.] dated* granted to No. [t Here for an invention off insert title of invention.] [t Here insert the Viavo ftave "lost,"asthe case may be.] [ Here state interest possessed by applicant in the letters patent.] I beg therefore to apply for the issue of a duplicate of such tpnt 8 l;enT; -5 ro . - A ,. , n [bignature of Applicant.] To the Comptroller, Patent Office, 25, Southampton Buildings, Chancery Lane, London, W.C. 264 LAW OP PATENTS. PATENT. PATENTS, DESIGNS, AND TRADE MARKS ACTS, 1883 TO 1888 Form O. NOTICE OE INTENDED EXHIBITION OF AN UNPATENTED INVENTION. * Here state name and lull address of applicant. hereby give notice of my intention to exhibit a of at the t State Exhibition, whichf of 18 , f'ig'to op en" un der the provisions of the Patents, Designs, and Trade Marks Act of 1883. t Insert brief description of invention, with drawings if necessary. herewith enclose (Signed) To the Comptroller, Patent Office, 25, Southampton Buildings, Chancery Lane, London, W,C. PATENT FORMS. 265 PATENT. PATENTSj DESIGNS, AND TRADE MARKS ACTS, ! 1883 TO 1888. Form P. FOBM OF REQUEST FOE COBBECTION OF CLERICAL EEEOE. SIB, (a) Or errors. I HEBEBT request that the following clerical error (a) in the (6) application, No. of 18 , tnay be corrected in the manner shown in e ^ in ^ * n the certified copy of the original (b) hereunto annexed. Signature Full Address To the Comptroller, Patent Office, 25, Southampton Buildings, Chancery Lane, London, W.C. 266 LAW OP PATENTS. PATKNT. PATENTS, DESIGNS, AND TRADE MARKS ACTS, 1883 TO 1888. Form Q. CERTIFICATE OF COMPTEOLLEE-GENEBAL. Patent Office, London, 18 I, , Comptroller-General of Patents, Designs, and Trade Marks, hei-eby certify Here insert name and full address of person requiring the information. To* PATENT. PATENT FORMS. 267 PATENTS, DESIGNS, AND TEADE MAKKS ACTS, 1883 TO 1888. Form B. FORM OF NOTICEFOE ALTEBATIOK OF AN ADDBESS IN REGISTER. SIB, ()Here state name or names and full address of applicant or hereby request that address now upon the Register may be altered as follows () Here (ft insert full W address. Sir, Your obedient Servant, To the Comptroller, Patent Office, 25, Southampton Buildings, Chancery L(tne, London, W.Q. 268 LAW OP PATENTS. PATKNT. PATENTS, DESIGNS, AND TRADE MARKS ACTS, 1883 TO 1888. Form S. FORM OF APPLICATION FOE ENTRY OF ORDER OF PRIVY COUNCIL IN REGISTER. (a) Here state name and full address of applicant. (a) (*) Here state the purport of the order. hereby transmit an office copy of an Order in Council with refer- ence to (6) Sir, Your obedient Servant, To the Comptroller, Patent Office, 25, Southampton Buildings, Chancery Lane, London, W.C. PATENT FORMS. 269 PATENTS, DESIGNS, AND TRADE MARKS ACTS, 1883 TO 1888. Form T. FOBM OF APPEAL TO LAW OFFICES. (a) Here insert name and full address of appellant. (6) Here insert "the decision " or " that part of the decision," as the case may be. (c) Here insert " refused [or allowed] application for patent," No. (d) or " refused [or allowed] application for leave to amend patent," or otherwise, as the case may be. (d) Insert number and year. of (a) hereby give notice of my intention to appeal to the Law Officer from (&) of the Comptroller of the 18 , whereby he (c) day of of the year 18 (d) Signature Date N.B. This notice has to be sent to the Comptroller-General at the Patent Office, London, W.C., and a copy of same to the Law Officers' Clerk at Room 549, Royal Courts of Justice, London. 270 LAW OP PATENTS. PATENTS, DESIGNS, AND TRADE MARKS ACTS, 1883 TO 1888. Form U. FOBM OF APPLICATION FOE EXTENSION OF TIME FOE LEAVING A COMPLETE SPECIFICATION. SIB, hereby apply for extension of time for one month in which to leave a complete specification upon appli- cation. dated The circumstances in and grounds upon which this extension (a) See Rule j s applied for anj M followg (ft) ._ Sir, Your obedient Servant, (*) To be (6) signed by applicant or applicants, or his or their agent. To the Comptroller, Patent Office, 25, Southampton Buildings, Chancery Lane, London, W.C. PATENT FORMS. 271 PATENTS, DESIGNS, AND TRADE MARKS ACTS, 1883 TO 1888. Form V. FOBM OF APPLICATION FOE EXTENSION OF TIME FOE ACCEPT- ANCE OF A COMPLETE SPECIFICATION. SIB, hereby apply for extension of time for month for the acceptance of the complete specification upon application No. dated The circumstances in and grounds upon which this extension (a) See Rule is applied for are as follows (a) : 50. Sir, Your obedient Servant, (*) To be (b) signed by applicant or applicants, orhisor tlieir ageut. To the Comptroller, Patent Office, 25, Southampton Buildings, Chancery Lane, London, W.C. 272 LAW OF PATENTS. Forms are not supplied by the Patent Office, but can be purchased on personal application at the Inland Revenue Office, Royal Courts of Justice (Room No. 6), or at a few days' notice at any money order office in the United Kingdom upon pre- payment of the value of the stamp. If it should not be convenient to apply in person in either of the ways specified, the stamped forms can be ordered by post from the Controller of Stamps, Room 7, Inland Revenue Office' Somerset House, London, W.C. In that case a banker's draft or a money or postal order payable to the Commissioners of Inland Revenue and crossed Bank of England, for the value of the stamp and for the cost of postage and registration, must be forwarded to Somerset House with the application for the form. Forms A, B, C, and C 1 are, however, usually kept on sale at the undermentioned places : The Inland Revenue Office, Royal Courts of Justice (Room No. 6). The following post offices : London General Post Office, E.G. Post office, 195, Whitechapel Road, E. 239, Borough High Street, S.E. Charing Cross, W.C. Lombard Street, B.C. 28, Eversholt Street, Camden Town, N.W. 12, Parliament Street, S.W. ; and at the fol- lowing chief post offices : In England and Wales. Bolton. Accrington. Altrincham. Ashton-under-Lyne. Barnsley. Barrow-in-Furness. Bath. Bedford. Beverley. Birkenhead. Birmingham. Blackburn. Bradford. Brighton. Bristol. Bromsgrove. Burnley. Burslem. Burton-on-Trent. Bury. Cambridge. Cardiff. Carlisle. PATENT FORMS. 273 England and Wales con- tinued. Liverpool. Macclesfield. Chatham. Manchester. Chester. Clitheroe. Middlesborough. Nantwich. Congleton. Coventry. Crewe. Newcastle. Newport (Mon.). Northallerton. Croydon. Darlaston. Derby. Dewsbury. Doncaster. Northampton. Nottingbam. Nuneaton. Oldbury. Oldham. Dorchester. Driffield. Droitwicb. Patrington. Plymouth. Pontefract. Dudley. Durham. Portsmouth. Prescot. Exeter. Preston. Gatesbead. Goole. Reading. Redditch. Greenwich. Guildford. Halifax. Ricbmond (Yorks). Ripon. Rochdale. Hartlepool. Huddersfield. Hull. Rotberbam. Rugby. St. Helens. Ipswich. Keighley. Kendal. Kidderminster. Salford. Scarborough. Sedgeley. Sheffield. Knaresborough. Knutsford. Southampton. Stafford. Lancaster. Leamington. Leeds. Stalybridge. Stockport. Stoke-on-Trent. Leicester. Li cb field. Lincoln. Stourbridge. Stourport. Sunderland. 18 274 1,AW OP PATENTS. England and Wales con- tinued. Dumbarton. Dundee. Swansea. Tamworth. Truro. Edinburgh. Glasgow. Greenock. Tunstall. Inverness. Wakefield. Lanark. Walsall. Leitb. Warrington. Paisley. Wednesbury. West Bromwich. Perth. Renfrew. Whitby. Widnes. In Ireland. Wigan. Wolverhampton. Wolverton. Belfast- Cork. Dublin. Woolwich. Dundalk. Worcester. York. Galway. Limerick. In Scotland. Londonderry. Waterford. Aberdeen. Wexford. APPENDIX. REGISTER OF PATENT AGENTS RULES, 1889. FOR the purpose of giving effect to the provisions of the Patents, Designs, aud Trade Marks Act, 1888, relating to the registration of patent agents, the Board of Trade, by virtue of the provisions of the said Act, hei'eby make the following Rules : 1. A Register shall be kept by the Institute of Patent Register Agents, subject to the provisions of these Rules and to the See p. 285. Orders of the Board of Trade, for the registration of patent agents in pursuance of the Act. 2. The Register shall contain in one list all patent agents Contents of who are registered under the Act and these Rules. Such list shall be made out alphabetically, according to the surnames of the registered persons, and shall also contain the full name of each registered person, with his address, the date of registration, and a mention of any honours, memberships, or other additions to the name of the registered person which the Council of the Institute may consider worthy of mention in the Register. The Register shall be in the Form 1, in Appendix A, with such variations as may be required. 3. The Institute shall cause a correct copy of the Register to Printed be, once every year, printed, under their direction, and pvS'nsiied' 6 published and placed on sale. Such correct copy shall, in the "IJ"^"^ year 1889, be printed and published at as early a date as is evidence of contents of possible, and in every year subsequent to the year 1889, shall Register, be printed and published on the 31st day of January. A copy of the Register for the time being purporting to be so printed and published shall be admissible as evidence of all 276 LAW OF PATENTS. matters stated therein, and the absence of the name of any person from the Register shall be evidence, until the contrary is made to appear, that such person is not registered in pursuance of the Act. Registrar. 4. The Institute shall appoint a Registrar, who shall keep the Register in accordance with the provisions of the Act, and these Rules, and subject thereto, shall act under the directions of the Institute, and the Board of Trade. Registration 5. A person who is desirous of being registered in pursuance who were of the Act, on the ground that prior to the passing of the Act prior*!" the' 1 * ^ e ^ ia ^ ^ een bona ^e practising as a patent agent, shall passing of produce or transmit to the Board of Trade a statutory declara- tion in the Form 2 in Appendix A. ; provided that the Board of Trade may in any case in which they shall think fit, require further or other proof that the person had, prior to the passing of the Act been bona fide practising as a patent agent. Upon the receipt of such statutory declaration or of such further or other proof to their satisfaction as the case may be, the Board of Trade shall transmit to the Registrar a certificate that the pei-son therein named is entitled to be registered in pursuance of the Act, and the Registrar shall on the receipt of such cer- tificate cause the name of such person to be entered in the Register. Final qnnii- 6. Subject to the provisions of the Act in favour of every min at foil' for person who proves to the satisfaction of the Board of Trade registration. ^^ prior to the passing of the Act he had been bona fide practising as a patent agent, no person shall be entitled to be registered as a patent agent unless he has passed, and produces or transmits to the Registrar a certificate under the seal of the Institute that he has passed such final examination as to his knowledge of patent law and practice, and of the duties of a patent agent as the Institute shall from time to time prescribe. Exemption 7. Any person who has been for at least seven consecutive and assist- years continuously engaged as a pupil or assistant to one or preHniin'nry morc registered patent agents, and any person for the time examination. \ ie j n g entitled to practise as a Solicitor of the Supreme Court of Judicature in England or Ireland, or as a law agent before PATENT AGENTS HULKS. 277 the Court of Session in Scotland, shall be entitled to be regis- tered without passing any examination other than the final examination provided for in the last preceding Rule. The Registrar shall before registering the name of any such person as a patent agent (in addition to the final examination certificate) require proof satisfactory to the Registrar that such person has been for at least seven consecutive years continuously engaged as such pupil or assistant, or is entitled to practise as such Solicitor or Law Agent. 8. Any person who is not qualified under Rule 7 must, in QwWtea- llOMS nt order to be entitled to present himself for the final qualifying persons . . , "i-ricnilly for examination, be registration. A person who has passed one of the preliminary examina- tions mentioned in Appendix B., or such other exami- nation as the Institute shall, with the approval of the Board of Trade, by regulation prescribe. 9. The Institute shall hold at least once in the year com- Final qn.-ili- mencing with the first day of Juty, 1889, and in every other mi,'uUo n l s ~i succeeding year, a final qualifying examination, which shall \'. K ll , cltl .. l | y . J . . . . . tlie Institute be the final qualifying examination required under Rules 6 and 7 ; and the Institute shall, subject to these Rules, have the entire management and control of all such examinations, and may from time to time make regulations with respect to all or any of the following matters, that is to say, (a.) The subjects for, and the mode of examination of candidates ; (6.) The times and places of the examinations, and the notices to be given of examinations; (c.) The certificates to be given to pel-sons of their having passed the examinations ; (d.) The appointment and removal of examiners, and the remuneration, by fees or otherwise, of the exami- ners so appointed ; and (c.) Any other matter or thing as to which the Institute may think it necessary to make regulations for the purpose of carrying out this Rule. 10. The Registrar shall from time to time insert in the Correct ious of ji, IIMCS and 278 LAW OF PATENTS, addresses in Register any alteration which may come to his knowledge in the Register. , , , < j name or address ot any person registered. names'of ' H- ^he Registrar shall erase from the Register the name of deceased an y registeied person who is dead. Krasurc of 12. The Registrar may erase from the Register the name oE pmonswlio &n J registered person who has ceased to practise as a patent Imre ceased agent, but not (save as hereinafter provided) without the con- to practise. ' " sent of that person. For the purposes of this Rule the Registrar may send by post to a registered person to his registered address a notice inquiring whether or not he has ceased to prac- tise or has changed his residence, and if the Registrar does not within three months after sending the notice receive an answer thereto from the said person, he may, within fourteen days after the expiration of the three months, send him by post to his registered address another notice referring to the first notice, and stating that no answer has been received by the Registrar ; and if the Registrar either before the second notice is sent receives the first notice back from the dead letter office of the Postmaster-General, or receives the second notice back from that office, or does not within three months after sending the second notice receive any answer thereto from the said person, that person shall, for the purposes of this Rule, be deemed to have ceased to practise, and his name may be erased accordingly. Erasure of 13. If any registered person shall not, within one month non-payment from the day on which his annual registration fee becomes pay- of fees. a\)\e, pay such fee, the Registrar may send to such registered person to his registered address a notice requiring him, on or before a date to be named in the notice, to pay his annual regis- tration fee ; and if such registered patent agent shall not within one month from the day named in such notice pay the registration fee so due from him, the Registrar may erase his name from the Register : Provided that the name of a person erased from the Register under this rule may be restored to the Register by direction of the Institute or the Board of Trade on payment by such person of the fee or fees due from him, to- gether with such further sum of money, not exceeding in PATENT AGENTS RULES. 279 amount the annual registration fee, as the Institute or the Board of Trade (as the case may be) may in each particular case direct. 14. In the execution of his duties the Registrar shall, subject Registrar to these Rules, in each case act on such evidence as appears to evidence, him sufficient. 15. The Board of Trade may order the Registrar to erase from Erasure of the Register any entry therein which is proved to their satis- fraudulent faction to have been incorrectly or fraudulently inserted. 16. If any registered person shall be convicted in Her Erasure of * mimes of Majesty's dominions or elsewhere of an offence which, if com- persons mitted in England, would be a felony or misdemeanor, or after crimes, and due inquiry, is proved to the satisfaction of the Board of Trade ^^"Ljity to have been guilty of disgraceful professional conduct, or of disgraceiul conduct, having been entitled to practise as a Solicitor or Law Agent shall have ceased to be entitled, the Board of Trade may order the Registrar to erase from the Register the name of such person. Provided that no person shall be adjudged by the Board of Trade to have been guilty of disgraceful professional conduct unless such person has received notice of, and had an opportunity of defending himself from, any charge brought against him. 17. (1.) Where the Board of Trade direct the erasure from Restoration the Register of a name of any person, or any other entry, the nan,. 81 name of the person or the entry shall not be again entered in the Register, except by order of the Board of Trade. (2.) The Board of Trade may in any case in which they think fit restore to the Register any name ov entry erased therefrom either without fee, or on payment of such fee, not exceeding the registration fee, as the Board of Trade may from time to time fix, and the Registrar shall restore the name accordingly. (3.) The name of any person erased from the Register at the request or with the consent of such person shall, unless it might, if not so erased, have been erased by order of the Board of Trade, be restored to the Register by the Registrar on his applica- tion and on payment of such fee, not exceeding the registration fee, as the Institute shall from time to time fix. 280 LAW OF 1'ATENTS. Inquiry by Board of Trade before erasure of name from Register. Appeal to It i,; I]', I of Trade. Notice of appeal. Case on appeal. Transmission of notice of appeal to Hoard of Trade. Directions as to hearing of appeal. Notice of bearing of appeal. Hearing and decision of appeal. 18. For the purpose of exercising in any case the powers of erasing from and of restoring to the Register the name of a person, or an entry, the Board of Trade may appoint a com- mittee consisting of such persons as they shall think fit. Every application to the Board of Trade for the erasure from, or resto- ration to, the Register of the name of any patent agent shall be referred for hearing and inquiry to the committee, who shall report thereon to the Board of Trade, and a report of the com- mittee shall he conclusive as to the facts for the purpose of the exercise of the said powers hy the Board of Trade. 19. Any person aggrieved hy any order, direction, or refusal of the Institute or Registrar may appeal to the Board of Trade. 20. A person who intends to appeal to the Board of Trade under these rules (in these Rules referred to as the appellant) shall, within fourteen days from the date of the making or giving of the order, direction, or refusal complained of, leave at the office of the Institute a notice in writing signed by him of such his intention. 21. The notice of intention to appeal shall be accompanied by a statement in writing of the grounds of the appeal, and of the case of the appellant in support thereof. 22. The appellant shall also immediately after leaving his notice of appeal at the Institute send by post a copy thereof with a copy of the appellant's case in support thereof addressed to the Secretary of the Board of Trade, 7, Whitehall Gardens, London. 23. 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. 25. Seven days' notice, or such shorter notice as the Board of Trade may in any particular case direct, of the time and place appointed for the hearing of the appeal shall be given to the appellant and the Institute and the Registrar. 24. The appeal may be heard by tho President, a Secretary, or an Assistant Secretary to the Board of Trade, and the deci- sion and order thereon of the President, Secretary, or Assistant PATENT AGENTS RULES. 281 Secretary, as the case may be, shall be the decision of the Board of Trade on such appeal. On the appeal such decision may be given or order made in reference to the subject-matter of the appeal as the case may require. 26. The fees set forth in Appendix C. to these Kules shall be Fees, paid in respect of the several matters, and at the times and in the manner therein mentioned. The Board of Trade may from time to time, by orders signed by the Secretary of the Board of Trade, alter any of, or add to, the fees payable under these Rules. 27. Any regulation made by the Institute under these Kules Alteration of may be altered or revoked by a subsequent regulation. Copies re of all regulations made by the Institute under these rules shall, within twenty-eight days of the date of their being made, be transmitted to the Board of Trade, and if within twenty-eight days after a copy of any regulation has been so transmitted, the Board of Trade by an order signify their disapproval thereof, such regulation shall be of no force or effect ; and if, after any regulation under these Rules has come into force, the Board of Trade signify in manner aforesaid their disapproval thereof, such regulation shall immediately cease to be of any force or effect. 28. The Institute shall once in every year in the month of Report to December transmit to the Board of Trade a report stating the Trade, number of applications for registration which have been made in the preceding year, the nature and results of the final exami- nations which have been held, and the amount of fees received by the Institute under these Kules, and such other matters in relation to the provisions of these Kules, as the Board of Trade may from time to time, by notice signed by the Secretary of the Board of Trade and addressed to the Institute, require. 29. In these Rules, unless the context otherwise requires Definitions. " The Act " means the Patents, Designs, and Trade Marks Act, 1888. " The Institute " means the Institute of Patent Agents acting through the Council for the time being. " The Registrar " means the Registrar appointed under these Rules. 282 LAW OP PATENTS. Commence- ment. Title. " Registered patent agent " means any agent for obtaining patents in the United Kingdom whose name is registered under the Act and these Rules. 30. These rules shall commence and come into operation on the 12th day of June, 1889, but at any time after the making thereof any appointment or regulations may be made and things done for the purpose of bringing these Rules into operation on the said day. 31. These Rules may be cited as the Register of Patent Agents Rules, 1889. By the Board of Trade, COURTENAY BOYLE, Assistant Secretary, Railway Department. The llth day of June, 1889. APPENDIX A. FOBM 1. FOBM OF REGISTEB. Name. Designation. Address. Date of Registration. FOBM 2. *FOBM OF STATUTOBY DECLABATION. Register of Patent Agents Rules, 1889. I, A.B. \insertfull name, and in the case of a member of a firm add, " a member of the firm of "], of * A printed form of his declaration for use of applicants is now also on sale. i'ATENT AGENTS RULES. 283 , in the county of , Patent Agent, do solemnly and sincerely declare as follows .- 1. That prior to the 24th December, 1888, I had been bona fide practising in the United Kingdom as a patent agent. 2. That I acted as patent agent in obtaining the following patents : [Give the official numbers and dates of some patents for the United Kingdom in the obtaining of which the declarant acted as patent agent.'] 3. That I desire to be registered as a patent agent in pursu- ance of the said Act. And I make this solemn declaration conscientiously believing the same to be true and by virtue of the provisions of the Statutory Declarations Act, 1835. Declared at APPENDIX B. PAETICULABS OF PBELIMINABY EXAMINATIONS. 1. The Matriculation Examination at any University in See p. 286. England, Scotland, or Ireland. 2. The Oxford or Cambridge Middle Class Senior Local Examinations. 3. The Examinations of the Civil Service Commissioners for admission to the Civil Service. 284 LAW OK PATENTS. APPENDIX C. FEES. Nature of Fee. When to be paid. To whom tu be paid. Amount. s. d. For registration of On application To tlic Registrar 550 name of patent agent and before at the Institute, who had been bona registration, fide in practice prior to the passing of the Act. For registration of Do. do. name of any person other than as above. Annual Fee to be by every registered patent agent. paid On or before November 30th of each year, in respect of the year commenc- ing January 1st following. On entry of a candidate At time of enter- for the final qualify ing! ing name, examination. Do. do. 550 Do. do. 330 Do. do. 220 REGISTER OF PATENT AGENTS RULES, 1891. WHEREAS by the Register of Patent Agents Rules, 1889, it is provided, amongst other things, that the Register of Patent Agents established by the said Rules shall be kept, and certain duties in reference thereto and to the examination and regis- tration of and otherwise in relation to Patent Agents shall be performed, by the Institute of Patent Agents referred to in the said Rules : And whereas the said Institute of Patent Agents has been dis- solved and ceased to exist, and in place thereof the Chartered Institute of Patent Agents has, by Royal Charter dated the llth day of August, 1891, been incorporated : Now, THEREFORE, for the purpose of giving effect to the provisions of the Patents, Designs, and Trade Marks Act, 1888, relating to the registration of Patent Agents, the Board of Trade, by virtue of the provisions of the said Act, hereby make the following rules : 1. From and after the commencement of these Rules all Transferor the duties and powers of the Institute of Patent Agents under {ju^eg S f" d the Register of Patent Agents Rules, 1889 (hereafter in the initiate of present Rules referred to as "the Rules of 1889 "), shall be Agents to transferred to and vested in the Chartered Institute of Patent insTitutc*! Agents, and the Rules of 1889 shall, where applicable, and save so far as they are altered by the present Rules, have effect, with the following modifications : (1.) For the words "The Institute of Patent Agents" there shall be substituted the words " The Char- tered Institute of Patent Agents." 286 LAW OP PATENTS. (2.) The Registrar shall be the person who, for the pur- poses of the duties of the Registrar under the Rules of 1889 and the present Rules, shall be continued in office or appointed by the Chartered Institute of Patent Agents. Saving 2. Nothing contained in the present Rules shall affect any legeaNcts? 1 " r >ght, privilege, obligation, or liability acquired, accrued, or in- app t'" t . d curre d an J act done, or appointment or regulation made under the regulations Rulesof 1889 ; and any regulation made by the Institute of Patent o" 1HM9. " S Agents under the Rules of 1889 prior to the commencement of the present Rules shall be subject to alteration and revocation by subsequent regulations to be made by the Chartered Institute of Patent Agents under Rule 27 of the Rules of 1889, as amended by the present Rules. Publication 3. So much of Rule 3 of the Rules of 1889 as provides that of register. ^ correc ^ C0 py O f ^he Register therein referred to shall be printed and published in every year subsequent to the year 1889 on the 31st day of January is hereby annulled, and instead thereof the following Rule shall have effect : In the month of February in each year, and at such other times as the Chartered Institute of Patent Agents may think desirable, the said Chartered Institute shall cause a correct copy of the register to be printed under their direction and placed on sale. Alteration of 4. Instead of Appendix B. to the Rules of 1889 there shall * ' be substituted the Appendix to the present Rules, which may be cited as Appendix B. Commence- 5. The present Rules shall commence and come into ope- ciutioii. ration on the 19th day of November 1891, and, together with the Rules of 1889, may be cited as the Register of Patent Agents Rules, 1889 to 1891. By the Board of Trade, COURTENAY BOYLE, Assistant Secretary. Dated the 18th day of November, 1891. PATENT AGENTS RULES, 1891. 287 APPENDIX B. PABTICULABS OF PBELIMINABY EXAMINATIONS. 1. The Matriculation examination at any University in England, Scotland, or Ireland. 2. The Oxford or Cambridge Middle Class Senior Local Exa- minations. 3. The first public examination before Moderators at Oxford. 4. The previous examination at Cambridge. 5. The examination in Arts for the second year at Durham. 6. The examination for first-class certificate of the College of Preceptors (40 and 41 Viet. c. 25. s. 10). 7. The examination resulting in the obtaining of a Whit- worth Scholarship. INDEX. PAGE ACCEPTANCE OF SPECIFICATION, amendment before . '".' ... . 109 effect of . . . ." 53,54 extension of time for . - . . 56 how advertised . _. . 52,57 time for, limited . . : . 56 ACTION for infringement, see INFRINGEMENT. for threats, see THREATS. to support threats . . . . . 165 ACTIONS, consolidation of . . i: . 150 pending, what are . '-.; " v . . 108 ADDRESS, alteration of, on Register . ... . 218 change of, how notified . . . '. . 46 notified on application form . . . " . 45 of applicant or agent required ,; . 45 AGENT Custom House, not liable for infringement . 138 for foreign inventor s - -,"! 38 form of appointment of . . ..... . . 45 importer need not be an . , ; ... . 38 may improve the invention ... . , . 38 may sign specification . . v - - . 47 penalty for using description patent agent . 122 signature as, does not incur penalty ; . 123 who may act as, in patent matters . . 122 19 290 INDEX. PAGE AGENTS, patent, who are , . . 122, 282 Chartered Institute of . . . 283 register of . . 275 AGREEMENT for license, enforceable . . 100 AMBIGUITY evidence to explain, may be given . . 144 in specification avoids patent . . .71 may be removed by amendment . . 106 AMENDMENT OF SPECIFICATION, appeal against refusal of leave for . .113 appeal to law officer on . . .111 applicant for, may be required to explain . 112 application for .... 109 before acceptance . . . 50, 109 discretion of Comptroller as to . .112 effect of, on damages . . . 114 law officer's decision final . . . 112 leave for, when given, unquestionable . .113 limitation on refusal to allow . .112 may invalidate patent . . . 114 must not enlarge claim . . . 107 of doubtful effect is allowed . . . 107 opposition to . . . .110 pending action, costs of . . 109 pending action for infringement . . 108 pending action for threats does not affect . 108 pending appeal does not affect . . 108 pending revocation petition . . . 159 procedure, when allowed .- . .113 second application for, no appeal against refusal of leave for . . . . .113 when complete for purpose of action . . 114 who may apply for 107 INDEX. 291 PAGE ANTICIPATION, by publication must be complete . . 3] by sale of patented article . . .28 invalidates patent . . . .27 what constitutes . . . .26 APPEAL, all issues may be decided on . . . 186 certificate of particulars given on . . 199 judgment reversed on, by consent . . 13 pending, does not affect amendment . . 108 to law officer, see LAW OFFICER. APPLICANT FOR PATENT dying before patent sealed . . .59 later may withdraw . . . .52 must not conceal anything of value . . 69 who may be . . . .33 APPLICATION FOR PATENT by post, when deemed received . . 49 by representative of deceased inventor . . 59 by whom signed . . . .44 completion of . .. . . .54 comprising several inventions, how dealt with . 51 effect of acceptance of . . .53 forms of . .. . .44 how numbered . . . .49 joint, advantages of a . . 37 lost in post .. . . .49 more than one for the same invention . . 52 referred to an examiner . . .50 representations in . . . .9 through agent . V .44 under international convention, how made . 236 usually granted unless opposed . 12 where to be sent . . ., .46 292 INDEX. FAGE ASSIGNEE of patent becomes patentee . . .92 of profits of patent, rights of . . 94 ASSIGNMENT, equitable, registration of . . 217 ASSIGNOR may not dispute validity . . . 145 of patent does not warrant its validity . . 92 ASSISTANTS inventor may employ . . .40 may even improve an invention . . 40 BANKRUPTCY OF INFRINGED proof for profits admissible in , . . 192 CARRIERS of infringing articles may be sued . 138 CERTIFICATE as to particulars .... 197 by Comptroller of any Act . . . 220 of particulars may be given on appeal . . 199 of payment of renewal fees . . .89 of validity . . . . .193 as a rule only one granted . . 193 effect of on costs . . . 194 grant of, discretionary . . . 194 in action for threats . . .170 when action is settled . . . 194 when patent is held bad . : .194 CERTIFIED COPIES of records in Patent Office . 220 CLAIMING CLAUSE, form of . . .74 CLAIMS, absence of, does not void patent . . 74 amendment must not enlarge . . . 107 complete specification must end with . . 73 must all be valid . . . .76 CLERICAL ERRORS, how corrected 106 INDEX. 293 PA OK COLONIAL ARRANGEMENTS . .233 COMBINATION, new parts in, need not be distinguished . 75 of old pai'ts may be invention ."" . 23 test of novelty of ' . ' . , .25 when infringed by use of an equivalent . 129 COMPANY may apply for patent . . . .36 may be registered as owner of patent . . 218 COMPTROLLER . . . .3 absent, deputy for . . . .4 appeal against, no costs allowed in .113 appeal from the discretion of . . 52, 56 discretion of, as to amendments . . 112 how exercised . . . .51 to refuse patent, limited . , .11 may require explanations . . .51 CONSIDERATION for grant of patent . . 69 CONSOLIDATION OF ACTIONS . . .150 COPIES certified by Patent Office . . .220 Office, of records . . * . 220 sealed, of specifications, &c. . . . 220 COPYRIGHT, a subject for, is not an invention . 16 CORPORATION, a, may apply for letters patent . . 36 may be registered as owner of patent . . 218 COSTS before law officer, recovery of r .119 follow the event 196 granted on unopposed revocation petition . 158 how affected by certificate of validity . . 194 may be awarded by law officer . .119 of abortive appeal to law officer . . 117 294 INDEX. PACK COSTS (continued) of amendment pending action . . 109 of issues, when set off . . . 196 of obtaining Attorney General's fiat allowed only by consent .... 156 of particulars .... 197 when action is discontinued . . 198 when action is dismissed unheard . 197 of shorthand notes .... 199 on higher scale rarely allowed . . 199 COUNSEL, employment of, in patent matters . 123 CROWN, the, bound by letters patent . . .96 need not admit validity . . .96 not bound by recitals in grant . . 10 not compelled to grant patent . . 10 procedure for infringement against . 96 terms of user of invention by .96 CUSTOM-HOUSE AGENTS not liable for holding infringements . . . .138 DAMAGES, for infringement, how assessed . . 188 measure of, in action for threats . . 170 none claimable during enlargement of time for renewal . . . .89 undertaking as to, on grant of injunction . 141 DAYS NOT RECKONED as last days for doing anything . . . . .226 DECLARATIONS, statutory, how made . . 82 DEFENDANT, may be estopped from disputing validity out of jurisdiction .... procedure by, on motion for interim injunction . who may be made, in patent action . , INDEX. 295 PAGE DELI VEEY up of infringing articles '. .192 DESIGN, a, is not an invention . . .16 DIRECTORS liable for infringement by their Com- pany ..... 138 DISCLAIMERS, amendment by ^ . . . 107 when action pending . . . 108 object of . . . . .75 special and general . . . .85 DISCLAIMING clauses . . . .74 DISCOVERY in action for infringement . . . 149 in petition for revocation . . . 158 not necessarily invention . . .16 of equivalent may be invention . . 22 DRAWINGS accompanying specifications, rules for . . 47 supplement the letterpress . . .68 EQUIVALENT, discovery of an, is invention . . .22 substitution of a known, not invention . . 22 substitution of an, when infringement . . 128 ERRORS, clerical, how corrected . . .221 ESTOPPEL from disputing validity '. .145 EVIDENCE as to meaning of specification allowed . 178 before Comptroller, form of . . .82 before Law Officer . . . .118 how dispensed with .... 226 in a patent action .... 184 of infringement subsequent to writ . . 143 of public knowledge . . . . 176 on petition for extension , , , 207 296 INDEX. PAGE EXAMINATION OF SPECIFICATIONS, scope of . 50 EXAMINERS, applications referred to i !.<;"' '';. . 50 complete specifications referred to .56 reports of, confidential . . .57 EXHIBITION, notice to Comptroller of intended . 34 EXHIBITIONS, industrial, inventions protected at .33 international, inventions protected at . .34 EXTENSION OF TERM, see LETTERS PATENT FEES FOE KEEPING UP PATENT, certificate of payment of .? . 89 enlargement of time for payment of .89 enlargement of time for payment not a matter of right . . . .89 how paid . . .. . .88 payable in advance '. . . . 89 payable in connection with letters patent . 239 FOREIGN PATENTEE alone can apply under international convention ...-vr.i 236 FOREIGN RESPONDENT, notice to, in revocation petition . ..".- - r i :.-: . .157 FOREIGN VESSELS, use of invention on . 98 FORM of claiming clauses of complete specification . 74 of grant of letters patent ' ''. " ', V . 7 FORMS, how altered -. . '.'.." " r;-. 5 patent . *;' ' v - 1 ;^ ^-^ 243 seqq. how obtainable . .' " '*&* 272 some, of particulars of objections "' " . }73 INDEX. 297 PAGE IMPORTER, an, is an inventor . .... ... .37 of infringing article liable . . .1 v . 133 IMPORTERS, classes of .... . ; '. . 38 IMPROVEMENT, in patent for, new parts must be distinguished from old "--* . . 75 IMPROVEMENTS, letters patent for \ . . 21 INFRINGEMENT, admitted, damages on ' . ' . ^ . 143 after issue of writ, evidence of . . 143 amendment pending action for . . . 108 by importation '. '. ' ,,. 133 by manufacture only . . . 132 by sale of component parts o'f article . . 131 by user only . .:" . . 132 is a question of fact' '. . . ' . 131 no action for, before sealing of patent . .136 patentee must not incite to v . . 133 penalties of .;' . . 94,125 profits of, recoverable in bankruptcy . . 192 test of . '. '. , tl . . 130 threatened, action to restrain . 95, 126 what constitutes . . ... . 126 INFRINGEMENT ACTION, accounts of profits in . . .190 a defence in action for threats . . 165 amendment of particulars in . . .148 i certificate of validity in . . 193 damages in, how assessed . ; F' . 188 defence in * .-. .143 defendant alleging trade secret . . 149 defendant in .... 138 defendant pleading license cannot question . validity , ^ g . . 146 298 INDEX. PAGE INFRINGEMENT ACTION (continued) delivery up of infringements . . 192 discovery in .... 149 evidence in support of particulars alone allowed 148 expert witnesses in ... 184 foi-m of defence in . . . . 147 in what court brought . . . 135 inspection of defendant's works, when allowed . 148 inspection of plaintiffs works, when allowed . 149 interrogatories in . . . 149 issues in, when taken separately . . 185 judgment in .... 188 jury unusual in . . .182 models required in . . . . 184 names of customers not disclosed before judg- ment ..... 150 names of purchasers must be disclosed after judgment .... 191 one of several defendants estopped . . 147 particulars of breaches in . . 141 particulars of objections required in . . 147 pending, threats allowable while . . 167 plaintiff in .... 136 plaintiff's title usually admitted in an . 184 profits recoverable in bankruptcy . . 192 statement of claim in '. . . 141 to restrain threatened infringement . . 137 triable at Assizes .... 177 triable with assessor . . . 182 trial of, in Scotland . . . 183 what constitutes diligence in bringing . 166 when validity indisputable . . . 145 INFRINGING ARTICLES may be ordered to be delivered up . . . 192 INJUNCTION, INTERIM, . . .139 granted on default of defendant f , 140 INDEX. 299 PAGE INJUNCTION, INTERIM (continued) granted when validity allowed . .140 not granted, if strongly resisted . . 140 plaintiff obtaining, undertakes in damages . 141 withheld, on undertaking by defendant . 141 INSPECTION in actions for infringement . . . 148 of anticipating machines, only by consent . 175 INTERNATIONAL arrangements .... 233 application under, how made " . . 236 patent under, how dated . . . 237 who may apply for patent under . . 235 with what countries existing . . . 234 convention, provisions of . . 237 exhibitions, inventions protected at .34 office for patents . . . . . 237 periodical for patents . . . 237 INTERROGATORIES in action for infringement . . . 149 in petition for revocation . . . 158 INVALIDITY may be cured by amendments . 106 INVENTION a question of fact . . . .26 communicated, when patentable . . 38 defined by complete specification . . 67 disclosure of, by applicant . . .6 each requires separate patent . . .50 illegal or immoral, no patent for . .11 may be application of knowledge . . 40 may consist in re-discovery . . .42 may be suggested by another . . .39 must be fully disclosed . . .69 slight, often valuable . . .13 what constitutes an . . . . .22 what is an 2 300 INDEX. PAGE INVENTOR, application by representative of deceased . 36 dying before taking out a patent . .3, 59 foreign agent for . . . . .38 includes importer . . . .37 may employ assistants . . .40 must have exercised ingenuity . . 39 INVENTORS, rival, which gets patent . . 41 IRELAND, actions in . . . . . . 135 offences how punishable in . .215 official documents of Patent Office in . . 228 reservations as to .' . . 227 ISLE OF MAN, official documents of Patent Office in . . . 228 reservations as to . . . . 227 ISSUES, all are usually tried together . . 185 costs of, when set off ... 19G Court of Appeal will decide all . . 186 JOINT OWNER can sue for infringement . . . 136 petition for extension by ' '.. . . 203 powers of, to grant licenses . . -'| . 100 JOURNAL, International, for patents . . . . 237 official, of Patent Office . . .0 LAW OFFICER, appeal to, as to part of decision of Comptroller . 116 from discretion of Comptroller 52, 56 notice of hearing of *;;;/: 7"; : . 117 costs before, on abortive appeal . . 117 decision of, final . -.' ' . . 115 documentary evidence before . ," .119 INDEX. 301 PAGE LAW OFFICER (continued) may award costs . . ' . .119 may employ experts in cases of opposition . 118 may order witnesses to attend . . 118 may take evidence viva voce . .. . 118 notice of appeal to, to whom sent . .116 procedure on appeals to . . ," .115 proceedings before, notice by post in . . 120 time for appealing to ... 115 whom the, must hear . . .117 LAW OFFICERS may make rules for procedure . 120 LEGAL PROCEEDINGS, none begun before sealing 58 LETTERS PATENT, amendment may invalidate . . . . 114 area affected by . . .91 assignment of, in whole or in part . . 91 benefits of, may pass to non-owners .. .94 bind the Crown . . .96 corporations may apply for . . .36 cover one invention only . .. .50 date of . . . .58 dated prior to 1883, provisions as to . 225 determine unless fees are paid . . 87 extension of term of, gixmnds for . . 201 how obtained . . . ' . 201 for part of . . . 202 extension of, granted only once . . 203 for imported invention good . . .18 for improvements . . . .21 form of grant of . . .__ .7 grant of, an act of grace . 'T~ .10 grant of, is formal . . '. .43 granted for combination . . .23 granted on application in due form . .11 how applicable to foreign vessels , . 98 how numbered . . V- - .49 302 INDEX. PAGE LETTERS PATENT (continued) lost, replaceable . . . .58 profits of, rights of assignee of . .94 ref usable in some cases . . .11 refused for immoral invention . . 43 several persons may jointly apply for . . 35 subject of, must be new within the realm . 18 must be useful . . . .17 term of . . . .87 when sealed . . . .58 who may apply for . . . .35 LIBRARY OF PATENT OFFICE . .5 LICENSE UNDER LETTERS PATENT . 99 agreement for, enforceable . . . 100 consideration for .... 101 compulsory grant of ... 104 covering several patents . . . 103 granted by joint owner . . . 100 grant of, does not warrant validity . . 101 licensee may repudiate . . . 102 may be equivalent to assignment . . 103 not necessarily assignable . . . 102 not under seal, enforceable . . .99 plea of abandonment of, not notice thereof . 146 registration of . . . 219 when revocable by patentee . . . 101 LICENSEE cannot sue alone for infringement . 103, 137 entitled to have specification construed . 144 estoppel of, does not bind partner . . 146 may give evidence as to ambiguity in specifica- tion ..... 144 may not dispute licensor's title . . 144 may not dispute validity . . 101, 146 may repudiate license . . . 146 may show that licensor's title has expired . 144 usually covenants not to dispute validity . 102 INDEX. 303 PAGE LICENSOR does not indemnify against infringement of earlier patent . . -. . . 101 does not warrant validity . . . 101 not bound to keep up patent . . . 102 MACHINE, use of the word, in title . . 62 MANUFACTURE, what is a . . .15 MANUFACTURER and user may he sued together . . 139 may defend as third party . . . 139 MASTER PATENT is liberally construed . . .20 what is a . . . . .19 MISTAKES in specification, effect of .73 MODELS of inventions for Patent Museum . . 228 required in action . . . . 184 MONOPOLIES, advantages of . . .1 in ancient times . . . .1 limited to fourteen years . . .2 Statute of . . . . .2 MONOPOLY, conditions usually imposed on grantee of a . 1 grant of, an act of grace . . .1 MORTGAGOR of patent can sue for infringement . 137 NAMES of customers, interrogatories not allowed as to . 150 of purchasers of infringements must be disclosed after judgment . . . 191 304 INDEX. PAGE NOTICE of appeal to Law Officer -... ..;. ., . 115 of intention to petition for extension . . 204 of opposition to grant of patent . .77 of opposition to amendment . . . " . 110 of opposition to extension . . . 205 of refusal of grant by Comptroller . .51 of restrictions must be given to purchaser . 93 of revocation petition to foreign respondent . 157 to Comptroller of intention to exhibit . . ,34 NOVELTY need not imply invention . . 22 want of, invalidates patent . . . 27 OFFICIAL JOURNAL . , . 6 OPPOSITION to amendment . . . .110 to grant of patent, appeal to law officer in 77, 84 Comptroller's decision to be notified . 84 disclaimer may be ordered in .85 evidence before Comptroller . .82 first ground of, obtained from opponent . 78 grounds for . .. . .77 notice of hearing by Comptroller . . 83 notice of, how given .. ,. .77 notice of, to applicant . . .77 opponent restricted to grounds stated in his notice . . . .83 second ground of, prior patent . .79 second ground, who may oppose on . 79 time for leaving evidence . . 83 third ground of, a subsequent application . 81 when likely to succeed ..: ,::- . 84 who will be heard in , ,-;#<, . 80 law officer may employ experts j;.' : 77, 118 INDEX. 305 PAGE PARTICULARS, certificate as to . . .197 costs of . . . . 197 when action is discontinued . .198 when action is dismissed unheard . . 197 of breaches in infringement action . . 141 of objections, forms of . . .173 should omit weak ones . . . 172 should specify claims attacked . . 171 to validity . . . 147, 171 PATENT, see LETTERS PATENT. a bad, often valuable . . .12 a bad, needs skilful management . . 13 action, Court of Appeal can decide all issues in . 180 issues in a . . . 178 trial of ... . . 177 trial of, procedure in . . 183 agents . . . . .122 agents, register of . . . . 275 agents' rules . . . 275 for a principle is void . . .16 forms, how obtainable . . . 272 list of, and forms of . . 242 seqq. increased in value by litigation . . 12 Museum ' . . . . . 228 Office ' . * . . . .3 circular .... 121 library . . . .5 publications of . . . .6 publications, how obtainable . . . 228 publications, where copies uiay be seen . 229 seal . . . . .4 when open ' . . . .5 PATENTEE, definition of . . . .87 joint, rights of . . .93 20 306 INDEX. PAGE PATENTEE (continued) must supply Public Services . . .96 rights of a . . . . .91 PENALTIES, how enforced in Ireland . . . 215 in Isle of Man . . . 215 in Scotland . ... . . 215 PENALTY for falsifying register . . . 214 for representing nnpatented article as patent . 214 for using title ' Patent Agent ' . . 214 PERSONS incapacitated, provisions as to . . 226 PETITION FOR EXTENSION OF TERM OF PATENT, accounts of profits required . . . 207 by assignee .... 212 caveats against .... 206 costs in, how taxed .... 205 costs of, when abandoned . . . 213 costs of, how recoverable . . . 212 Crown may oppose .... 206 documents required in, by Privy Council . 205 effect of unchecked infringement on . . 211 exceptional merit required . . . 209 fees in connection with . . . 213 imperfect accounts may be fatal . . 208 importer not likely to succeed . . 211 invention not brought into public use . 210 lapsed foreign patents do not affect . . 211 may be granted conditionally * . . 212 must not withhold anything . . . 203 notice of intention to present . . 204 opposition to . . . r - . 205 profits must be decidedly inadequate . . 208 profits of foreign patents must be shown , 207 INDEX. 307 PAGE PETITION FOE EXTENSION OF TERM OF PATENT (continued)- registration of order on . . . 219 remuneration allowed for patentee's time . 208 rules for procedui'e in . . 203 seqq. time for presentation of . . 202 utility considered only as affecting merit . 210 utility to public must be shown . . 209 validity of patent assumed on -. . 209 what Judicial Committee consider in . . 206 where there is an exclusive license . . 211 who may present . . . 202, 203 PETITION FOR REVOCATION, see REVOCATION. PLACES where patent office publications may be seen 229 PLAINTIFF in action for infringement . . 136 POSTAL, applications when deemed received . . 49 communications to the Patent Office . . 225 PRINCIPLE, patent cannot be granted for a 16, 20 PRIOR PUBLICATION anticipates patent . . . .27 what is . . . .30 PRIOR USER need not be continuous . . .29 what is . . . .27 PROCESS, new, may be invention . .23 PROFESSIONAL ASSISTANCE in patent matters 121 PROVISIONAL PROTECTION, what is . .53 PUBLICATION at exhibition before application . . 33 foreign, may anticipate patent . . 32 of invention, what constitutes . . 27 prior, must be complete . . - .32 proof of prior . , , .32 308 INDEX. PAGE PUBLICATIONS of Patent Office . . 6 PUBLIC KNOWLEDGE, how proved .... 176 limits invention . . . .22 RECITALS, if untrue, avoid patent . . .10 in grant, binding on applicant . . 10 not binding on Ci'own . . .10 REGISTER of patents . . . . 216 alteration of address on . '.- . 218 certified copies of, how obtained . . 220 equitable assignment, enterable on .217 inspection of, by the public " . . . 219 licenses entered in . '. . 219 no notice of trust allowed in . . 217 penalty for falsifying . . . 214 rectification of, by the Court ' . , 219, 221 request to make entry in. how made . 218 sealed copy of, is evidence . . 220 of patent agents rules . V , . 275 REPORTS by Comptroller to Parliament . : . 227 of examiners, confidential . ." .57 RE PRESENT ATI VES of deceased applicant may continue application 59 of deceased inventor may apply for patent . 3 REVOCATION OF LETTERS PATENT, for fraud, re-grant of patent on . . 155 forms of proceedings for obtaining . . 153 gi-ounds for . . '. .154 petition for, amendment after judgment . 159 amendment of specification in . . 159 amendment pending . . . 108 Attorney-General's fiat as to . . 155 INDEX. 309 PAGE REVOCATION OF LETTERS PATENT (con- tinued) costs in, follow event . . . 159 defendant opens in, on trial . . 158 expert witnesses in . . 184 general procedure in . . 158 is not a matter inter partes . . 157 judgment in . . . 159 jury in, unusual . . . 182 jury in, when fraud alleged . . 158 may be tried at Assizes . . . 158 notice to foreign respondent . . 157 opposed, usually tried as witness action . 158 particulars of objections in . . 157 security not given by foreign respondent . 158 triable at Assizes . . . 177 triable with assessor . . . 182 unopposed, granted with costs . . 158 who may present . . . 154 ROYALTIES for working patent . 101 RULES, effect of . . . .5 for patent procedure, how made . . 4 to be laid before Parliament . . .5 SALE, conditional, of patented articles, restrictions on . 92 may be subject to restrictions on use . . 133 of article may void subsequent patent . . 29 SCOTLAND, actions in . . . . . 135 offences, how punishable in . . . 215 official documents of Patent Office in . . 228 SEAL of Patent Office . . . .4 SEARCHES 122 310 INDEX. PAGE SERVANTS, independent inventions of, protected . . 41 may improve an invention for master . . 40 SHORTHAND NOTES, cost of . . . 187 SPECIFICATION, acceptance of, how advertised . . 52, 57 ambiguity in, avoids patent . . .71 amendment of, before acceptance . 50, 109 pending petition for revocation . . 159 action for infringement . . 108 appeal does not affect . . 108 action for threats does not affect . 108 certified copies of . . . . 220 complete, extension of time for leaving . 55 how prepared . . . .55 how to be left . . . .54 may describe method different from that in the provisional . . .66 may describe things unclaimed . . 67 may embody improvements . 54, 66 may be narrower than provisional . 67 must describe same invention as the pro- visional . . . .65 nature of . . .65 protection by acceptance of . .54 referred to examiner . . .56 requirements of . . .68 signed by some applicants only . . 55 construction of .. . -. 126, 178 benevolent .... 180 forms a precedent . . .179 copies of, how obtainable . . .57 how prepared for filing . -. .46 how signed . . .47 may assume what is of common knowledge . 69 may be signed by anyone as agent . .123 may be supplemented by drawings . .68 INDEX. 311 PAGE SPECIFICATION (continued) misleading, avoids patent . . .71 mistakes in, effect of . . .73 must accompany application . . .46 must not be equivocal . . .71 must not leave need for experiments . . 70 need describe one method only . . 72 need not state chemical nature of a product . 72 often settled by counsel . . . 124 provisional, description of . .63 nothing outside can be protected . . 65 protects by acceptance . . .53 should be in general terms . . 64 title of, choice of . . .60 to what class of persons addressed . . 69 when open to public inspection . . 57 when printed . . . .57 where copies of, may be seen . . . 229 STATEMENT OF CLAIM in infringement action 141 STATUTORY DECLARATIONS, how made . 82 SUBORDINATE INTEGERS are protected . . . .23 how claimed . . . .76 TEST ACTION . . . .151 THREATS, action for restraining . . . 163 and counter-action must deal with similar infringements . . . 166 certificate of validity in . . 170, 193 counter- action need not succeed . . 167 counter- action need not test validity . 165 damages in . . . 170 does not affect amendment . . 108 interim injunction in . . 169 infringement action a defence in . . 165 particulars required in . . 168 procedure on trial of , . 170 312 INDEX. PAGE THREATS (continued) validity may be questioned in . .169 when stayed because of infringement action . . . .170 conditions under which allowable . . 165 issue as to . . . . . 182 limitation of .... 163 of action may be effective . . .95 summary of law as to . . . 168 value of . . . . .160 what constitute .... 163 TITLE of specification, choice of . .60 too general, may avoid patent . . 61 USER alone may be infringement . . . 132 may be restricted on sale . . . 132 of invention, what constitutes prior . . 28 UTILITY, a question of fact . . . .18 how much is required for patent . .17 necessary to support patent . . .17 necessary for extension of patent . . 209 no relation to commercial success . . 18 VALIDITY, certificate of . . .13 licensee may not dispute . . . 101 no examination as to, by Patent Office . 44 not warranted on sale of patent . . 92 by licensor .... 101 objections to, mostly questions of fact . . 181 WARLIKE INVENTIONS, special provisions as to 223 seqq. WRIT in an action for infringement . . 137 rBINTED BY ADLABD AND SON, BABTUOLOMEW CLOSE, B.C., AND 2O, HANOVEE SQTJAEE, W. CATALOGUE OP COMMERCIAL AND OTHER WORKS PUBLISHED AND SOLD BY EFFINGHAM WILSON & CO., $ublisijers, printers, goohsdlers, ghtbers, ngrabers anb Stationers, EOYAL EXCHANGE, LONDON. TO WHICH IS ADDED A LIST OP TELEGRAPH CODES, 4 AND SOME Valuable Books of Reference essential to Commercial Establishments and Public Companies. EFFINGHAM WILSON & CO. undertake the printing and publishing of Pamphlets and Books of every description upon Commission. Estimates given, and Conditions of Publication may be had on application. January, 1896. 2 EFFINGHAM WILSON & CO., INDEX. Arbitrages et Parite's HOB Clerks, continued *ASK Willdey's American Stocks . 17 Arbitration London Chamber of . . .13 Lynch H. Foulkes . . .12 Auditors Fowke . ... 6 Pixley 16 Banking Banker's Clerk . . 19 Banking Almanack and Directory 19 Banking Law.Wallace and M'Neil 24 Banks, Bankers, and Banking . 17 Bauques Anglaises (Lecoffre) . 14 Clearing-house System (Hownrth) 15 English and Foreign (Attfield) . 11 Gilbart's History and Principles 20 Hankey (Thomson) . . .15 Hutchison, J 15 Journal Institute of Bankers . 14 London Banks and Kindred Com- panies 21 Macleod's Bankjng . . .22 Theory of Credit . 22 Moxon's English Banking . . 23 Questions on Banking Practice . 16 Rae's Country Banker . . 24 Smith's Banter and Customer . 16 Bankruptcy McEwen (Accounts) . . .13 Stewart (Law of) . . . .4 Bills of Exchange Chalmers 19 Kolkenbeck's (Stamp Duties) . 7 Smith 4 Stamp Duties .... 7 Bimetallism Barclay's Standard of Value . 14 Silver Question . . 14 Bull 14 School to Office . . . B Companion to the Solicitor's . 7 Correspondence (Commercial, Anderson !'' 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PAGE Investo ra (see also Stock Exchange Manuals) American Railways (van Oss) . 11 Art of Investing . . .19 Bookkeeping (Carr) . . .6 Investment Profit Tables . . 13 Investment and Speculation (Duncan) . . . .17 Houses and Land . .5 How to Invest Money . . .5 How to Invest in Mines . . 6 Ledger ..... 13 Investors' Review . . .21 Joint-Stock Companies Alpe's (.Stamp Duties) . . 18 Buckley ..... 19 Companies Acts, 18621890 . 20 Cummins' Formation of Accounts 13 Fitzpatrick (Secretary) . . 20 Haycratt (Directors) . . .5 Jordan ...... 21 Palgrave (Chairman) . . .24 Palmer (Precedents) . . .23 Smith ...... 4 Watts (Promoters) . . .24 Mining Anderson (Prospectors) . 24 Goldmann (South African) . . 6 Kindell's South African Market . 21 Milford (Dictionary) . . .14 Skinner ..... 24 Western Australia . . .15 How to Invest in Mines . . 16 Miscellaneous Corn Trade Invoice Clerk . . 6 Cotton Trade of Great Britain . 16 District and Parish Councils . 6 Fire Surveys (Sir Eyre M. 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